UNITED STATES PATENT AND TRADEMARK OFFICE
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`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––
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`META PLATFORMS, INC.,
`Petitioner,
`
`v.
`
`ANGEL TECHNOLOGIES LLC,
`Patent Owner.
`
`––––––––––
`
`Case IPR2023-00057
`U.S. Patent 8,954,432
`
`––––––––––
`
`PATENT OWNER’S SUR-REPLY IN SUPPORT OF ITS
`PRELIMINARY RESPONSE UNDER 37 C.F.R. § 42.107
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`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
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`––––––––––
`
`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 SUR-REPLY IN SUPPORT OF ITS
`PRELIMINARY RESPONSE UNDER 37 C.F.R. § 42.107
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`
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`
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`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
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`
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`
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`TABLE OF CONTENTS
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`IPR2023-00057
`U.S. Patent 8,954,432
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`A.
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`B.
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`C.
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`The law does not require perfect proof of prior conception and
`reduction to practice. ............................................................................. 3
`The evidence provided in the POPR and in the relevant declarations
`proves that Sharpe is not prior art. ........................................................ 6
`Patent Owner addressed Claims 1-5 and 7-8 in the POPR ................... 7
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`i
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`IPR2023-00057
`U.S. Patent 8,954,432
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`TABLE OF AUTHORITIES
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`Page(s)
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`
`CASES
`Arctic Cat Inc. v. GEP Power Prod., Inc.,
`919 F.3d 1320 (Fed. Cir. 2019) ............................................................................ 6
`ATI Techs. ULC v. Iancu,
`920 F.3d 1362 (Fed. Cir. 2019) ............................................................................ 6
`Cooper v. Goldfarb,
`154 F.3d 1321 (Fed. Cir. 1998) ........................................................................ 3, 5
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`800 F.3d 1375, 1379 (Fed. Cir. 2015) ................................................................. 1
`
`Intuitive Surgical, Inc. v. Ethicon LLC,
`IPR2019-00991, Paper 48 (PTAB Jan. 12, 2021) ................................................ 6
`Medtronic et al. v. Teleflex Innovations S.A.R.L.,
`IPR2020-00135, Paper 128, 29–30 (PTAB Jun. 17, 2021) .................................. 3
`Sunoco Partners Mktg. & Terminals L.P. v. Powder Springs Logistics, LLC,
`No. CV 17-1390-LPS-CJB, 2020 WL 9438750 (D. Del. Feb. 20, 2020) ............ 6
`OTHER AUTHORITIES
`U.S. Patent No. 8,954,432 .............................................................................. 1, 2, 4, 7
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`ii
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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 (previously
`submitted)
`Pict_inpt (previously submitted)
`2006
`Picture.mbd (previously submitted)
`2007
`Pict_upd (previously submitted)
`2008
`Picture.asp (previously submitted)
`2009
`2010 Links.asp (previously submitted)
`2011 Ex0006.log (previously submitted)
`2012 Messages_post (previously submitted)
`2013 Ex0007.log (previously submitted)
`2014 American Express Statement (previously submitted)
`2015 Emails (users populating profiles) (previously submitted)
`2016 Declaration of Chris Malone Under 37 C.F.R. § 1.131 (previously
`submitted)
`Provisional File History Regarding Application 60/248994 of
`November 15, 2000 (previously submitted)
`2018 Declaration of Lisa Larson Under 37 C.F.R. § 1.131 (previously
`submitted)
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`2017
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`iii
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`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`Pursuant to the Board’s authorization (Ex. 1036), Patent Owner submits its
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`sur-reply
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`to Petitioner’s Reply
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`to Patent Owner’s Preliminary Response
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`(“Petitioner’s Reply”, Paper 14).
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`Petitioner’s arguments focus on alleged failures to provide complete evidence
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`of conception and reduction to practice of the Challenged Claims. But the law does
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`not require the “perfect proof” sought by Petitioner. Rather, the law recognizes that
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`circumstantial evidence is sufficient, particularly when a substantial amount of time
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`has passed between the filing of a priority application and a patentability challenge.
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`Critically, as stated in the Patent Owner’s Preliminary Response (“POPR”),
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`the burden of persuasion that a cited reference is prior art remains with the Petitioner.
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`POPR, 17 (citing Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
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`1379 (Fed. Cir. 2015)). Petitioner has failed to meet that burden, despite presumably
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`recognizing that the provisional application to which the ’432 patent claims
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`priority was signed by the inventor on August 15, 2000, more than one month prior
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`to the September 26, 2000 priority date of its lead prior art reference in four related
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`petitions for inter partes review. Petitioner understood the risk it was taking when
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`relying on Sharpe as prior art and never even mentions the August 15, 2000 signing
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`date of the Frigon provisional application in the Petition. That August 15, 2000
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`signature in and of itself demonstrates that Sharpe is not prior art. More importantly,
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`Petitioner knew this was an issue when it filed its Petition and failed to provide any
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`1
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`
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`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`evidence whatsoever that (i) Sharpe has priority over the provisional application or
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`(ii) any suggestion that the inventor was not diligent in the August 15, 2000 to
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`November 15, 2000 time period.
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`Here, a pro se inventor, Mr. Mark Frigon, conceived the subject matter of the
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`Challenged Claims over 23 years ago, worked diligently and continuously to develop
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`source code embodying those claims, and prepared a provisional patent application
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`over one month before the earliest priority date of Petitioner’s lead prior art
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`reference, Sharpe. Because Sharpe is not prior art, Petitioner’s Grounds fail and the
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`Challenged Claims are patentable.
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`I.
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`CONCEPTION,
`AGAINST
`ARGUMENTS
`PETITIONER’S
`DILIGENCE AND REDUCTION TO PRACTICE FAIL
`As stated in the POPR, Sharpe does not qualify as prior art because the
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`inventor of U.S. Patent No. 8,954,432 (“the ’432 patent”) conceived of the invention
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`claimed in the ’432 patent before Sharpe was filed, and worked diligently to reduce
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`the claimed invention to practice before Sharpe’s critical date. Contrary to
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`Petitioner’s arguments, the POPR, along with the declaration from the inventor of
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`the ’432 patent, Mark Frigon (Ex. 2005), provides the required evidence to antedate
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`Sharpe.
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`2
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`A.
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`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`The law does not require perfect proof of prior conception and
`reduction to practice.
`Petitioner demands incontrovertible direct evidence of conception and
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`reduction to practice. However, circumstantial evidence will suffice, and the
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`evidence as a whole must be considered. Cooper v. Goldfarb, 154 F.3d 1321, 1330
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`(Fed. Cir. 1998); see also Medtronic et al. v. Teleflex Innovations S.A.R.L., IPR2020-
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`00135, Paper 128, 29–30 (PTAB Jun. 17, 2021) (finding inventor’s notes
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`persuasive). As detailed below, Patent Owner fully satisfies its burden in antedating
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`the Sharpe reference.
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`Petitioner ignores evidence regarding conception, diligence and reduction to
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`practice of three databases. Petitioner attempts to argue that the evidence submitted
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`with the POPR demonstrate that Mr. Frigon conceived or reduced to practice only a
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`single database and that the claims require “three distinct and separate” databases.
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`Paper 14, at 1. This mischaracterizes the POPR, the evidence submitted therewith,
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`and the claim language.
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`First, Petitioner mischaracterizes the claim language as requiring “three
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`distinct and separate” databases. Id. This language does not appear in the Challenged
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`Claims, and Petitioner has not proposed a construction requiring “distinct and
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`separate databases.” Petitioner attempts to characterize the ’432 patent’s allowance
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`by claiming that this was the “sole basis for allowance.” Id. The claim language does
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`require a Users database, Mappings database, and Images database, but the Examiner
`3
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`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`allowed the combination of elements to issue as the Challenged Claims and never
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`stated in the prosecution history that three “distinct and separate” databases were the
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`sole basis for allowance.
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`The POPR discusses the provisional application to which the ’432 application
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`claims priority in detail. Ex. 2017. As demonstrated in the provisional application,
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`which was signed by Mr. Frigon on August 15, 2000, Patent Owner had both
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`conceived and reduced to practice the concept of three databases. Id. at 2, FIG. 1-A
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`(showing a Users database, Mappings database, and Images database). This figure,
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`and corresponding portions of the specification, directly map to the claim language
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`of the ’432 patent. Id. at 2-4, FIG. 1-A. Mr. Frigon does not “admit that, at most, he
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`conceived or reduced to practice only a single database.” Paper 14 at 1. This is
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`directly contrary to Mr. Frigon’s statements and evidence submitted therewith,
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`which Petitioner mischaracterizes.
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`Further, Patent Owner submitted the source code that it was able to recover
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`from hard drives, reflecting source code developed over 23 years ago. Unfortunately,
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`the three-database embodiment is not demonstrated in the recovered source code.
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`However, this embodiment is clearly disclosed in the provisional application, which
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`is clear evidence of conception. See Ex. 2017 at 2-4, FIG. 1-A.
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`Petitioner is correct in that Mr. Frigon filed the provisional application from
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`New York as indicated in the AMEX Exhibit. However, Mr. Frigon’s impending
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`4
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`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`move to Avon, Colorado is confirmed by subsequent charges on his AMEX five
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`days after mailing the application. Ex. 2014. Mr. Frigon listed his parents’ address
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`in Avon, Colorado on the cover page of the provisional application in view of that
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`impending move, and that was the fact that drove his recollection that he filed the
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`provisional application after having already moved from New York to Colorado.1
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`However, this does not change the fact that Mr. Frigon had the application ready for
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`filing on August 15, 2000, well in advance of the November filing date, and
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`therefore, in advance of Sharpe’s critical date.
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`Petitioner asserts that “PO also fails to provide evidence or analysis showing
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`all elements of the claims invention reduced to practice or conceived.” It is well
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`established that circumstantial evidence of conception and reduction to practice will
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`suffice, and that actual reduction to practice does not require corroboration for every
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`contested factual issue. Cooper, 154 at 1330. As discussed above, Petitioner ignores
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`evidence of conception and reduce to practice of the claim elements.
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`1 As noted above, Petitioner is correct that the provisional application was filed from
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`New York. Ex. 2014. Patent Owner, in a separate email to the Board, has requested
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`leave to file a revised version of Ex. 2005 that removes the last sentence of ¶3 of Ex.
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`2005 (“I paid for and filed the application upon my relocation to Colorado on
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`November 15, 2000.”) to ensure that the record is accurate.
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`5
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`B.
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`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`The evidence provided in the POPR and in the relevant
`declarations proves that Mr. Frigon was diligent.
`Patent Owner submitted circumstantial evidence of conception and reduction
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`to practice through Mr. Frigon’s 131 declaration, the corroborating declarations of
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`Ms. Larson and Mr. Malone, and the recovered exhibits. The corroborating
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`declarations track the information that was recoverable from the hard drives and
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`show that Mr. Frigon was working to improve his invention through November
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`2000. “[D]iligence need not be perfectly continuous—only reasonably continuous.”
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`Arctic Cat Inc. v. GEP Power Prod., Inc., 919 F.3d 1320, 1331 (Fed. Cir. 2019); see
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`also Intuitive Surgical, Inc. v. Ethicon LLC, IPR2019-00991, Paper 48 at 23 (PTAB
`
`Jan. 12, 2021) (holding same). Thus, the inventor need not work on the claimed
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`invention every day and diligence is not negated by work on improvements or
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`alternatives. ATI Techs. ULC v. Iancu, 920 F.3d 1362, 1369 (Fed. Cir. 2019). The
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`purpose of the diligence inquiry is not to scour corroborating evidence in search of
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`periods where the patent owner failed to substantiate activity, but is instead in light
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`of the evidence as a whole to determine whether the invention was not abandoned
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`or unreasonably delayed. Arctic Cat, 919 F.3d at 1331; ATI, 920 F.3d at 1373; see
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`also Sunoco Partners Mktg. & Terminals L.P. v. Powder Springs Logistics, LLC,
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`No. CV 17-1390-LPS-CJB, 2020 WL 9438750, at *11 (D. Del. Feb. 20, 2020)
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`(denying motion for summary judgment despite alleged failure to account for
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`months of activity).
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`6
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`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`Patent Owner addressed Claims 1-5 and 7-8 in the POPR
`Patent Owner has shown that all elements of the Challenged Claims were
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`C.
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`present in the source code and provisional application, and Petitioner’s suggestion
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`that Patent Owner has failed to show prior conception and reduction to practice of
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`claims 1-5 and 7-8 is incorrect. Paper 14 at 7. Claim 1 is a system claim that
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`substantially tracks claim 6, with additional basic elements related to receiving user
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`requests. However, these additional elements are disclosed by the provisional patent
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`application, which was drafted in August 2000, and that evidence is submitted with
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`and discussed in the POPR. Ex. 2017, 2, 6 and FIGs. 2-4 (showing user requests).
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`Support for claims 2-5 and 7-8 is likewise evident in the provisional application.
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`II.
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`CONCLUSION
`Petitioner took a calculated risk and filed multiple IPR petitions that rely on a
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`reference (Sharpe) whose priority is antedated by the inventor’s signature on the
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`face of the provisional application to which the ’432 patent claims priority. That
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`risk has not paid off, because Patent Owner has shown that Sharpe is not prior art.
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`Patent Owner has made a diligent effort to recover source code which, coupled with
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`the provisional application and the accompanying declarations, shows that Patent
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`Owner conceived of and diligently worked to reduce the claimed invention to
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`practice before Sharpe’s priority date and through to the filing of the provisional
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`application. The Petition should be denied.
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`7
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`
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`Case IPR2023-00057
`U.S. Patent No. 8,954,432
`Respectfully submitted,
`
`
`
`
`
`/Scott W. Hejny /
`Scott W. Hejny
`Reg. No. 45,882
`shejny@mckoolsmith.com
`McKool Smith, P.C.
`300 Crescent Court, Suite 1500
`Dallas, TX 75201
`Telephone: (214) 978-4000
`Fax: (214) 978-4044
`
`Eliza Beeney (pro hac vice)
`ebeeney@mckoolsmith.com
`McKool Smith, P.C.
`395 9th Avenue, 50th Floor
`New York, NY 10001
`Telephone: (202) 402-9400
`
`Kaylee Hoffner (pro hac vice)
`khoffner@mckoolsmith.com
`McKool Smith, P.C.
`600 Travis Street, Suite 7000
`Houston, TX 77002
`Telephone: (713) 485-7320
`
`
`
`
`8
`
`Dated: March 16, 2023
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`Case IPR2023-00057
`U.S. Patent No. 8,954,432
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the foregoing PATENT OWNER’S
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`SUR-REPLY IN SUPPORT OF ITS PRELIMINARY RESPONSE was served
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`electronically via e-mail on March 16, 2023, in its entirety on the following counsel
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`of record for Petitioner:
`
`Lisa K. Nugyen
`(lisa.nguyen@allenovery.com)
`David M. Tennant
`(david.tennant@allenovery.com)
`Alan M. Billharz
`(allan.billharz@allenovery.com)
`Chitrajit Chandrashekar
`(chitrajit.chandrashekar@allenovery.com)
`Eric E. Lancaster
`(eric.lancaster@allenovery.com)
`Sara L. Townsend
`(sara.townsend@allenovery.com)
`
`
`McKool Smith, P.C.
`
`/Scott W. Hejny /
`Scott W. Hejny
`Reg. No. 45,882
`
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`9
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