UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––
`
`META PLATFORMS, INC.,
`Petitioner,
`
`v.
`
`ANGEL TECHNOLOGIES LLC,
`Patent Owner.
`
`––––––––––
`
`Case IPR2023-00058
`U.S. Patent 9,959,291
`
`––––––––––
`
`PATENT OWNER’S SUR-REPLY IN SUPPORT OF ITS
`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
`
`
`
`
`
`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––
`
`META PLATFORMS, INC.,
`Petitioner,
`
`v.
`
`ANGEL TECHNOLOGIES LLC,
`Patent Owner.
`
`––––––––––
`
`Case IPR2023-00058
`U.S. Patent 9,959,291
`
`––––––––––
`
`PATENT OWNER’S SUR-REPLY IN SUPPORT OF ITS
`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
`
`
`
`
`
`IPR2023-00058
`U.S. Patent 9,959,291
`
`TABLE OF CONTENTS
`
`PETITIONER’S ARGUMENTS AGAINST CONCEPTION,
`DILIGENCE AND REDUCTION TO PRACTICE FAIL ............................. 2
`A.
`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. .................................... 4
`Patent Owner addressed Claims 2-26 in the POPR .............................. 7
`C.
`CONCLUSION ................................................................................................ 7
`
`B.
`
`
`
`i
`
`
`
`
`I.
`
`II.
`
`
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`
`
`
`
`IPR2023-00058
`U.S. Patent 9,959,291
`
`TABLE OF AUTHORITIES
`
`Page(s)
`
`
`CASES
`Arctic Cat Inc. v. GEP Power Prod., Inc.,
`919 F.3d 1320 (Fed. Cir. 2019) ........................................................................ 4, 5
`ATI Techs. ULC v. Iancu,
`920 F.3d 1362 (Fed. Cir. 2019) ........................................................................ 4, 5
`Cooper v. Goldfarb,
`154 F.3d 1321 (Fed. Cir. 1998) ........................................................................ 3, 4
`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) ................................................ 4
`Medtronic et al. v. Teleflex Innovations S.A.R.L.,
`IPR2020-00135, Paper 128, 29–30 (PTAB Jun. 17, 2021) .................................. 3
`Perfect Surgical Techniques, Inc. v. Olympus Am., Inc.,
`841 F.3d 1004 (Fed. Cir. 2016) ............................................................................ 6
`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) ............ 5
`OTHER AUTHORITIES
`U.S. Patent No. 9,959,291 .................................................................................. 1, 2, 7
`
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`
`
`ii
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`
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`IPR2023-00058
`U.S. Patent 9,959,291
`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)
`
`2017
`
`
`
`
`
`iii
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`
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`Case IPR2023-00058
`U.S. Patent No. 9,959,291
` Pursuant to the Board’s authorization (Ex. 1036), Patent Owner submits its
`
`sur-reply
`
`to Petitioner’s Reply
`
`to Patent Owner’s Preliminary Response
`
`(“Petitioner’s Reply”, Paper 14).
`
`Petitioner’s arguments focus on alleged failures to provide complete evidence
`
`of conception and reduction to practice of the Challenged Claims. But the law does
`
`not require the “perfect proof” sought by Petitioner. Rather, the law recognizes that
`
`circumstantial evidence is sufficient, particularly when a substantial amount of time
`
`has passed between the filing of a priority application and a patentability challenge.
`
`Critically, as stated in the Patent Owner’s Preliminary Response (“POPR”),
`
`the burden of persuasion that a cited reference is prior art remains with the Petitioner.
`
`POPR, 17 (citing Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
`
`1379 (Fed. Cir. 2015)). Petitioner has failed to meet that burden, despite presumably
`
`recognizing that the provisional application to which the ’291 patent claims
`
`priority was signed by the inventor on August 15, 2000, more than one month prior
`
`to the September 26, 2000 priority date of its lead prior art reference in four related
`
`petitions for inter partes review. Petitioner understood the risk it was taking when
`
`relying on Sharpe as prior art and never even mentions the August 15, 2000 signing
`
`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,
`
`Petitioner knew this was an issue when it filed its Petition and failed to provide any
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`
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`1
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`
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`Case IPR2023-00058
`U.S. Patent No. 9,959,291
`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
`
`November 15, 2000 time period.
`
`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
`
`source code embodying those claims, and prepared a provisional patent application
`
`over one month before the earliest priority date of Petitioner’s lead prior art
`
`reference, Sharpe. Because Sharpe is not prior art, Petitioner’s Grounds fail and the
`
`Challenged Claims are patentable.
`
`I.
`
`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
`
`inventor of U.S. Patent No. 9,959,291 (“the ’291 patent”) conceived of the invention
`
`claimed in the ’291 patent before Sharpe was filed, and worked diligently to reduce
`
`the claimed invention to practice before Sharpe’s critical date and through to the
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`ultimate filing of the provisional application on November 15, 2000. Contrary to
`
`Petitioner’s arguments, the POPR, along with the declaration from the inventor of
`
`the ’291 patent, Mark Frigon (Ex. 2005), provides the required evidence to antedate
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`Sharpe.
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`
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`2
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`
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`Case IPR2023-00058
`U.S. Patent No. 9,959,291
`A. The law does not require perfect proof of prior conception and
`reduction to practice.
`Petitioner demands incontrovertible direct evidence of conception and
`
`reduction to practice. However, circumstantial evidence will suffice, and the
`
`evidence as a whole must be considered. Cooper v. Goldfarb, 154 F.3d 1321, 1330
`
`(Fed. Cir. 1998); see also Medtronic et al. v. Teleflex Innovations S.A.R.L., IPR2020-
`
`00135, Paper 128, 29–30 (PTAB Jun. 17, 2021) (finding inventor’s notes
`
`persuasive). As detailed below, Patent Owner fully satisfies its burden in antedating
`
`the Sharpe reference.
`
`Petitioner ignores evidence regarding conception, diligence and reduction to
`
`practice. As an example, Petitioner attempts to argue that Patent Owner failed to
`
`establish prior conception of every claim feature because Mr. Frigon’s declaration
`
`is insufficient to prove that Mr. Frigon had conceived of “filtering the input list to
`
`users in a contact list.” Paper 14, at 3. However, Mr. Frigon’s declaration specifically
`
`stated that this feature had both been conceived and was in development. Ex. 2005
`
`at 12. As support to the POPR, Patent Owner submitted the source code that it was
`
`able to recover from hard drives, reflecting source code developed over 23 years
`
`ago. Unfortunately, this feature is not disclosed in the source code. However, this
`
`embodiment is both supported by Mr. Frigon’s declaration, and clearly disclosed in
`
`the provisional application. See Ex. 2017 at FIG. 2 (showing “server transcribes list
`
`of contacts” as a method step).
`
`
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`3
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`
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`Case IPR2023-00058
`U.S. Patent No. 9,959,291
`
`
`
`Petitioner asserts that “PO also fails to provide evidence or analysis showing
`
`all elements of the claimed invention reduced to practice or conceived.” It is well
`
`established that circumstantial evidence of conception and reduction to practice will
`
`suffice, and that actual reduction to practice does not require corroboration for every
`
`contested factual issue. Cooper, 154 at 1330. As discussed above, Petitioner ignores
`
`evidence of conception and reduce to practice of the claim elements in question.
`
`B.
`
`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
`
`to practice through Mr. Frigon’s 131 declaration, the corroborating declarations of
`
`Ms. Larson and Mr. Malone, and the recovered exhibits. The corroborating
`
`declarations track the information that was recoverable from the hard drives and
`
`show that Mr. Frigon was working to improve his invention through November
`
`2000. “[D]iligence need not be perfectly continuous—only reasonably continuous.”
`
`Arctic Cat Inc. v. GEP Power Prod., Inc., 919 F.3d 1320, 1331 (Fed. Cir. 2019); see
`
`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
`
`invention every day and diligence is not negated by work on improvements or
`
`alternatives. ATI Techs. ULC v. Iancu, 920 F.3d 1362, 1369 (Fed. Cir. 2019). The
`
`purpose of the diligence inquiry is not to scour corroborating evidence in search of
`4
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`Case IPR2023-00058
`U.S. Patent No. 9,959,291
`periods where the patent owner failed to substantiate activity, but is instead in light
`
`of the evidence as a whole to determine whether the invention was not abandoned
`
`or unreasonably delayed. Arctic Cat, 919 F.3d at 1331; ATI, 920 F.3d at 1373; see
`
`also Sunoco Partners Mktg. & Terminals L.P. v. Powder Springs Logistics, LLC,
`
`No. CV 17-1390-LPS-CJB, 2020 WL 9438750, at *11 (D. Del. Feb. 20, 2020)
`
`(denying motion for summary judgment despite alleged failure to account for
`
`months of activity).
`
`Patent Owner never suggested that either corroborating witness was a source
`
`code developer. Rather, the corroborating declarations are meant to show that Mr.
`
`Frigon exhibited diligence in reducing his invention to practice was substantially
`
`continuous over the relevant time period. These facts are supported by the
`
`declaration of Mr. Frigon himself, the timeline of the source code development, and
`
`the content of the provisional application. Petitioner wants “perfect proof,” but that
`
`is not what the law requires.
`
`Further, Petitioner argues that Patent Owner must provide evidence showing
`
`reasonably continuous diligence from just before the priority date of Sharpe until the
`
`filing date of the provisional application. Paper 14, at 5. This is incorrect. As
`
`supplied in the POPR, an inventor is not required to work on reducing his invention
`
`to practice every day during the critical period, and periods of inactivity within the
`
`critical period do not automatically vanquish a patent owner’s claim of reasonable
`
`
`
`5
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`
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`Case IPR2023-00058
`U.S. Patent No. 9,959,291
`diligence. Perfect Surgical Techniques, Inc. v. Olympus Am., Inc., 841 F.3d 1004,
`
`1009 (Fed. Cir. 2016). Diligence must be shown from just prior to the competing
`
`reference’s effective date until the date of the invention’s reduction to practice. Id.
`
`So, rather than showing diligence from just before the priority date of Sharpe up
`
`until the filing of the provisional application as Petitioner attempts to require, the
`
`law requires that Patent Owner show diligence from Sharpe’s effective date until the
`
`date of the invention’s reduction to practice (as embodied in the clear disclosure of
`
`the provisional application itself). The POPR does this, showing reasonably
`
`continuous diligence from before the priority date of Sharpe until the invention’s
`
`reduction to practice (when the provisional application was finalized in early
`
`August). It just so happens that both happened before Sharpe’s critical date.
`
`Regardless, even after the finalization of the provisional application, Mr.
`
`Frigon continued to diligently refine his invention, as corroborated by Ms. Larson’s
`
`declaration. Ex. 2015. Petitioner attempts to discredit this declaration and supporting
`
`evidence by pointing to the discussion of sacko.com. Paper 14, at 5-6. However, as
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`provided in Mr. Frigon’s declaration, “the functioning www.sacko.com website was
`
`developed between April and prior to September 26, 2000 and was selectively
`
`available to users over the internet for testing during that time period.” Ex. 2005 at
`
`4. Cmalone.com was an additional website attached to the code recovered which Mr.
`
`Frigon was using to develop his technology, as explained in his declaration. Id.at 5.
`
`
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`6
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`
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`Case IPR2023-00058
`U.S. Patent No. 9,959,291
`C.
`Patent Owner addressed Claims 2-26 in the POPR
`Patent Owner has shown that all elements of the Challenged Claims were
`
`present in the source code and provisional application, and Petitioner’s suggestion
`
`that Patent Owner has failed to show prior conception and reduction to practice of
`
`claims 2-26 is incorrect. Paper 14 at 7. As provided in the POPR, claim 24 is an
`
`apparatus corollary of the method recited in independent claim 1, and claim 25 is a
`
`non-transitory computer readable medium corollary of the same. Support for claims
`
`2-23, which depend from independent claim 1, are likewise supported by the POPR
`
`and corresponding evidence including the provisional application, the source code
`
`files, and the corroborating declarations.
`
`II. CONCLUSION
`Petitioner took a calculated risk and filed multiple IPR petitions that rely on a
`
`reference (Sharpe) whose priority is antedated by the inventor’s signature on the
`
`face of the provisional application to which the ’291 patent claims priority. That
`
`risk has not paid off, because Patent Owner has shown that Sharpe is not prior art.
`
`As noted in the POPR, Patent Owner has made a diligent effort to recover source
`
`code, which, coupled with the provisional application and the accompanying
`
`declarations, shows that Patent Owner conceived of and diligently worked to reduce
`
`the claimed invention to practice before Sharpe’s priority date. The Petition should
`
`be denied.
`
`
`
`7
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`
`
`Case IPR2023-00058
`U.S. Patent No. 9,959,291
`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 IPR2023-00058
`U.S. Patent No. 9,959,291
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the foregoing PATENT OWNER’S
`
`SUR-REPLY IN SUPPORT OF ITS PRELIMINARY RESPONSE was served
`
`electronically via e-mail on March 16, 2023, in its entirety on the following counsel
`
`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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