`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––
`
`META PLATFORMS, INC.,
`Petitioner,
`
`v.
`
`ANGEL TECHNOLOGIES LLC,
`Patent Owner.
`
`––––––––––
`
`Case IPR2023-00057
`U.S. Patent 8,954,432
`
`––––––––––
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`UNDER 37 C.F.R. § 42.107
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`Submitted Electronically via the Patent Review Processing System
`
`
`
`

`

`TABLE OF CONTENTS
`
`IPR2023-00057
`U.S. Patent 8,954,432
`
`A. 
`
`B. 
`
`The ’432 Patent ..................................................................................... 3 
`1. 
`Existing Technology ................................................................... 3 
`2. 
`Advantages Provided by the ’432 Patent .................................... 4 
`3. 
`The ’432 Patent Components ...................................................... 6 
`4. 
`The Operation of the ’432 Patent Inventions .............................. 9 
`ALLEGED PRIOR ART ..................................................................... 10 
`1. 
`Sharpe ........................................................................................ 10 
`2. 
`Eintracht .................................................................................... 13 
`3. 
`Carey ......................................................................................... 14 
`
`A. 
`B. 
`
`C. 
`
`Sharpe Does Not Qualify as Prior Art ................................................. 16 
`As Shown Below, Patent Owner Had Conceived and Reduced to
`Practice Each Element of Claim 6 Prior to Sharpe’s Priority Date .... 21 
`Claim 1 is a System Corollary for Method Claim 6 and Was
`Likewise Conceived and Reduced to Practice Prior to Sharpe’s
`Priority Date ........................................................................................ 29 
`D.  Dependent Claims 2-5 and 7-8 are Patentable for the Same Reasons
`as the Independent Claims from Which They Depend ....................... 30 
`The Petition Failed To Present Proper Claim Construction As
`Statutorily Required. ........................................................................... 30 
`The Petition Fails to Establish a Proper Motivation to Combine
`References ........................................................................................... 32 
`
`E. 
`
`F. 
`
`i
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`IPR2023-00057
`U.S. Patent 8,954,432
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`
`CASES
`Biosig Instruments, Inc. v. Nautilus, Inc.,
`783 F.3d 1374 (Fed. Cir. 2014) .......................................................................... 20
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375 (Fed. Cir. 2015) .......................................................................... 17
`Freebit AS v. Bose Corp.,
`No. IPR2017-01308, 2017 WL 5202106 (PTAB Nov. 8, 2017) .................. 17, 20
`Heart Failure Techs., LLC v. Cardiokinetix Inc.,
`No. IPR201300183 ............................................................................................. 34
`In re Ochiai,
`71 F.3d 1565 (Fed. Cir. 1995) ............................................................................ 33
`In re Scheiber,
`587 F.2d 59 (C.C.P.A. 1978) .............................................................................. 19
`In re Steed,
`802 F.3d 1311 (Fed. Cir. 2015) .............................................................. 17, 18, 29
`In re Stempel,
`241 F.2d 755 (C.C.P.A. 1957) ............................................................................ 17
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...................................................................................... 33, 34
`Mazzari v. Rogan,
`323 F.3d 1000 (Fed. Cir. 2003) .......................................................................... 18
`Monsanto Co. v. Mycogen Plant Science, Inc.,
`261 F.3d 1356 (Fed. Cir. 2001) .......................................................................... 18
`NFC Tech., LLC v. Matal,
`871 F.3d 1367 (Fed. Cir. 2017) .......................................................................... 18
`Perfect Surgical Techniques, Inc. v. Olympus Am., Inc.,
`841 F.3d 1004 (Fed. Cir. 2016) .......................................................................... 18
`
`
`
`ii
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`

`IPR2023-00057
`U.S. Patent 8,954,432
`
`Phillips v. AWH Corp.,
`415 F.3d 1303, Fed. Cir. 2005 ............................................................................ 15
`Tyco Healthcare Grp. v. Ethicon Endo-Surgery, Inc.,
`774 F.3d 968 (Fed. Cir. 2014) ............................................................................ 18
`STATUTES
`35 U.S.C. § 120 ........................................................................................................ 19
`35 U.S.C. § 313 .......................................................................................................... 1
`35 U.S.C. § 316(e) ................................................................................................... 16
`35 U.S.C. § 322 ........................................................................................................ 31
`35 U.S.C. §§ 324(a), 326(a)(2) ................................................................................ 30
`35 U.S.C. § 326(b) ................................................................................................... 32
`U.S. Patent Act ......................................................................................................... 29
`OTHER AUTHORITIES
`37 C.F.R. §§ 42.65(a), 42.304(b)(5) ........................................................................ 31
`37 C.F.R. § 42.100(b) .............................................................................................. 32
`37 C.F.R. § 42.104(b)(5) .......................................................................................... 35
`37 C.F.R. § 42.107 ..................................................................................................... 1
`37 C.F.R. § 42.108(c) ........................................................................................... 3, 16
`37 C.F.R. § 42.208(c) ................................................................................................. 1
`37 C.F.R. § 42.304(b)(3) .......................................................................................... 30
`37 C.F.R. § 1.131 ...............................................................................................passim
`77 Fed. Reg. at 48763 .............................................................................................. 31
`83 Fed. Reg. 51340 (October 11, 2018) .................................................................. 15
`IPR2012-00026, Paper 17 ........................................................................................ 30
`
`iii
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`IPR2023-00057
`IPR2023-00057
`U.S. Patent 8,954,432
`USS. Patent 8,954,432
`MPEP 2138.01(II) .................................................................................................... 18
`MPEP 2138.01 (LL) .ccccsssscsssesscsssesccssssscsssusscssssccsssucsessuseccsssescessuesessnevecsssessetsneeessaseces 18
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`IPR2023-00057
`U.S. Patent 8,954,432
`PATENT OWNER’S EXHIBIT LIST
`
`2001 Eliza Beeney Biography (previously submitted)
`2002 Declaration of Eliza Beeney in Support of Motion for Pro Hac Vice
`(previously submitted)
`2003 Kaylee Hoffner Biography (previously submitted)
`2004 Declaration of Kaylee Hoffner in Support of Motion for Pro Hac Vice
`(previously submitted)
`2005 Declaration of Mark Frigon Under 37 C.F.R. § 1.131
`2006
`Pict_inpt
`2007
`Picture.mbd
`2008
`Pict_upd
`2009
`Picture.asp
`2010 Links.asp
`2011 Ex0006.log
`2012 Messages_post
`2013 Ex0007.log
`2014 American Express Statement
`2015 Emails (users populating profiles)
`2016 Declaration of Chris Malone Under 37 C.F.R. § 1.131
`Provisional File History Regarding Application 60/248994 of
`November 15, 2000
`2018 Declaration of Lisa Larson Under 37 C.F.R. § 1.131
`
`2017
`
`
`
`v
`
`
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`

`

`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`
`I.
`
`INTRODUCTION
`Angel Technologies, LLC (“Patent Owner” or “Angel Technologies”)
`
`submits this preliminary response in accordance with 35 U.S.C. § 313 and 37 C.F.R.
`
`§ 42.107, responding to the Petition for Inter Partes Review (“Petition”) of Claims
`
`1-8 of U.S. Patent No. 8,954,432 (the “’432 Patent”) filed by Meta Platforms, Inc.,
`
`(“Petitioner” or “Meta”).
`
`Meta’s Petition includes four grounds as shown below.
`
`Ground
`
`References
`
`1
`2
`3
`4
`
`
`
`Sharpe1
`Sharpe, Eintracht2
`Sharpe, Carey3
`Sharpe, Eintracht, Carey
`
`Claims
`
`1, 3, 6-8
`1-8
`3
`3
`
`The Board should deny institution because Meta fails to establish that its
`
`arguments are reasonably likely to succeed in establishing that Claims 1-8 of the
`
`’432 patent (“the Challenged Claims”) are unpatentable.4
`
`
`1 “Sharpe” is U.S. Patent No. 7,461,099 (Ex-1005).
`
`2 “Eintracht” is U.S. Patent No. 6,687,878 (Ex-1006).
`
`3 “Carey” is U.S. Patent No. 6,714,793 (Ex-1007).
`
`4 37 C.F.R. § 42.208(c).
`
`
`
`1
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`

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`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`In particular, the Board should exercise its discretion to deny institution of
`
`inter partes review of the ’432 Patent, because all four grounds asserted in the
`
`Petition rely primarily on Sharpe, which does not qualify as prior art for the ’432
`
`Patent. Specifically, Sharpe is not prior art with respect to Claims 1-8 because the
`
`inventor conceived of those claims before the filing date of Sharpe, September 26,
`
`2000, and diligently reduced the invention to practice. Submitted herewith is a
`
`Declaration pursuant to 37 CFR § 1.131 that satisfies all legal requirements to
`
`demonstrate that Sharpe, as cited by the Petitioner, is in fact not a prior art reference
`
`to the ’432 Patent. Specifically, the application leading to the ’432 patent was filed
`
`on November 15, 2000, approximately six weeks after the critical date for Sharpe.
`
`Per the prosecution history, the inventors signed Declarations and had completed the
`
`provisional patent application as early as August 15, 2000. Thus, the provisional
`
`application was being finalized approximately one month before Sharpe’s filing
`
`date. Further, as described below, there is evidence of actual reduction to practice as
`
`early as April 2000, approximately five months before Sharpe’s critical date.
`
`A denial is also justified because the Petition fails on the merits. The Petition
`
`both fails to establish proper claim constructions and proper motivations to combine
`
`the references in grounds 1-4 as statutorily required. As such, the Petition fails to
`
`establish that its arguments are reasonably likely to succeed in establishing that the
`
`Challenged Claims are unpatentable.
`
`
`
`2
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`

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`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`The Board is urged to consider the points raised herein and to not institute an
`
`Inter Parties Proceeding (IPR) that will only waste time and resources. The Petitioner
`
`seeks to destroy precious remaining patent term of a valid patent and to deny the
`
`Patent Owner his constitutional and statutory rights to pursue legitimate claims
`
`against infringers.
`
`None of the grounds raised by the Petitioner have demonstrated a reasonable
`
`likelihood that at least one of the challenged claims is unpatentable. See 37 C.F.R.
`
`§ 42.108(c). Hence, the Board should deny the Petition in its entirety.
`
`II.
`
`BACKGROUND
`The ’432 Patent
`The ’432 patent is directed to a system, computer program, and method for
`
`A.
`
`storing and sharing images such as photographs via a communications network and
`
`for permitting the identification of objects within the images. The invention allows
`
`the identification of objects, such as persons within the photos, without requiring the
`
`person submitting the photos to type in identification information for each and every
`
`photo in a photo album. Ex-1001, Abstract.
`
`1.
`
`Existing Technology
`In the late 1990’s and early 2000’s at the time of the invention, people began
`
`creating web pages for online photo albums which offered advantages over
`
`traditional photo albums. Ex-1001, 1:35-40. Several websites existed which allowed
`
`
`
`3
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`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`users without programming skills to create and maintain online photo albums by
`
`simply uploading photos they wished to add to the album. Ex-1001, 1:45-60.
`
`These websites offered many advantages to users, but also suffered from
`
`many limitations. For example, the websites didn’t allow users to identify objects
`
`and individuals within the photos without cumbersome limitations such as requiring
`
`individuals to wear a badge in the photos for identification. Further, the websites did
`
`not provide search capabilities for identifying photos of specific individuals once
`
`identified, or ways to distinguish between different types of the same object (i.e.,
`
`identifying one clown from another clown). Finally, the websites did not offer a way
`
`to quickly and easily send notification to individuals that they had been identified in
`
`a photo. Ex-1001, 1:62-3:44.
`
`2.
`
`Advantages Provided by the ’432 Patent
`The ’432 patent addressed these deficiencies with a system that allows users
`
`to supply and/or receive information about the existence of objects within images.
`
`Figure 2 of the ’432 patent, reproduced below, demonstrates some of the novel
`
`aspects in a particular embodiment. As shown below, a user database receives,
`
`stores, and provides information about people and/or objects identified within the
`
`photo.
`
`
`
`4
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`Case IPR2023-00057
`U.S. Patent No. 8,954,432
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`
`
`Ex-1001, Fig. 2.
`
`For example, the User’s database can be populated to include a user identifier
`
`with information such as the user’s name, email-address, home page address, and/or
`
`a list of contacts. The Images database receives and stores information about photos
`
`and can be populated to include, for each photo, a photo identifier unique to the
`
`photo and the location of the image file on the network. The Images database may
`
`also include descriptive information about the photo such as a caption or the date the
`
`photo was taken. The Identifications database may receive, store, and provide
`
`information about relationships between users and photos. For example, the
`
`Identifications database may contain fields specifying what kind of relationship
`
`exists between a photo and a user, information about the location within a photo, or
`
`the coordinates that a user or other person appears. Ex-1001, 6:59-7:37.
`
`
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`5
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`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`The ’432 invention thus permits the identification of objects within images
`
`without requiring the person submitting the photos to input the information for each
`
`and every photo in an album. The ’432 invention also allows users to share their
`
`photos with those individuals identified in them, and to automatically search for
`
`photos and/or certain people in photos. Ex-1001, Abstract.
`
`3.
`
`The ’432 Patent Components
`The host computer of the ’432 system may be any computing device such as
`
`a network computer running Windows 2000, Novel Netware, Unix, or any other
`
`network operating system. The host computer may be connected to a firewall
`
`computer at the boundaries of network to prevent tampering with information stored
`
`on or accessible by the host computer. If the invention is implemented with the
`
`Internet, the host computer may include conventional web hosting operating
`
`software, an Internet connection such as a modem, DSL converter or ISDN
`
`converter, and be assigned an IP address and corresponding domain name so that the
`
`website hosted thereon can be accessed via the communications network. Ex-1001,
`
`5:26-39.
`
`The client computer of the ’432 system provides a system interface for a user.
`
`The client computer allows a user to access a host computer via a communications
`
`network in order to upload and/or view photographs. Each client computer may also
`
`include or can access a conventional Internet connection such as a modem, Digital
`
`
`
`6
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`

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`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`Subscriber Line (DSL) converter, or Integrated Service Digital Network (ISDN)
`
`converter and a web browser that permits it to access and view data over the Internet.
`
`Ex-1001, 5:40-56.
`
`The communications network may be internet or any other communications
`
`network such as local area network, a wide area network, a wireless network, an
`
`intranet or a virtual private network. Ex-1001, 5:56-64.
`
`The computer program or programs embodying one or more aspects of the
`
`invention are stored in or on computer-readable medium residing on or accessible
`
`by host computer and provide a mechanism for instructing host computer to operate
`
`the invention as described herein. The computer programs typically comprise
`
`ordered listings of executable instructions for implementing logical functions in host
`
`computer and user computers coupled with host computer. Ex-1001, 5:65-6:2.
`
`The host computer comprises server engine which is programmed to operate
`
`or host a website and serve as a repository for images and identification information
`
`for objects within the images as described in more detail below. The images may be
`
`photographs, graphics, artwork, or any other digital image that contains or depicts
`
`one or more objects. The objects within the images may include people, animals,
`
`plants, buildings, places, or anything else shown in images. In one embodiment of
`
`the invention, the images and objects are referred to (but not limited to) as
`
`photographs and people, respectively. Ex-1001, 6:32-44.
`
`
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`7
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`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`In order to implement the ’432 invention, the host system will access a server
`
`system or database system configured to support the functionality. As discussed
`
`above, ’432 the system may utilize a Users database, Identifications database, and
`
`Images database.
`
`When the host computer wishes to find all the people identified in a specific
`
`image, it will look for all records in the Identifications database 240 where the Image
`
`I.D. equals a supplied I.D. When the host computer wishes to find all the photos that
`
`a specific user appears in, it will search for all records in the Identifications database
`
`where the user's I.D. equals a supplied I.D. Ex-1001, 6:59-65.
`
`The host computer may access information in the Identifications database to
`
`find all the people identified in a given photo or to find all the photos a given person
`
`has been identified in. Ex-1001, 8:44-9:5.
`
`Figure 1 of the ’432 patent, reproduced below, represents an exemplary
`
`schematic diagram of the ’432 patent components as detailed above.
`
`
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`Case IPR2023-00057
`U.S. Patent No. 8,954,432
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`
`
`Ex-1001, Fig. 1.
`
`4.
`
`The Operation of the ’432 Patent Inventions
`In operation, users of the ’432 system can supply and/or receive information
`
`about the existence of objects within images. The process initiates by obtaining
`
`image data comprising one or more objects. For instance, a user may provide a
`
`system embodying the invention a digital photo of a group of friends and family
`
`members. Ex-1001, 9:35-41.
`
`The ’432 system obtains identifying information from the user where the
`
`identifying information relates to the existence of at least one object in the image
`
`(e.g., digital photo). For example, when viewing an image, a user may select the
`
`
`
`9
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`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`name of a person from a list to identify this person as existing in the image. The
`
`identifying information may be stored in the databases. Ex-1001, 9:41-49.
`
`The identifying information is also displayed to a user. The identifying
`
`information may be displayed in several different ways. For example, the system
`
`may provide an output displaying an image and listing the names of all objects
`
`identified therein. In another example, the system may provide a listing of all images
`
`a specific person is identified in. Ex-1001, 9:50-58.
`
`B.
`
`ALLEGED PRIOR ART
`As shown above, Meta presents four grounds challenging claims 1-8 using
`
`various combinations of Sharpe, Eintracht and Carey.5 These references are
`
`described briefly below.
`
`1.
`
`Sharpe
`Sharpe discloses a system and method for archiving and retrieving digital
`
`media items based on episodic memory of predefined associated groups of one or
`
`more people. Ex-1005, Abstract; 1:5-10. However, as described in detail below,
`
`Sharpe is not prior art to the ’432 Patent.
`
`The Sharpe disclosure describes the invention as archiving and retrieval of
`
`photos or digital media items based on three fundamental indices, which include: (1)
`
`
`5 Petition, 5.
`
`
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`10
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`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`group event types, (2) persons associated with the digital media item and (3) a time
`
`period. Ex-1005, 1:46-2:02. The Sharpe disclosure further describes these
`
`fundamental indices as based on the way people remember things. Ex-1005, 1:65-
`
`2:02. Further, this method of limiting indices to a group with a shared experience
`
`limits the number of people and event types needed for indexing or retrieving. Ex-
`
`1005, 2:01-11.
`
`The Sharpe system provides a method of archival and retrieval tied to the way
`
`people remember things, based on three fundamental indices which track with
`
`episodic memory, of which is selected by the user or group. For example, based on
`
`a specific time and date, or a time range. Ex-1005 2:5-10.
`
`Because the collection and indexing of the digital media
`items is based on the episodic memory of the group, i.e.
`they have chosen the material and indexed it according
`to its relevance to them, the retrieval and browsing
`through data digital items are attuned to the memories of
`the user. The aim of retrieval is not to retrieve a specific
`digital media item but instead to retrieve any digital
`media items relating to a memorable episode. Thus the
`indexing system does not uniquely identify digital media
`items, but replaces them within a highly personal
`framework.
`
`
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`11
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`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`
`Ex-1005, 2:12-21 (emphasis added). 6
`
`Figure 1 shows a block diagram overview of the Sharpe system. Sharpe first
`
`discloses users of a group who are registered by a group registration process in a
`
`database. The members then work together to identify, collect, translate or create
`
`digital media items in different media which represent the culture of the group. Ex-
`
`1005, 5:4-17.
`
`
`6 Hereinafter emphasis and highlighting have been added unless otherwise noted.
`
`
`
`
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`12
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`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`
`Ex-1005, Fig. 1.
`
`The storage process associates, with each item to be stored, an identifier and
`
`other associated information for the index. The storage process includes identifying
`
`a group of people from the database, identifying one or more multimedia items to be
`
`archived with index information, selection of an event type from a table of possible
`
`event types for the group of people and selecting a date from the calendar.
`
`Individuals within the group identified on the database are selected using the
`
`database for association with the selected item(s). The storage process indexes one
`
`or more multimedia items in accordance with the group, members of the group,
`
`one or more event types, and a date. Ex-1005, 5:24-40.
`
`The storage process results in stored or archived multimedia items, wherein
`
`the multimedia database can be structured so that the multimedia items are stored
`
`separately to the index data. Ex-1005, 5:41-45. The retrieval process then allows the
`
`digital media items to be retrieved and displayed. Ex-1005, 5:46-49.
`
`2.
`
`Eintracht
`At a high level, Eintracht discloses a system for collaborative document
`
`annotation whereby notes/annotations associated with an image are stored in a notes
`
`database on a central notes server. The collaborative document annotation is based
`
`on the exchange of notes attached to web based documents (or images), and the
`
`
`
`13
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`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`system is suitable for use over a network such as the Internet based World Wide
`
`Web. Ex-1006, Abstract, 1:6-12.
`
`Eintracht describes problems related to viewing and annotating documents on
`
`World-Wide-Web browsers, including the lack of ability to annotate documents
`
`when information needs to be exchanged among multiple people in multiple
`
`locations. To address these issues, Eintracht introduces a system that “allow[s]
`
`multiparty collaboration based on the asynchronous exchange of annotations over a
`
`network such as the Internet without the requirement that all parties wishing to
`
`collaborate be simultaneously logged on to a server.” Ex-1006, 2:1-5.
`
`Eintracht discloses a system for differentiating between notes generated by
`
`various users. Each user chooses a unique user ID that forms a Note Owner identifier
`
`(Note Owner ID). Ex-1006, 8:6-17. Eintracht also discloses a Note Document ID
`
`which identifies documents and document aggregations themselves. Ex-1006, 8:18-
`
`23.
`
`3.
`
`Carey
`Carey discloses a method, system and computer program product for instant
`
`message communications. Ex-1007, Abstract. Carey allows team members in
`
`different locations to converse. Ex-1007, 1:24-26.
`
`Carey discloses a method for remotely creating instant message name lists for
`
`cellular devices. A user subscribes by registering, and then can create an instant
`
`
`
`14
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`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`message name list by entering the instant message name corresponding to a desired
`
`recipient. The name is then saved in a look-up table in a database, and stored in
`
`relation to predefined user profile information. Ex-1007,4:6-25.
`
`III. LEVEL OF ORDINARY SKILL
`For the purposes of this preliminary response, Patent Owner submits that a
`
`POSITA in the timeframe of the invention would have a bachelor’s degree in
`
`computer science, electrical engineering, or computer engineering, and at least two
`
`years of experience designing Web-based media applications.
`
`IV. CLAIM CONSTRUCTION
`In inter partes reviews filed after November 13, 2018, the Board construes
`
`claim terms based on their ordinary and customary meaning in accordance with
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`Phillips v. AWH Corp., 415 F.3d 1303, Fed. Cir. 2005) (en banc). 83 Fed. Reg. 51340
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`(October 11, 2018). Under Phillips, claims must be construed so as to sustain their
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`validity, if possible. The specification is the “best source for understanding a
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`technical term,” to be supplemented, “as needed, by the prosecution history.” Id. at
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`1315.
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`Patent Owner submits that no term requires express construction. Patent
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`Owner explicitly reserves the right to construe claim limitations should the Board
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`institute review.
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`15
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`Case IPR2023-00057
`U.S. Patent No. 8,954,432
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`V.
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`ARGUMENT
`As Petitioner, Meta has the burden of proof to establish that it is entitled to its
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`requested relief.7 Here, Meta must demonstrate a reasonable likelihood that the
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`Challenged Claims are unpatentable and would have been obvious in view of the
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`combinations cited in the Petition’s alleged grounds for unpatentability. The Board
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`should deny institution, because Meta has failed to meet this burden.
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`A.
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`Sharpe Does Not Qualify as Prior Art
`All four grounds challenging the independent claims rely on Sharpe, which
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`was filed on September 26, 2000, only one month prior to the filing of the provisional
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`application to which the ’432 patent claims priority. However, the inventor of the
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`’432 patent conceived of the invention claimed in the ’432 patent before Sharpe was
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`filed, and worked diligently to reduce it to practice, both as an actual product and
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`then also by filing the provisional application on November 15, 2000. Evidence
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`shows that the ’432 patent antedates the Sharpe reference. Disqualifying this
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`reference, which forms the basis for each of the four grounds asserted in the Petition,
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`should result in denial of all the obviousness grounds asserted in the Petition.
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`“In an inter partes review, the burden of persuasion is on the petitioner to
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`prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and
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`7 37 C.F.R. § 42.108(c).
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`
`
`16
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`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`that burden never shifts to the patentee.” Dynamic Drinkware, LLC v. Nat’l
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`Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). Thus, while the burden of
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`production may shift to a patentee (e.g., when arguing that a reference does not
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`qualify as prior art), the burden of persuasion remains with the petitioner. Id. at 1379.
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`Thus, while a patentee bears the burden of coming forward with evidence of earlier
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`conception, diligence, and/or reduction to practice, the burden of proving that a
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`reference qualifies as prior art remains with the petitioner. See Freebit AS v. Bose
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`Corp., No. IPR2017-01308, 2017 WL 5202106 at *6 (PTAB Nov. 8, 2017).
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`There is a remedy in patent law that allows an inventor to “swear behind” a
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`reference if the inventor had possession of the subject matter disclosed by the
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`reference in question. In re Stempel, 241 F.2d 755, 759 (C.C.P.A. 1957) (“We are
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`convinced that under the law all the applicant can be required to show is priority
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`with respect to so much of the claimed invention as the reference happens to show.
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`When he has done that he has disposed of the reference.”). “Rule 131 provides a
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`procedure by which the applicant is permitted to show, if he can, that his date of
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`invention was earlier than the date of the reference.” Id. at 760.
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`A patent owner may antedate a reference by either showing actual reduction
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`to practice prior to the effective date of the adverse reference, or conception prior to
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`the effective date of the adverse reference plus diligence to actual or constructive
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`reduction to practice by the patent owner. In re Steed, 802 F.3d 1311, 1316 (Fed.
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`17
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`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`Cir. 2015); see MPEP 2138.01(II) (example 3). “The principles are legal, but the
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`conclusions of law focus on the evidence, for which the Board's factual findings are
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`reviewed for support by substantial evidence.” Steed, 802 F.3d at 1316; see NFC
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`Tech., LLC v. Matal, 871 F.3d 1367, 1371 (Fed. Cir. 2017). To establish actual
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`reduction to practice of a claimed invention, “an inventor must prove that he
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`constructed his claimed invention and that it would work for its intended purpose.”
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`Mazzari v. Rogan, 323 F.3d 1000, 1005 (Fed. Cir. 2003).
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`To establish reasonable diligence towards reduction to practice, the patent
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`owner must show that there was reasonably continuous diligence. See, e.g., Tyco
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`Healthcare Grp. v. Ethicon Endo-Surgery, Inc., 774 F.3d 968, 975 (Fed. Cir. 2014);
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`Monsanto Co. v. Mycogen Plant Science, Inc., 261 F.3d 1356, 1370 (Fed. Cir. 2001).
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`Under this standard, an inventor is not required to work on reducing his invention to
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`practice every day during the critical period, and periods of inactivity within the
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`critical period do not automatically vanquish a patent owner’s claim of reasonable
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`diligence. Perfect Surgical Techniques, Inc. v. Olympus Am., Inc., 841 F.3d 1004,
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`1009 (Fed. Cir. 2016). Diligence must be shown from just prior to the competing
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`reference’s effective date until the date of the invention’s reduction to practice. Id.
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`The effective filing date of Sharpe is September 26, 2000, and Mr. Frigon’s §
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`131 Declaration (Ex-2005) and other supporting evidence establish a date of
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`conception at least as early as April 2000. Mr. Frigon’s 131 Declaration, and
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`18
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`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`subsequent corroborating evidence and additional third party declarations, show that
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`between the conception in early 2000 of the invention, and the critical date of Sharpe,
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`the patent owner had reasonably continued activity to reduce the invention to
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`practice.
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`The authority relied on by Petitioner in its Petition – Kohle – finds support in
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`In re Scheiber, 587 F.2d 59 (C.C.P.A. 1978), which in turn endorses the solution of
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`Stempel. Id. at 61-62. As further explained in In re Scheiber:
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`[t]he operation of [35 U.S.C.] § 120 diff