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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNIFIED PATENTS, INC.,
`Petitioner,
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`v.
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`CONVERGENT MEDIA SOLUTIONS, LLC,
`Patent Owner
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`
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`CASE NO. IPR2016-00047
`PATENT 8,640,183
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`PATENT OWNER’S PRELIMINARY RESPONSE
`TO PETITION FOR INTER PARTES REVIEW
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`TABLE OF CONTENTS
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`I.
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`
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`INTRODUCTION…………………………………………………………. 1
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`A.
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`Identification of Grounds Asserted in the Petition ……………….. 2
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`Chen Does Not Have Priority Over The Priority Date of The
`‘183 Patent And Is Not Prior Art Under 35 U.S.C. §102(e)…….………… 3
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`II.
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`III. GROUND 1: Chen and Elabbady Fail to Disclose All the Elements
`of the Independent Claims in the ‘183 Patent…..…………………………. 6
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`Chen and Elabbady Fail To Disclose A “Second User
`Interface” As Required In Section 1.B of Claim 1
`of the ‘183 Patent..………………………………………………… 7
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`Chen and Elabbady Fail to Disclose A “User Interface”
`As Required In Claim 58 of the ‘183 Patent………………………. 12
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`Chen and Elabbady Fail to Disclose A “Second User Interface”
`As Required In Claim 59 of the ‘183 Patent ……………………… 13
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`1.
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`2.
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`3.
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`4.
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`Chen and Elabbady Fail to Disclose A “Wireless
`Communication Session” And A “User Interface” As
`Required In Claim 60 of the ‘183 Patent…………………………. 13
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`IV. GROUND 2: Meade and Elabbady Fail to Disclose All the Elements
`of the Independent Claims in the ‘183 Patent…..……………………….. 15
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`1.
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`Grounds 1 And 2 Are Horizontally Redundant And At Least
`One Of The Grounds Should Not Be Maintained by the Board…… 16
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`2. Meade and Elabbady Fail to Disclose A “Second User
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`Interface” As Required In Section 1.B of Claim 1
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`of the ‘183 Patent ………….……………………………………… 18
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`Chen and Elabbady Fail to Disclose A “User Interface”
`As Required In Claim 58 of the ‘183 Patent………………………. 21
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`3.
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`4.
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`Chen and Elabbady Fail to Disclose A “Second User Interface”
`As Required In Claim 59 of the ‘183 Patent ……………………… 22
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`5. Meade and Elabbady Fail to Disclose A “User Interface” As
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`Required In Claim 60 of the ‘183 Patent…………………………. 23
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`V.
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`VI. CONCLUSION…………………………………………………………. 25
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`The Declaration of Jon Weissman is Deficient And Should Not
`Relied Upon or Used for Grounds 1 and 2……………………………… 24
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`TABLE OF AUTHORITIES
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`Cases
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`Cisco Systems, Inc. v. Constellation Techs, LLC, IPR2014-00914, Paper 11
`(P.T.A.B. Jan. 2, 2015)………………………………………………..
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`3, 5
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`CFMT, Inc. v. YieldUp Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)……… 1
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`Garmin Int’l Inc. v. Patent of Cuozzo Speed Techs, LLC,
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`Case No. IPR 2012-0001, Paper 15 at 15 (P.T.A.B. Jan. 9, 2013)……….. 1
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`In re Royka, 409 F.2d 981, 985 (C.C.P.A. 1974)………………………………… 1
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`In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993)……………………………… 1
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`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co.,
`CBM2012-00003, Paper 7 at 2 (Oct. 25, 2012)………………………. 16, 17
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`Statutes
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`35 U.S.C. § 103………………………………………………………………….. 2
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`35 U.S.C. § 313…………………………………………………………………... 1
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`35 U.S.C. § 314(a)……………………………………………………………….. 1
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`35 U.S.C. §316(b)……………………………………………………………….. 17
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`Rules
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`37 C.F.R. § 42.107……………………………………………………………..… 1
`
`Manual of Patent Examining Procedure (November 2015)
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`M.P.E.P. § 211.05……………………………………………………………….
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`3
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`M.P.E.P. § 2136.03(III)…………………………………………………………. 3
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`INTRODUCTION
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`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107, the Patent Owner hereby
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`I.
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`
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`provides a Preliminary Response to the Petition for Inter Partes Review filed on
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`October 14, 2015 (herein “the Petition”). A Notice issued by the Board dated
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`October 30, 2015 (Paper 3) set January 14, 2016 as the deadline for this Preliminary
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`Response. This Preliminary Response is timely filed, and no fee is due with this
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`Preliminary Response.
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`
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`The Petition asserts two (2) grounds by which the Petitioner alleges that
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`various claims of U.S. Patent 8,640,183 (the ‘183 Patent) are unpatentable. None of
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`the grounds meet the requirement of describing that there is a reasonable likelihood at
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`least one of the claims in the ‘183 Patent is unpatentable as required by 35 U.S.C. §
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`314(a). As such, the Patent Owner respectfully requests that the Board deny the
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`Petition and not institute trial.
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`If a single element of a claim is absent from the prior art, the claim cannot be
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`considered obvious. See CFMT, Inc. v. YieldUp Int’l Corp., 349 F.3d 1333, 1342
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`(Fed. Cir. 2003) (“Obviousness requires a suggestion of all limitations in a claim”,
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`citing In re Royka, 409 F.2d 981, 985 (C.C.P.A. 1974); In re Rijckaert, 9 F.3d 1531,
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`1534 (Fed Cir. 1993) (reversing obviousness rejection where prior art did not teach or
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`suggest all claim limitations); Garmin Int’l Inc. v. Patent of Cuozzo Speed Techs,
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`LLC, Case No. IPR 2012-0001, Paper 15 at 15 (P.T.A.B. Jan. 9, 2013) (refusing to
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`institute an inter partes review under 35 U.S.C. §103 where prior art did not disclose
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`all claim limitations).
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`A.
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`Identification of Grounds Asserted in the Petition
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`The following are the grounds asserted by the Petitioner in the Petition:
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`GROUND 1: Claims 1-5, 16, 18, 24-26, 32-38, 40-42, 49, 51-53, 55 and 58-
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`61 are obvious under 35 U.S.C. § 103(a) over Chen (Ex. 1003) in view of Elabbady
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`(Ex. 1004). The discussion about Ground 1 starts at page 9 of the Petition.
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`GROUND 2: Claims 1, 16, 18, 24, 32, 33, 37, 38, 41, 55 and 58-60 are
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`obvious under 35 U.S.C. § 103(a) over Meade (Ex. 1005) in view of Elabbady (Ex.
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`1004). The discussion about Ground 2 starts at page 37 of the Petition.
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`In the Petition, the independent claims 1, 58, 59 and 60 of the ‘183 Patent were
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`subdivided into different parts, where the nomenclature used was “[A.X]”, where “A”
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`represents the claim number in the ‘183 Patent, and “X” represents a particular
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`subdivision of the claim. This Preliminary Response will refer to those particular
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`portions of the claim that are used in the Petition, for the ease of the Board to readily
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`see the distinguishing differences between what is being cited by the Petitioner and
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`what is required by the claims. Reference will be made in the Preliminary Response
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`to usage of “A.X” without the enclosing brackets.
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`The claims in the ‘183 Patent use the terms “first computerized device set” and
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`“second computerized device set”. These terms will use the acronyms “1stCDS” for
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`the first computerized device set, and “2ndCDS” for the second computerized device
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`set.
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`II. Chen Does Not Have Priority Over The Priority Date of The ‘183 Patent
`And Is Not Prior Art Under 35 U.S.C. § 102(e)
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`Under 35 U.S.C. § 102(e), the critical reference date of a U.S. patent is entitled
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`to the benefit of the filing date of a provisional application ONLY IF the provisional
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`application properly supports the subject matter relied upon to make the rejection in
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`compliance with 35 U.S.C. § 112(a), first paragraph. See M.P.E.P. §§ 211.05;
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`2136.03(III): see also, Cisco Systems, Inc. v. Constellation Techs, LLC, IPR2014-
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`00914, Paper 11 (P.T.A.B. Jan. 2, 2015).
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`The ‘183 Patent has a priority date to May 10, 2002 due to provisional patent
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`application 60/379,735, where the provisional patent application is 283 pages in
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`length.
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`Chen (Ex. 1003 – U.S. Patent 8,479,238) has a priority date either to May 14,
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`2001 due to the filing date of a provisional patent application 60/290,788
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`(“provisional Chen ‘788”), or to May 14, 2002 due to the date of when the non-
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`provisional patent application 10/146,300 (“non-provisional Chen ‘300”) was filed.
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`The filing date of the provisional Chen ‘788 is before the priority date of the ‘183
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`Patent, but the filing date of the non-provisional Chen ‘300 is after the priority date of
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`the ‘183 Patent. In order for Chen (Ex. 1003) to have a critical date before the ‘183
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`Patent, all the subject matter relied on in the Petition must be found in the provisional
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`Chen ‘788.
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`Provisional Chen ‘788 does not disclose all the subject matter that is disclosed
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`in Chen (Ex. 1003), because the provisional Chen ‘788 is a meager 8 pages in total
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`length, where the actual specification is a mere 4 ½ pages in length. The length of the
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`provisional Chen ‘788 as compared to Chen (Ex. 1003) is significantly smaller. The
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`provisional Chen ‘788 is being provided as Exhibit 2001 by the Patent Owner. The
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`main specification of the provisional Chen ‘788 starts at page 4 and runs through
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`page 8. The Board only needs to make a cursory review of the provisional Chen ‘788
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`to see that it clearly does not disclose a significant portion of what is disclosed in the
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`non-provisional Chen ‘300, and therefore everything described in Chen (Ex. 1003) is
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`not disclosed in the provisional Chen ‘788.
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`Because the Petitioner relied on citations to Chen (Ex. 1003) rather than the
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`provisional Chen ‘788, Ground 1 is clearly deficient in that the Petition is relying on
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`material that is not found in the provisional Chen ‘788. In order for Petitioner to rely
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`on the critical date of the provisional Chen ‘788, Petitioner should have identified the
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`subject matter in the provisional Chen ‘788 to support its allegations as presented in
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`the Petition. (See, Cisco Systems, Inc. v. Constellation Techs, LLC, IPR2014-00914,
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`Paper 11 (P.T.A.B. Jan. 2, 2015)). Only by citing to the provisional Chen ‘788,
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`would the Patent Owner be able to properly make an assessment about the validity of
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`Petitioner’s arguments, and to see whether in fact the provisional Chen ‘788 discloses
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`subject matter that supports Petitioner’s allegations. Petitioner is responsible for and
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`bears the burden of showing where such support exists in the provisional Chen ‘788,
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`since Petitioner is the party making the allegations in the first place. Id. Without the
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`Petitioner specifically identifying the subject matter in the provisional Chen ‘788 that
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`it was relying on for the claim charts presented in the Petition, the Petition is
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`therefore undeniably flawed and defective. Therefore, the critical date of Chen (Ex.
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`1003) for § 102(e) purposes is the filing date of the non-provisional Chen ‘300 and
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`not the filing date of the provisional Chen ‘788. This critical date puts Chen (Ex.
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`1003) after the priority date of the ‘183 Patent. Thus, Chen is not considered prior art
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`under 35 U.S.C. § 102(e), and Ground 1 should be denied in its entirety. It is
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`respectfully submitted that the Board should deny the Petition as to Ground 1 because
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`Chen (Ex. 1003) is not prior art under 35 U.S.C. § 102(e) and to not institute trial for
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`any reason under Ground 1.
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`Although the Patent Owner is providing a response (below) to Petitioner’s
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`rejections under Ground 1 as presented in the Petition, Patent Owner is only
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`responding to those specific citations to Chen (Ex. 1003) provided in the Petition.
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`Such a response should not be viewed as a waiver of Patent Owner’s rights to further
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`argue against the validity of a rejection due to lack of proper support in the
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`provisional Chen ‘788. If trial is instituted for any of Ground 1, Patent Owner is
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`reserving its right to further argue that such rejection may be improper due to the lack
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`of supporting subject matter in the provisional Chen ‘788 or to file an appropriate
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`objection and/or motion asserting such contention.
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`III. GROUND 1: Chen and Elabbady Fail To Disclose All the Elements
`of the Independent Claims in the ‘183 Patent
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`There are four independent claims in the ‘183 Patent, those claims being claims
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`1, 58, 59 and 60. Each of these independent claims will be individually examined in
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`this Preliminary Response. The discussion will follow the general format of
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`describing what is required by a claim, what was cited in the Petition by Petitioner,
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`and lastly, an analysis of the differences between what the references disclose and
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`what the claim requires. It is hoped that this format will help the Board readily
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`understand that none of the references teach either individually or in combination
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`certain required elements of the independent claims 1, 58, 59 and 60 of the ‘183
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`Patent.
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`1.
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`Chen and Elabbady Fail To Disclose A “Second User Interface” As
`Required In Section 1.B of Claim 1 of the ‘183 Patent
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`It is respectfully asserted that the “second user interface” as required in section
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`1.B of claim 1 of the ‘183 Patent is not described in Chen (Ex. 1003) and Elabbady
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`(Ex. 1004) either individually or in combination. The claim chart for section 1.B of
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`claim 1 starts at page 19 of the Petition. Section 1.B of claim 1 of the ‘183 Patent
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`requires “making available to the user a second user interface that allows the user to
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`select to have the continuous media content presented on either one of the first
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`computerized device set and the second computerized device set” (emphasis added).
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`The “second user interface” must allow the user to select continuous media content to
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`be presented on the 1stCDS or the 2ndCDS. Chen and Elabbady are both deficient in
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`disclosing a “second user interface” that allows a user to select the continuous media
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`content for presentation on the 2ndCDS.
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`The Petition relied on citations from Chen (Ex. 1003) and Elabbady (Ex. 1004)
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`to allegedly describe this section 1.B of claim 1. Specifically, the Petition relies on
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`what is shown in Fig. 4 of Chen to be the “second user interface” and cites to 4:47-
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`53; 5:13-14 and 7:5-7. However, what is cited in the Petition from Chen does not
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`describe a “second user interface,” because the control device screen (as shown in
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`Fig. 4 of Chen) only allows selection of video devices 218, but does not allow the
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`selection of the control device 212.
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`As described in Fig. 3 of Chen (reproduced above), Chen is a system where a
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`control device 212 is able to control the display of video content on one or more
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`video devices 218. (Chen, 6:12-36). Chen uses a centralized control device 212 to
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`control a plurality of video devices 218. (Chen, Abstract; 1:64-2:15). The control
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`device 212 communicates via a network access point 214 over a network 216 to a
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`video server 220. (Chen, Fig. 3; 4:44-47). The video device 218 displays the video
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`content received from the video server 220 via network 216. (Chen, 5:4-5; 5:14-15).
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`Figures 4-10 of Chen are display screen views for the control device 212.
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`(Chen, 6:38-40). Fig. 4 as shown in Chen is almost unreadable as it appears in the
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`patent (Ex. 1003), so in the effort to make it easier for the Board to read what is
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`shown on Fig. 4, it has been reproduced below with annotations of what words are
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`displayed on the screen display:
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`At the upper portion of the screen, it states that “this page is used to specify a
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`video device for viewing multimedia” (emphasis added). The video device that is
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`being referred to in Fig. 4 is one of the video devices 218, which does not include the
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`control device 212. (See e.g., Fig. 3; Chen, 4:4-13; Petition, p. 12, last ¶). That the
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`control screen shown in Fig. 4 only pertains to video devices 218 is further confirmed
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`by examining what is stated in Chen starting at column 7, line 4 (emphasis added):
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`Fig. 4 illustrates an exemplary control device screen for specifying the
`video device that is to be controlled. The control device provides an
`input field 410 for the consumer to specify the video device that is to
`be controlled. In this example, the user has entered the video device
`name “NTV1”. Also provided is a connection button 412, which
`upon selection, instructs the control device that the video device
`indicated in the input field is to be provided video data.
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`The control screen shown in Fig. 4 is only for entering the name of a video
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`device 218. The control display screen described in Fig. 4, allows a user to enter a
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`specific name of a video device (such as “NTV1”) in input field 410, and push a
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`“connect” button 412 to enable control of the specified video device 218. The input
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`field 410 of Fig. 4 is limited to a name of a specific video device 218, which does not
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`include the control device 212. Nowhere in Fig. 4 of Chen, nor in the citations to
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`Chen provided in the Petition, nor in the specification of Chen itself does it state that
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`a user can enter the name of the control device 212 into the input field 410 of the
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`display screen of Fig. 4. Only names of video devices 218 can be entered into input
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`field 410, not the name of the control device 212. Id.
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`In Fig. 4 of Chen, when a user clicks the “connect” button 412, it would be
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`nonsensical that the control device 212 would “connect” to itself. There is no need
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`for the control device 212 to connect to itself, only other video devices 218. Chen
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`clearly does not disclose “connecting” the control device 212 to itself. Fig. 4 of Chen
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`therefore cannot be used to describe the “second user interface” as required by claim
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`1. Also remember that Fig. 4 is a control screen for the control device 212 and not a
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`control screen for a video device 218. (Chen, 6:38-40). This means that there is no
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`disclosure in Chen where the control screen display of Fig. 4 can be used by a video
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`device 218 to select the control device 212 for displaying video content.
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`In relation to Chen, the Petition allegedly equated the control device 212 to be
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`the 2ndCDS, and allegedly equated the video device 218 to be the 1stCDS. (Petition,
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`p. 18, 1.P, 1st ¶). Chen describes that a user using the control screen display as
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`shown in Fig. 4 can select one of a plurality of video devices 218 (the alleged
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`1stCDS). (Chen, 1:4-11). Chen is deficient in describing that the control screen of
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`Fig. 4 (the alleged “second user interface”) could be used to select the control device
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`212 (the alleged 2ndCDS). Therefore, Chen is deficient because Chen fails to describe
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`the “second user interface” limitation as required in section 1.B of the ‘183 Patent.
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`Petitioner equated the “first device 202” of Elabbady to be the 2ndCDS.
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`(Petition, p. 19, § 1.B, 3rd ¶). Petitioner relies on what is stated at 8:57-62, that the
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`device 202 (the alleged 2ndCDS) may also provide media content playing. (Petition,
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`p. 20, § 1.B, end of ¶). Petitioner is primarily relying on Elabbady to describe that the
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`control device 212 of Chen could be a PDA and that such a PDA was also capable of
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`playing video content. Id. Regardless of whether the control device 212 (Chen) is a
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`PDA as described by Chen, and such PDA is capable of playing media content as
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`allegedly taught by Elabbady, what is still missing from both references is the
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`“second user interface” required by claim 1. Nowhere does Petitioner demonstrate
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`that Elabbady describes the “second user interface” required in claim 1. The
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`Petitioner does not demonstrate that Elabbady discloses where or how a user is able
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`to use a “second user interface” (as required in claim 1) to select the first device 202
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`(the alleged 2ndCDS) to cause it to play the video content (or alternatively, to select
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`one of the video devices 218, the alleged 1stCDS, to cause it to play the video
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`content). Therefore, the “second user interface” as required in section 1.B of claim 1
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`is lacking in Elabbady as it was in Chen. The obviousness rejection of claim 1
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`proposed in the Petition collapses due to the failure of both Chen and Elabbady to
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`disclose the “second user interface” as required in section 1.B of claim 1 of the ‘183
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`Patent. For these reasons, independent claim 1 of the ‘183 Patent and all claims
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`dependent on claim 1 are valid over Chen and Elabbady. It is respectfully submitted
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`that the Board should deny the Petition and not institute trial as to claims 1-5, 16, 18,
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`24-26, 32-38, 40-42, 49, 51-53 and 55 of the ‘183 Patent under 35 U.S.C. § 103 based
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`on Chen (Ex. 1003) and Elabbady (Ex. 1004).
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`2.
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`Chen and Elabbady Fail to Disclose A “User Interface”As Required
`In Claim 58 of the ‘183 Patent
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`The claim chart for claim 58 begins on page 31 of the Petition. In the Petition,
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`the Petitioner relies on those citations contained in certain portions of claim 1 to teach
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`certain portions of claim 58. Claim 58 of the ‘183 Patent is similar to claim 1 of the
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`‘183 Patent, except that in claim 58, a “user interface” was used instead of “second
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`user interface” as was used in claim 1. Chen (Ex. 1003) is not prior art for the
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`reasons discussed above. Additionally, claim 58 is also allowable over Chen (Ex.
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`1003) and Elabbady (Ex. 1004) for the same reasons discussed above in relation to
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`claim 1. Thus, independent claim 58 of the ‘183 Patent is valid over Chen and
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`Elabbady. It is respectfully submitted that the Board should deny the Petition and not
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`institute trial as to claim 58 of the ‘183 Patent under 35 U.S.C. § 103 based on Chen
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`(Ex. 1003) and Elabbady (Ex. 1004).
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`3.
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`Chen and Elabbady Fail to Disclose A “Second User Interface” As
`Required In Claim 59 of the ‘183 Patent
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`The claim chart for claim 59 begins at page 32 of the Petition. In the Petition,
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`the Petitioner relies on those citations contained in certain portions of claim 1 to teach
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`certain portions of claim 59. Claim 59 of the ‘183 Patent contains similar claim
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`language to what was used in claim 1 of the ‘183 Patent, including the usage of a
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`“second user interface”. Chen (Ex. 1003) is not prior art for the reasons discussed
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`above. Additionally, claim 59 is allowable over Chen (Ex. 1003) and Elabbady (Ex.
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`1004) for the same reasons discussed above in relation to claim 1. Thus, independent
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`claim 59 of the ‘183 Patent is valid over Chen and Elabbady. It is respectfully
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`submitted that the Board should deny the Petition and not institute trial as to claim 59
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`of the ‘183 Patent under 35 U.S.C. § 103 based on Chen (Ex. 1003) and Elabbady
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`(Ex. 1004).
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`4.
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`Chen and Elabbady Fail to Disclose A “Wireless Communication
`Session” and A “User Interface” As Required In Claim 60 of the
`‘183 Patent
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`The claim chart for claim 60 begins at page 33 of the Petition. It is respectfully
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`asserted that a “wireless communication session” and a “user interface” as required
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`by claim 60 of the ‘183 Patent is not taught or suggested by Chen (Ex. 1003) and
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`Elabbady (Ex. 1004) either individually or in combination.
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`The claim chart for section 60.B of claim 60 appears on page 34 of the Petition.
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`Section 60.B of claim 60 of the ‘183 Patent requires “establishing a wireless
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`communication session with the second computerized device set”. This step needs
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`to be read in conjunction with the preamble of claim 60, where it states a “method for
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`use in a first computerized device set…” (emphasis added). When read in
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`conjunction with the preamble, the limitation in section 60.B requires establishing a
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`wireless communication session between the 1stCDS and the 2ndCDS.
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`For section 60.B of claim 60 of the ‘183 Patent, the Petition solely relies on
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`Chen (Ex. 1003) and not Elabbady (Ex. 1004). Specifically, the Petition relies on
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`citations to Chen at 4:46-53 and 4:55-58. These citations to Chen only describe that
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`there is a wireless connection between the control device 212 (the alleged 2ndCDS)
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`and video server 220 via network access point 218. Nowhere in these citations does
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`it describe establishing a “wireless communication session” between the video
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`device 218 (the alleged 1stCDS) and the control device 212 (the alleged 2ndCDS) as
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`required in section 60.B of claim 60. In Chen, “…after the user has selected
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`multimedia data in order to view the corresponding video data for at least one video
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`program, the control device 212 communicates with video server 220 over the
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`network 216 to instruct the video server to retrieve and provide the desired video data
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`to the video device 218.” (Chen, 5:58-67).
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`Therefore, Chen is deficient at describing a “wireless communication session”
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`between the 1stCDS and the 2ndCDS as required by section 60.B of claim 60 of the
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`‘183 Patent. Because Chen does not describe this “wireless communication session”,
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`Chen additionally does not describe the further claim limitations associated with the
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`“wireless communication session” as required by other parts of claim 60 of the ‘183
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`Patent.
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`Section 60.E of claim 60 of the ‘183 Patent requires, among other things that
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`the “…user interface presents user input controls for selection … of either one of the
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`first computerized device set and the second computerized device set for presentation
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`of the continuous media content” (emphasis added). The Petition solely relies on
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`what was described in section 1.F of claim 1 for section 60.E. (Petition, p. 53). As
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`explained above in relation to claim 1, there is no “user interface” described in Chen
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`that allows for the selection for presentation on the control device 212 (the alleged
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`2ndCDS). Chen is deficient for not disclosing the required claim limitation required
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`in claim 1 of the ‘183 Patent as discussed above.
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`Thus claim 60 of the ‘183 Patent is allowable over Chen and Elabbady because
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`both references fail to describe the “wireless communication session” and the “user
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`interface” as required in claim 60. It is respectfully submitted that the Board should
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`deny the Petition and not institute trial as to claim 60 of the ‘183 Patent under 35
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`U.S.C. § 103 based on Chen (Ex. 1003) and Elabbady (Ex. 1004).
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`IV. GROUND 2: Meade and Elabbady Fail to Disclose All the Elements
`of the Independent Claims in the ‘183 Patent
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`Ground 2 can be found in the Petition starting on page 37. In Ground 2, the
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`rejection of claims 1, 16, 18, 24, 32, 33, 37, 38, 41, 55 and 58-60 are alleged to be
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`obvious over Meade (Ex. 1005) in view of Elabbady (Ex. 1004). Not only are
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`grounds 1 and 2 horizontally redundant, as will be explained below, Meade like Chen
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`does not describe certain claim elements as required by independent claims 1 and 58-
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`60. For those reasons explained below, it is respectfully submitted that the Board
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`should deny the Petition and not institute trial as to claims 1, 16, 18, 24, 32, 33, 37,
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`38, 41, 55 and 58-60 under 35 U.S.C. § 103 based on Meade (Ex. 1005) and
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`Elabbady (Ex. 1004).
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`Reference to Meade’s paragraph numbers will be made without the brackets or
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`leading zeros.
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`1.
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`Grounds 1 and 2 Are Horizontally Redundant And At Least One Of
`The Grounds Should Not Be Maintained by the Board
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`The Petitioner presents horizontally redundant challenges in Grounds 1 and 2
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`as to independent claims 1, 58, 59 and 60 of the ‘183 Patent. The Board has
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`explained that the redundancy doctrine protects the Board and Patent Owners:
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`The underlying principle is this: If either the base ground or the
`ground with additional reference is better from all perspectives,
`Petitioner should assert the stronger ground and not burden the Patent
`Owner and the Board with the other. If there is no difference,
`Petitioner should assert just one ground. Only if the Petitioner
`reasonably articulates why each ground has strength and weakness
`relative to the other should both grounds be asserted for consideration.
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`Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., CBM2012-00003, Paper 7,
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`at 2 (Oct. 25, 2012). Although this quote was presented in terms of vertical
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`redundancy, the “underlying principle” applies with equal force to all types of
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`redundancy, including horizontal redundancy. Petitioner’s attempt to present
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`redundant challenges in Grounds 1 and 2, besides being burdensome to the Board and
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`the Patent Owner, would be contrary to “the integrity of the patent system, the
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`efficient administration of the Office, and the ability of the Office to timely complete
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`[review] proceedings.” 35 U.S.C. § 316(b); see also Liberty Mut. at 2.
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`Grounds 1 and 2 are directed at the same independent claims 1, 58, 59 and 60,
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`and sets of almost the same dependent claims. Petitioner has not met its burden to
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`demonstrate why these Grounds 1 and 2 are not “horizontally redundant” because
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`nowhere in the Petition is there any articulation or explanation of the relative
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`strengths and weaknesses, in any respect, for the separate combinations of Chen (Ex.
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`1003) and Elabbady (Ex. 1004) versus Meade (Ex. 1005) and Elabbady (Ex. 1004).
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`The fact that two primary references may have differences is not sufficient “for it is
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`rarely the case that disclosures of different prior art references will be literally
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`identical. Instead . . . the focus is on whether the Petitioner articulated a meaningful
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`distinction in terms of relative strengths and weaknesses with respect to application of
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`the reference disclosures to one or more claim limitations.” Id. at 3. Here, the
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`Petitioner did not even attempt to articulate any reasons why Chen (Ex. 1003) is
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`distinct from Meade (Ex. 1005) or vice versa. Petitioner failed to provide any
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`explanation why the references were not redundant. As a result, the Board should not
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`institute review based on both Grounds 1 and 2, if the Board somehow determines
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`that both Grounds 1 and 2 have a reasonable likelihood of prevailing. Alternatively,
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`the Patent Owner respectfully requests that the Board deny the Petition in its entirety
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`and not institute trial for any reason due to horizontal redundancy of Grounds 1 and 2.
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`2. Meade and Elabbady Fail to Disclose A “Second User Interface” As
`Required In Section 1.B of Claim 1 of the ‘183 Patent
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`It is respectfully asserted that a “second user interface” as found in section 1.B
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`of claim 1 of the ‘183 Patent is not taught or suggested by Meade and Elabbady either
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`individually or in combination. The claim chart for section 1.B of claim 1 starts at
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`page 48 of the Petition. Section 1.B of claim 1 of the ‘183 Patent requires “making
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`available to the user a second user interface that allows the user to select to have the
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`continuous media content presented on either one of the first computerized device set
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`and the second computerized device set” (emphasis added). The “second user
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`interface” must allow the user to select continuous media content to be presented on
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`the 1stCDS or the 2ndCDS. Meade and Elabbady are both deficient in disclosing a
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`“second user interface” that allows a user to select the continuous media content for
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`presentation on the 2ndCDS.
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`The Petition cited Meade (Ex. 1005) and Elabbady (Ex. 1004) to allegedly
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`describe this section 1.B of claim 1 where a “second user interface” is required.
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`Specifically, the Petition relies on Meade at ¶¶ 51, 53 and 58. The Petitioner alleges
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`that the mobile computing device 12 of Meade is the 2ndCDS. (Petition, p. 40, § 1).
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`The Petitioner also alleges that appliances 13 (e.g., TV, video device 14, video
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`player) are the 1stCDS. (Petition, p. 46, 1.P).
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`According to section 1.B of claim 1, the second user interface must allow the
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`user to select continuous media content to be presented on the appliances 13 (the
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`alleged 1stCDS) or the mobile computing device 12 (the alleged 2ndCDS). Meade is
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`deficient in disclosing a “second user interface” that allows a user to select the
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`continuous media content for presentation on the mobile comp