IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––
`
`ERICSSON INC.,
`Petitioner,
`
`v.
`
`KONINKLIJKE KPN N.V.,
`Patent Owner.
`
`––––––––––
`
`Case No. IPR2022-00557
`Patent 9,667,669
`––––––––––
`
`PETITIONERS’ REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––
`
`ERICSSON INC.,
`Petitioner,
`
`v.
`
`KONINKLIJKE KPN N.V.,
`Patent Owner.
`
`––––––––––
`
`Case No. IPR2022-00557
`Patent 9,667,669
`––––––––––
`
`PETITIONERS’ REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`Exhibit No.1
`1001
`1002
`1003
`1004
`
`1005
`
`1006
`1007
`
`EXHIBIT LIST
`Description
`U.S. Patent No. 9,667,669 to Stokking et al. (“the ’669 Patent”)
`Prosecution File History for the ’669 Patent
`Declaration of Anthony Wechselberger
`Redacted Original Complaint, Koninklijke KPN N.V. v.
`Telefonaktiebolaget LM Ericsson, No. 2:21-cv-113, (E.D. Tex.
`Mar. 31, 2021), Dkt. 7
`Proof of Service of Complaint, Koninklijke KPN N.V. v.
`Telefonaktiebolaget LM Ericsson et al., 2:21-cv-113 (E.D. Tex.),
`Dkt. 10
`U.S. Patent Publication 2008/0151918 to Foti (“Foti”)
`Rosenberg et al., SIP: Session Initiated Protocol (RFC
`3261)(June 2002) (available at
`https://datatracker.ietf.org/doc/html/rfc3261)
`Handley et al., SDP: Session Description Protocol, RFC 4566
`(July 2006) (“RFC 4566”) (available at
`https://datatracker.ietf.org/doc/html/rfc4566)
`Schulzrinne et al., Real Time Streaming Protocol (RTSP), RFC
`2326 (April 1998) (“RFC 2326”)
`(https://datatracker.ietf.org/doc/html/rfc2326)
`U.S. Patent Publication 2006/0039367 to Wright et al.
`(“Wright”)
`EP 1777969 to Lloyd (“Lloyd”)
`“Overview of the IETF,” p. 1 (dated May 20, 2000)
`“The Tao of IETF – A Guide for New Attendees of the Internet
`Engineering Task Force,” p. 2, (dated May 19, 2000)
`Declaration of George Foti
`
`1 Citations to patents are made by column and line cite; citations to patent
`
`1008
`
`1009
`
`1010
`
`1011
`1012
`1013
`
`1014
`
`publications are made by paragraph number; citations to Exhibit 1002 is made with
`
`reference to the Bates-stamped pagination; citations to other exhibits are made to the
`
`page number of the document itself.
`
`
`
`
`
`- ii -
`
`
`
`Exhibit No.1
`1015
`
`1016
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`Description
`Change Request, 182.027 CR 088 rev3.1.2, 19tTD080r4, ETSI
`TISPAN#19-Ter, Sophia Antipolis, 19-23 January 2009
`Claim Listing
`Parties’ Joint Claim Construction and Prehearing Statement
`Pursuant to Patent Rule 4-3, Koninklijke KPN N.V. v.
`Telefonaktiebolaget LM Ericsson, No. 2:21-cv-113, (E.D. Tex.
`December 6, 2021), Dkt. 55
`Excerpts of Plaintiff’s Disclosure of Asserted Claims and
`Infringement Contentions Pursuant to Local Patent Rules 3-1 and
`3-2, Koninklijke KPN N.V. v. Telefonaktiebolaget LM Ericsson,
`No. 2:21-cv-113, (E.D. Tex. Sept. 15, 2021)
`Defendants’ Answer, Koninklijke KPN N.V. v.
`Telefonaktiebolaget LM Ericsson, No. 2:21-cv-113, (E.D. Tex.
`July 26, 2021), Dkt. 24
`KPN’s Opening Claim Construction Brief, Koninklijke KPN
`N.V. v. Telefonaktiebolaget LM Ericsson, No. 2:21-cv-113, (E.D.
`Tex. Jan. 5, 2021), Dkt. 58
`July 27, 2022 Email Authorizing Petitioner’s Request for
`Preliminary Reply to POPR in IPR2022-00557 (U.S. Patent No.
`9,667,669)
`
`
`
`- iii -
`
`
`
`IPR2022-00557
`U.S. Patent No. 9,667,669
`
`As authorized in the Board’s July 27, 2022 Email (EX1021), Petitioners
`
`
`
`submit this reply to the arguments in Patent Owner’s Preliminary Response (Paper
`
`5 (“POPR”)) regarding discretionary denial under 35 U.S.C. § 325(d). All references
`
`in Petitioner’s combination are new references that were neither cited nor considered
`
`during prosecution. And none of the Becton, Dickinson factors favor denial. Becton,
`
`Dickinson & Co. v. B. Braun Melsungen AG, IPR 2017-01586, Paper 8 (PTAB Dec.
`
`15, 2017) (precedential). Discretionary denial under § 325(d) is not appropriate.
`
` NONE OF PETITIONER’S ART WAS PREVIOUSLY PRESENTED.
`The Petition does not rely on the same or substantially the same art or
`
`arguments previously presented to the Office. See 35 U.S.C. § 325(d). None of the
`
`art relied on in Petitioner’s combination—including RFC 3261, RFC 4566, and RFC
`
`2326 (“the RFCs”) relied on as secondary references—was before the Office during
`
`prosecution. “Under § 325(d), the art and arguments must have been previously
`
`presented to the Office during proceedings pertaining to the challenged patent.”
`
`Advanced Bionics, LLC v. Med-El Elektromedizinische Gerate GMBH, IPR 2019-
`
`01469, *7-8 (PTAB Feb. 13, 2020) (precedential) (emphasis added). “Previously
`
`presented art includes art made of record by the Examiner, and art provided to the
`
`Office by an applicant . . . in the prosecution history of the challenged patent.” Id.
`
`Because the RFCs were not made of record by the Examiner or provided by the
`
`applicant in the prosecution history, they were not “previously presented.”
`
`
`
`- 1 -
`
`
`
`IPR2022-00557
`U.S. Patent No. 9,667,669
`
`Nonetheless, Patent Owner (“PO”) contends that the Board should deny
`
`institution because the RFCs—new references relied on as secondary references—
`
`allegedly are substantially the same as five different references (“the Presented Art”)
`
`not relied on in the Petition. See POPR, 29-38. PO’s argument fails for two reasons.
`
`First, the examiner did not rely on the Presented Art during prosecution. Id.
`
`Rather, it was among 600 pages of specifications and service guides cited by the
`
`applicant. “[T]he Board has consistently declined exercising its discretion under
`
`Section 325(d) when the only fact a Patent Owner can point to is that a reference
`
`was disclosed to the Examiner during prosecution.” Amgen Inc. v. Alexion Pharma,
`
`Inc., IPR2019-00740, Paper 15, *65-66 (PTAB Aug. 30, 2019).
`
`Second, PO attempts to side-step that the RFCs were not actually before the
`
`Office by arguing that the Presented Art “cite[s] or describe[s]” the RFCs, including
`
`as “normative” or “indispensable” references, arguing a POSITA therefore “would
`
`have been aware of” their teachings. POPR, 30-35. But the § 325(d) inquiry looks
`
`to art “previously presented” to the Office or substantially similar thereto, and does
`
`not invite speculation regarding what additional uncited art a POSITA “would have
`
`been aware of.” Advanced Bionics, *7-8. PO cites no Board Decision exercising
`
`discretion to deny institution based on uncited art a POSITA allegedly “would have
`
`been aware of,” or charging the Office with having been presented all references
`
`“cite[d] or describe[d]” within all of the cited art.
`
`
`
`- 2 -
`
`
`
`IPR2022-00557
`U.S. Patent No. 9,667,669
`
`Here, the RFCs relied on by Petitioner are among 142 “normative” or
`
`“indispensable” references cited by the five pieces of Presented Art alone. EX2003-
`
`2007. Those 142 references undoubtedly “cite or describe” hundreds or thousands
`
`of additional references. PO’s arguments charging the Office with having been
`
`presented not only the art cited by an applicant, but also all art cited by that cited art
`
`stretches the bounds of discretionary denial under § 325(d) beyond reason.
`
` RFCS ARE NOT SUBSTANTIALLY SIMILAR TO PRESENTED ART.2
`As a threshold matter, PO’s arguments fundamentally misunderstand the
`
`Petition’s reliance on the RFCs. Petitioner relies on the RFCs as evidence of how a
`
`POSITA would have understand the teachings of Petitioner’s primary reference Foti,
`
`or why it would be obvious to modify Foti, in light of what was well known. See,
`
`e.g., Petition, 27, 29 (relying on RFC 3261 to support how “[a] POSITA would have
`
`understood” Foti). If anything, PO’s arguments that the examiner “would have been
`
`aware of the teachings” of the RFCs—while irrelevant to the § 325(d) inquiry—
`
`confirm Petitioner’s arguments regarding how a POSITA would have understood
`
`Foti. Importantly, PO does not allege that Foti, or secondary references Lloyd or
`
`Wright, are cumulative of any previously considered reference. POPR, 29-39.
`
`
`2 PO argues only substantial similarity of the art, not the arguments. Becton,
`
`Dickinson Factor (d) therefore weighs against discretionary denial.
`
`
`
`- 3 -
`
`
`
`IPR2022-00557
`U.S. Patent No. 9,667,669
`
`The RFCs are not cumulative of the Presented Art, and PO fails to show
`
`otherwise. First, for RFC 4566 (EX1008), PO provides only a blanket assertion of
`
`substantial similarity without citation or support. POPR, 37. Petitioner cites pages
`
`4-5, 7-9, 14, 16-18 of RFC 4566 for Elements [1a], Claims 3, 8, 22, 24-25. For
`
`example, RFC 4566 teaches, inter alia, various details of bandwidth and time-out
`
`parameters in SDP signaling not taught by the Presented Art. Petition, 54, 70-72.
`
`Next, for RFC 3261 (EX1007), PO argues only substantial similarity for
`
`Limitation [1a], and provides no argument for the disclosure that Petitioner relies on
`
`for various other limitations, including Limitations [1p], [1c], [1e], [21e], and Claims
`
`3, 6, 8, 10, 12, and 22. POPR, 32. For example, in Limitation [1p], Petitioner cites
`
`RFC 3261 to support that “a POSITA would have understood in light of Foti that
`
`AS 40 could be used to manage the associated RTSP sessions by setting up,
`
`modifying, or terminating the associated sessions.” Petition, 27 (citing EX1007,
`
`Abstract). PO makes no attempt to argue that RFC 3261’s teachings of managing
`
`associated sessions are cumulative of the Presented Art. And even for Limitation
`
`[1a], PO ignores pages 12-13 and 15 of RFC 3261 relied on by Petitioner to show
`
`that the 200 OK response would include the unique identifier for the session. Id., 30.
`
`Finally, PO’s arguments for RFC 2326 (EX1009) are similarly deficient. PO
`
`again addresses only one limitation (Limitation [1d]), and not the other limitations
`
`or claims for which Petitioner relies on RFC 2326. For Limitation [1d], RFC 2326
`
`
`
`- 4 -
`
`
`
`IPR2022-00557
`U.S. Patent No. 9,667,669
`
`teaches that the RTSP session allows UT 20 to control the media stream in real time
`
`using different signaling messages such as RTSP PLAY or PAUSE. Petition, 41, 45
`
`(citing EX1009, 34-37). PO’s cited pages in EX2005-2006 do not provide the
`
`detailed disclosure of PLAY or PAUSE signaling messages to control media streams
`
`disclosed in RFC 2326. The RFCs are accordingly not cumulative of the Presented
`
`Art, and Becton, Dickinson Factors (a) and (b) weigh against discretionary denial.
`
` THE OFFICE MATERIALLY ERRED.
` “[U]nder § 325(d), the Board uses the following two-part framework: (1)
`
`whether the same or substantially the same art previously was presented to the Office
`
`or whether the same or substantially the same arguments previously were presented
`
`to the Office; and (2) if either condition of the first part of the framework is satisfied,
`
`whether the petitioner has demonstrated that the Office erred in a manner material
`
`to the patentability of challenged claims.” Advanced Bionics, *8 (emphasis added).
`
`Because there is no substantial similarity at step one, the Board need not reach
`
`material error. Id. Even so, the Office materially erred by allowing the claims of the
`
`’669 Patent because those claims are unpatentable for the reasons set forth in the
`
`Petition. The examiner did not base any rejection on the RFCs or Presented Art, let
`
`alone consider them in light of Foti, Wright, or Lloyd, as set forth in Petitioner’s
`
`combination. The remaining Becton-Dickinson factors (Factors (c), (d), and (f)),
`
`which relate to material error thus weigh against denying institution. See id., *10.
`
`
`
`- 5 -
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`
`
`IPR2022-00557
`U.S. Patent No. 9,667,669
`
`
`Respectfully submitted,
`BAKER BOTTS L.L.P.
`
`
`
`
`Chad C. Walters (Reg. No. 48,022)
`Lead Counsel for Petitioners
`
`
`
`
`Date: August 3, 2022
`2001 Ross Ave., Suite 900
`Dallas, TX 75201-2980
`Phone: (214) 953-6511
`Fax: (214) 661-4511
`chad.walters@bakerbotts.com
`
`
`
`
`
`
`
`- 6 -
`
`
`
`IPR2022-00557
`U.S. Patent No. 9,667,669
`
`
`CERTIFICATE OF SERVICE
`
`In accordance with 37 C.F.R. § 42.6(e), the undersigned certifies that on
`
`August 3, 2022, a complete and entire copy of this PETITIONERS’ REPLY TO
`
`PATENT OWNER’S PRELIMINARY RESPONSE and Exhibit 1021 were served
`
`on Patent Owner via electronic mail at the following addresses:
`
`Bradley J. Hulbert
`hulbert@mbhb.com
`
`Eric R. Moran
`moran@mbhb.com
`
`James L. Lovsin
`lovsin@mbhb.com
`
`BAKER BOTTS L.L.P.
`
`
`
`
`
`
`
`
`Chad C. Walters (Reg. No. 48,022)
`Lead Counsel for Petitioners
`
`
`Date: August 3, 2022
`2001 Ross Ave., Suite 900
`Dallas, TX 75201-2980
`Phone: (214) 953-6511; Fax: (214) 661-4511
`chad.walters@bakerbotts.com
`
`
`
`- 7 -
`
`
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