`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`
`AKAMAI TECHNOLOGIES, INC.,
`Petitioner
`
`v.
`
`EQUIL IP HOLDINGS LLC,
`Patent Owner
`____________________
`
`Case IPR2023-00332
`U.S. Patent No. 9,158,745
`___________________
`
`
`PATENT OWNER’S SUR-REPLY TO PETITIONER’S REPLY TO
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`Case IPR2023-00332
`U.S. Patent No. 9,158,745
`
`I.
`
`II.
`
`B.
`
`B.
`
`TABLE OF CONTENTS
`
`THE INVENTORSHIP CORRECTION CONFIRMS SAMANIEGO IS
`NOT PRIOR ART. ...................................................................................... 1
`A.
`The effect of correction under § 256 is not limited to the
`patent being corrected. ....................................................................... 1
`Correction of inventorship under § 256 has retroactive
`effect. ................................................................................................. 2
`Public notice concerns are not an issue here. ...................................... 3
`C.
`THE OFFICE ALREADY CONSIDERED THE RELEVANT
`TEACHINGS OF TSO AND HUANG. ....................................................... 5
`A.
`Tso’s relevant teachings were previously presented to the
`Office. ................................................................................................ 5
`Huang’s relevant teachings were also previously presented
`to the Office. ...................................................................................... 6
`Petitioner has not shown material error. ............................................. 7
`C.
`III. CONCLUSION ........................................................................................... 7
`
`
`
`
`
`
`
`
`
`- ii -
`
`
`
`Case IPR2023-00332
`U.S. Patent No. 9,158,745
`
`PATENT OWNER’S UPDATED EXHIBIT LIST
`
`Exhibit No.
`2001
`
`Description
`Declaration of Dr. Mark T. Jones in Support of Patent Owner’s
`Preliminary Response
`
`2002
`
`2003
`
`2004
`
`2005
`
`2006
`
`2007
`
`2008
`
`2009
`
`2010
`
`2011
`
`2012
`
`2013
`
`Curriculum Vitae of Dr. Mark T. Jones
`
`Petition Under 37 C.F.R. § 1.324(a) to Correct Inventorship in a
`Patent
`
`U.S. Patent No. 8,381,110 to Barger et al.
`
`U.S. Patent No. 8,656,046 to Barger et al.
`
`U.S. Patent No. 6,964,009 to Samaniego et al.
`
`WO 98/43177 (International Publication of PCT/US98/05304) to
`Tso et al.
`
`Redline comparison of specifications of PCT/US98/05304 (Tso
`PCT) and U.S. Patent No. 6,421,733 (Tso)
`
`U.S. Patent No. 5,902,846 to Feret et al.
`
`First Amended Complaint for Patent Infringement, 22-677-RGA,
`Equil IP Holdings LLC v. Akamai Technologies, Inc.
`
`U.S. Patent No. 6,483,851 to Neogi
`
`Decision Granting Petition to Correct Inventorship Under § 1.324
`for U.S. Patent No. 6,964,009
`
`Decision on Certificate of Correction for U.S. Patent No.
`6,964,009
`
`
`
`
`
`
`
`- iii -
`
`
`
`Case IPR2023-00332
`U.S. Patent No. 9,158,745
`Petitioner’s arguments in its Reply ignore the plain language of 35 U.S.C.
`
`§ 256 and Board precedent regarding § 325(d). The Board should deny institution.
`
`I.
`
`THE INVENTORSHIP CORRECTION CONFIRMS SAMANIEGO IS
`NOT PRIOR ART.
`Patent Owner filed a petition under 37 C.F.R. § 1.324(a) and 35 U.S.C.
`
`§ 256 to correct inventorship of the ’009 patent. POPR, 11-13. The Office granted
`
`this petition, EX2012, and approved the request to issue a Certificate of Correction
`
`(“COC”), which was forwarded to the Certificate of Corrections Branch, EX2013.
`
`Samaniego, thus, is not prior art to the challenged claims. POPR, 9-20.
`
`A. The effect of correction under § 256 is not limited to the patent
`being corrected.
`Petitioner is incorrect that § 256(b) “limits its effects to only inventorship
`
`errors in the patent being corrected.” Reply, 1. The statutory language highlighted
`
`by Petitioner does not include any limit on the effect of correction under § 256(a).
`
`See id., 2 (quoting § 256(b), with emphasis on “the patent in which such error
`
`occurred”). Rather, § 256(b) provides that an inventorship error “shall not
`
`invalidate” that patent if the error can be corrected, even in the ongoing case.
`
`35 U.S.C. § 256(b).1 Section 256(a) more broadly allows for correction of named
`
`
`1 Petitioner’s arguments directed to § 256(b) being a “savings provision” are
`
`inapposite. Reply, 2. Petitioner’s argument implies that the application of § 256(b)
`
`to avoid invalidity under § 102(f) limits correction under § 256(a) to only such
`
`- 1 -
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`
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`Case IPR2023-00332
`U.S. Patent No. 9,158,745
`inventors: “Whenever through error a person is named in an issued patent as the
`
`inventor, or through error an inventor is not named in an issued patent, the Director
`
`may … issue a certificate correcting such error.” Nothing in the statute indicates
`
`that the effect of such corrections are limited solely to the patent being corrected.
`
`B. Correction of inventorship under § 256 has retroactive effect.
`Petitioner argues, incorrectly, that the correction of inventorship cannot have
`
`retroactive effect. Reply, 2-3. Petitioner quotes language from §§ 254-255, arguing
`
`that COCs only have a prospective effect on “the trial of actions for causes
`
`thereafter arising.” Reply, 2-3 (quoting §§ 254-255). But Petitioner ignores that the
`
`relevant statute—§ 256, the statute under which Patent Owner requested a COC—
`
`does not include this language. Statutory interpretation “begins with the ‘language
`
`of the statute.’” Hughes Aircraft Co. v. Jacobson, 525 U.S. 432, 438 (1999).
`
`Petitioner cannot read a requirement into § 256 that is not there. This is particularly
`
`true where the requirement Petitioner attempts to include is expressly recited in a
`
`related section of the statute, yet not in the relevant statute. Res-Care, Inc. v.
`
`United States, 735 F.3d 1384, 1389 (Fed. Cir. 2013) (“A cardinal doctrine of
`
`statutory interpretation is the presumption that Congress’s use of different terms
`
`within related statutes generally implies that different meanings were intended.”).
`
`effect. Id. But the statute simply does not contain such limiting language. Nor does
`
`Pannu v. Iolab Corp., 155 F.3d 1344 (Fed. Cir. 1998), support this position.
`
`- 2 -
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`
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`Case IPR2023-00332
`U.S. Patent No. 9,158,745
`In fact, correction of inventorship under § 256 has been applied
`
`retroactively. See Emerson Elec. Co. v. SIPCO, LLC, IPR2016-00984, Paper 52,
`
`17-21 (P.T.A.B. Jan. 24, 2020) (on remand) (finding that a COC issued under
`
`§ 255 does not have retroactive effect; contrasting that “certificates issued under …
`
`section [256] have retroactive effect in general”); Roche Palo Alto LLC v. Ranbaxy
`
`Labs Ltd., 551 F. Supp. 2d 349, 357-359 (D.N.J. 2008) (comparing the prospective
`
`effect of corrections under § 254 with the retroactive effect of corrections under
`
`§ 256); Viskase Corp. v. Am. Nat’l Can Co., 261 F.3d 1316, 1329 (Fed. Cir. 2001)
`
`(“Absent fraud or deceptive intent, the correction of inventorship does not affect
`
`the validity or enforceability of the patent for the period before the correction.”);
`
`LendingTree, LLC v. Zillow, Inc., 656 Fed. Appx. 991, 998-99 (Fed. Cir. 2016)
`
`(remanding in view of post-judgment COC changing inventorship to permit patent
`
`owner to file a motion to vacate judgment of invalidity based on improper
`
`inventorship).
`
`Public notice concerns are not an issue here.
`C.
`Petitioner argues that public notice concerns mean that the correction should
`
`not have retroactive effect. Reply, 3-4. But here, there is no concern that the public
`
`was not aware of the priority claim. The ’745 patent claims priority to the ’009
`
`patent on its face. EX1001, (60); see also EX1002, 84 (ADS with priority claim).2
`
`2 Petitioner contends “correction of inventorship through reissue … would have
`
`- 3 -
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`
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`Case IPR2023-00332
`U.S. Patent No. 9,158,745
`The requirements of § 120 are met for the ’745 patent’s claim of priority to
`
`the ’009 patent. See POPR, 9-20. The inventorship correction is simply an
`
`administrative correction to list the proper inventors on the ’009 patent. See
`
`Egenera, Inc. v. Cisco Systems, Inc., 972 F.3d 1367, 1379 (Fed. Cir. 2020)
`
`(inventorship corrections under § 256 are “a matter of formality”); Winbond Elecs.
`
`Corp. v. Int’l Trade Comm’n, 262 F.3d 1363, 1371 (Fed. Cir. 2001) (“‘Incorrect
`
`inventorship is a technical defect in a patent that may be easily curable.’ … Rule
`
`324 permits such an easy cure.” (quoting Canon Comput. Sys., Inc. v. Nu–Kote
`
`Int’l, Inc., 134 F.3d 1085, 1089 (Fed. Cir. 1998))) (opinion corrected, 275 F.3d
`
`1344 (Fed. Cir. 2001)).
`
`Petitioner’s discussion of Southwest Software, Inc. v. Harlequin Inc., 226
`
`F.3d 1280 (Fed. Cir. 2000) is not relevant. Reply, 3-4. Southwest Software dealt
`
`with a correction under § 254, and the decision focuses on the “for causes
`
`thereafter arising” statutory language. 226 F.3d at 1292-1297. As discussed above,
`
`§ 256 does not include similar language. Further, the correction in Southwest
`
`Software changed the substance of the patent (adding a 330 page “Program
`
`provided public notice through a republished revised inventive entity.” Reply, 4
`
`n.4. Yet, cited MPEP 1402(II) states: “If the only change being made in the patent
`
`is correction of the inventorship, this can be accomplished by filing a request for a
`
`certificate of correction under the provisions of 35 U.S.C. 256 and 37 CFR 1.324.”
`
`- 4 -
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`
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`Case IPR2023-00332
`U.S. Patent No. 9,158,745
`Printout Appendix” to the specification), id. at 1296, not inventorship.
`
`Correction of inventorship here is more analogous to when a patent owner of
`
`a pre-AIA patent antedates or swears behind an asserted reference. See Perfect
`
`Surgical Techniques, Inc. v. Olympus Am., Inc., 841 F.3d 1004, 1007 (Fed. Cir.
`
`2016) (“Pre–AIA section 102(g) allows a patent owner to antedate a reference by
`
`proving earlier conception and reasonable diligence in reducing to practice.”). In
`
`such a case, the public is likely to have no notice at all that the reference is not
`
`prior art, yet here the priority claim is listed on the face of the patent.
`
`Each of Petitioner’s arguments against determining that Samaniego is not
`
`prior art fails. Accordingly, four of Petitioner’s six grounds also fail.
`
`II. THE OFFICE ALREADY CONSIDERED THE RELEVANT
`TEACHINGS OF TSO AND HUANG.
`A. Tso’s relevant teachings were previously presented to the Office.
`There is no dispute that Tso PCT was cited in an IDS during prosecution of
`
`the ’745 patent. Reply, 6; POPR, 27 (citing EX1002, 71-80); see also EX1027,
`
`533-578 (copy of Tso PCT provided to Office in parent application 12/238,842).
`
`Thus, under the Board’s Advanced Bionics precedent, Tso PCT was
`
`unquestionably “presented to the Office” and satisfies Part 1 of the Advanced
`
`Bionics framework. Advanced Bionics v. Med-El Elektromedizinische Geräte
`
`GmbH, IPR2019-01469, Paper 6, 7-8 (P.T.A.B. Feb. 13, 2020) (precedential).
`
`Petitioner’s claim that “it was ‘not reasonably foreseeable for Petitioner to
`
`- 5 -
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`
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`Case IPR2023-00332
`U.S. Patent No. 9,158,745
`have anticipated this connection since the references themselves do not point to
`
`each other,’” Reply, 7 (citing Google LLC v. Valtrus Innovs. Ltd., IPR2022-01197,
`
`Paper 12, 5 (P.T.A.B. Mar. 29, 2023)), is unconvincing and shows a lack of
`
`diligence. Both Tso and Tso PCT claim priority to the same US provisional
`
`application and it was reasonably foreseeable to anticipate the connection between
`
`these references. See POPR, 27 n.9. In any event, Valtrus did not require the Board
`
`to institute on remand; it simply authorized Petitioner to file a reply on remand,
`
`and instructed the Board to re-evaluate the § 325(d) issue. See Valtrus, Paper 12, 6-
`
`7. Here, Petitioner has been given an opportunity to file a reply addressing Tso
`
`PCT and admits that Tso and Tso PCT have the same disclosure. Reply, 6.
`
`B. Huang’s relevant teachings were also previously presented to the
`Office.
`Relevant teachings of Huang were likewise previously presented to the
`
`Office. POPR, 28-29. On reply, Petitioner points out Huang’s teaching of “using
`
`‘RHI’ information to track ‘partially rendered’ and cached content,” Reply, 5, and
`
`argues that “Neogi does not discuss caching, storing, or reusing … transcoded
`
`content,” id., 6. Huang’s “RHI” or “receiver hint information” is described as
`
`“specific device capabilities” associated with the requesting client device. EX1005,
`
`5:44-55, 7:46-48. The object rendering in Huang is “based on the associated RHI”
`
`and “can be partitioned into two or more steps,” with the object being passed from
`
`proxy server to proxy server. Id., 6:9-23. Similarly, in Neogi, transcoding the data
`
`- 6 -
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`
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`Case IPR2023-00332
`U.S. Patent No. 9,158,745
`flow is done by intermediate filtering stages 22 that are determined based on
`
`“control parameters contained in the coded instructions sent to it by a user.”
`
`EX2011, 1:53-60, 2:52-3:4, FIG. 3. Like Huang, which can store a copy of a
`
`“partially rendered” object in the cache for use by a subsequent proxy server for
`
`“further rendering,” EX1005, 7:43-45, 7:53-57, 8:4-11, Neogi also stores the data
`
`flow in buffer pools between the transcoding functions performed at multiple
`
`intermediate stages 22, EX2011, 2:52-56, 2:65-3:4, 3:18-30.
`
`Petitioner has not shown material error.
`C.
`Petitioner’s allegation of error under Advanced Bionics Part 2 is premised on
`
`the Examiner not issuing any rejections before allowance. Reply, 7. This is not
`
`required to deny the Petition under § 325(d). POPR, 28. Petitioner alleges nothing
`
`more than disagreement with the Examiner’s allowance of the claims in view of
`
`the combination of Tso and Huang. Reply, 4-5, 7. Petitioner does not argue—as
`
`required under Advanced Bionics Part 2—that the Office “misapprehend[ed] or
`
`overlook[ed]” any specific teachings of Tso PCT or Neogi, which were considered,
`
`or “misconstru[ed]” any claim terms. Advanced Bionics, Paper 6, 8-9 n.9.
`
`III. CONCLUSION
`Samaniego is not prior art and the relevant teachings of Tso and Huang were
`
`previously considered by the Office. For these reasons and all other reasons in the
`
`POPR, the Board should deny institution.
`
`- 7 -
`
`
`
`Case IPR2023-00332
`U.S. Patent No. 9,158,745
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Jason A. Fitzsimmons/
`
`Jason A. Fitzsimmons
`Registration No. 65,367
`Counsel for Patent Owner
`
`Date: June 8, 2023
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`- 8 -
`
`
`
`Case IPR2023-00332
`U.S. Patent No. 9,158,745
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`I certify that the above-captioned PATENT OWNER’S SUR-REPLY TO
`
`PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY
`
`RESPONSE and EXHIBIT 2013 were served in their entireties on June 8, 2023
`
`upon the following parties via electronic mail:
`
`Scott McKeown (Lead Counsel) scott.mckeown@ropesgray.com
`James L. Davis (Back-Up Counsel) james.l.davis@ropesgray.com
`Daniel W. Richards (Back-Up Counsel) daniel.richards@ropesgray.com
`akamai-equil-ropes-ipr-service@ropesgray.com
`ROPES & GRAY LLP
`
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Jason A. Fitzsimmons/
`
`Jason A. Fitzsimmons
`Registration No. 65,367
`Counsel for Patent Owner
`
`Date: June 8, 2023
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
`20382930.3.docx
`
`
`
`
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