From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Jeremy Monaldo
`Director_PTABDecision_Review
`IPR39843-0128IP1; rhwang@skiermontderby.com; tmartin@skiermontderby.com; pgraves@gravesshaw.com;
`gshaw@gravesshaw.com; Andy Ehmke IPR; Clint Wilkins IPR
`IPR2022-01004 (Patent 9,614,943 B1) - Request for Director Review
`Wednesday, January 3, 2024 8:29:57 PM
`
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`Honorable Director,
`
`Petitioner in IPR2022-01004 respectfully requests Director Review of the Final Written Decision
`(Paper 40) issued by the Board on December 4, 2023. Concurrently herewith, Petitioner has filed a
`Request for Rehearing by the Director in the Patent Trial and Appeal Case Tracking System (P-
`TACTS). This request for Director Review involves issues related to the issues identified in the
`Director Review requested in IPR2022-01005 on January 2, 2024.
`
`Petitioner’s request seeks review of the Board’s decision that a POSITA would not have combined
`the Raleigh and Byrne references because Petitioner failed to show a reasonable expectation of
`success in implementing Raleigh’s “remote unit” as a telephone. In particular,
`a. The Board erred because the record includes clear evidence that radio telephones were
`well-known by the 1999 filing date of the challenged patent, the secondary reference
`(Byrne) in the combination describes a telephone, and the primary reference (Raleigh)
`describes its technology as being applicable to “remote units.”
`b. The Board’s decision also applied the incorrect standard for reasonable expectation of
`success by finding that the prior art did not explicitly describe the proposed modification
`(“[t]he cited portions of Raleigh and Byrne do not describe adding Raleigh’s signal
`processing system to a radio telephone” (FWD, 84)), rather than assessing whether a
`skilled artisan would have reasonably expected success in implementing the “remote
`unit” as a telephone.
`c. The Board’s decision further failed to consider the challenged patent’s sparse disclosure
`of how to implement the claimed features in a telephone.
`d. Finally, the Board misapprehended the combination by only assessing whether it would
`have been obvious to implement Raleigh’s signal processing in a telephone, where the
`Petition clearly proposed modification of Raleigh’s “remote unit,” not a telephone, and
`the Board acknowledged the same without addressing the argument (“combination can
`be read to add only Byrne’s cordless circuitry to Raleigh’s remote unit,” FWD, 86).
`e. These failings reflect an (a) abuse of discretion, (b) important issue of law or policy, (c)
`erroneous findings of material fact, and/or (d) erroneous conclusions of law for which the
`Board would benefit from Director Review. Indeed, the Board would benefit from
`Director guidance on the correct standard for assessing reasonable expectation of
`success, the proper role a patent’s disclosure plays in evaluating obviousness, and the
`
`IPR2022-01004
`Ex. 3100
`
`

`

`need to address all arguments presented in a Petition.
`
`
`For these reasons, Petitioner respectfully requests Director Review of the Board’s Final Written
`Decision.
`
`Respectfully Submitted,
`Jeremy J. Monaldo
`
`
`Jeremy Monaldo :: Principal :: Fish & Richardson P.C.
`+1 (202) 626-7717 direct :: Monaldo@fr.com
`fr.com :: Bio :: LinkedIn :: Twitter
`
`
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