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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________________
`GOOGLE INC.,
`Petitioner,
`v.
`ALEX IS THE BEST, LLC
`Patent Owner
`______________________________
`Case IPR2017-02059
`U.S. Patent No. 8,581,991
`______________________________
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`IPR2017-02059 – Patent Owner’s Preliminary Response
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`TABLE OF CONTENTS
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`Page No.
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`TABLE OF CONTENTS
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`I.
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`INTRODUCTION AND SUMMARY OF ARGUMENT ............................................................................ 1
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`II.
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`INTER PARTES REVIEW IS UNCONSTITUTIONAL ............................................................................. 2
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`III. PATENT OWNER IS ENTITLED TO EFFECTIVE FILING DATE OF JULY 26, 2005 ........................... 3
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`IV. THE PETITION FAILS TO ESTABLISH A REASONABLE LIKELIHOOD AT LEAST ONE OF THE
`CHALLENGED CLAIMS IS UNPATENTABLE ....................................................................................... 4
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`A. The Petition Fails to Establish a Motivation to Combine for Obvious Grounds ..................................... 5
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`1. The Petition fails to provide a satisfactory motivation to combine Inoue and Nair (Ground 2) .......... 6
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`2. The Petition fails to provide a satisfactory motivation to combine with Inoue with Nair and
`Narayanaswami (Ground 3) ................................................................................................................. 8
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`3. The Petition fails to provide a satisfactory motivation to combine Umeda with Inoue (Ground 4) .. 10
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`B. Ground 1: The Petition Fails to Establish That Challenged Claims are Anticipated by Nicholas ......... 12
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`1. The Petition Relies on a Reference that Teaches Away from the Claimed Invention ........................ 12
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`C. Ground 2: The Petition Fails to Establish a Reasonable Likelihood That Claims 22, 23, 25, 27-29, 32,
`33 and 35-38 are Rendered Obvious by Inoue in view of Nair ............................................................. 12
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`D. Ground 3: The Petition Fails to Establish a Reasonable Likelihood That Claims 22, 23, 25, 27-29, 32,
`33 and 35-38 are Rendered Obvious in view of Inoue, Nair and Narayanaswami................................ 14
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`E. Ground 4: The Petition Fails to Establish a Reasonable Likelihood That Claims 22, 23, 25, 27-29, 32,
`33 and 35-38 are Rendered Obvious by Umeda in view of Inoue ........................................................ 16
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`V. CONCLUSION .......................................................................................................................................... 17
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`IPR2017-02059 – Patent Owner’s Preliminary Response
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`TABLE OF AUTHORITIES
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`Page No.
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`Cases
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`Ex Parte Ahlfeld, APPEAL 2014-009272, 2016 WL 4775709
`(P.T.A.B. Sept. 9, 2016) ........................................................................................................... 6
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`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364 (Fed. Cir. 2016) ............................................ 6
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`Jacobs Corp. v. Generis III, Inc., IP2014-01267, Paper 12
`(P.T.A.B. Jan. 22, 2015) .......................................................................................................... 5
`
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`Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342 (Fed. Cir. 2012) ........................ 6
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`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) ...................................................................... 5
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`McCormick Harvesting Mach. Co. v. Aultman & Co., 169 U.S. 606 (1898) …...……………….. 2
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`Moses Lake Indus., Inc. v. Enthone, Inc., IPR2014-00243, Paper 6
`(P.T.A.B. June 18, 2014) ......................................................................................................... 6
`
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`Oil States Energy Services LLC v. Greene’s Energy Group, LLC. ……..………………………... 3
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`Purdue Pharma L.P. v. Depomed, Inc., 643 F. App’x 960 (Fed. Cir. 2016) ................................. 6
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`Other Authorities
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`37 C.F.R. §42.108(c) ...................................................................................................................... 5
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`IPR2017-02059 – Patent Owner’s Preliminary Response
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`I.
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`INTRODUCTION AND SUMMARY OF ARGUMENT
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`Petitioner has requested initiation of inter partes review (the “Petition”) of claims 22, 23,
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`25, 27-29, 32, 33 and 35-38 (the “Challenged Claims”) of U.S. Patent 8,581,991 (hereinafter the
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`‘991 patent or AITB patent) issued to Alex Is The Best, LLC (“Patent Owner” or “AITB”). AITB
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`respectfully requests that the Board deny the Petition for at least the following reasons:
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`First, inter partes review is unconstitutional.
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`Second, Petitioner fails to establish why a person of ordinary skill in the art would have
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`combined Inoue with either (1) Nair, (2) Umeda or (3) Nair and Narayanswami (Grounds 2-4),
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`and therefore fails to establish a reasonable likelihood that Petitioner would prevail on any
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`obviousness ground. Petitioner’s proffered obviousness combinations of Inoue and Nair, and
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`Inoue, Nair and Narayanaswami must fail because such combinations will change the principles
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`of the reference by eliminating Inoue’s storing process which transfers the image from the buffer
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`56 to the memory card. Further, such combinations will not lead a person of ordinary skill in the
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`art to the claimed invention because Inoue’s camera establishes a network connection on power-
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`up only when a communication card is installed in the card slot. Inoue’s card slot can (a) be
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`empty, (b) have a communication card, or (c) have a memory card.
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`Fourth, Petitioner fails to establish a reasonable likelihood of success that Claims 22, 23,
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`25, 27-29, 32, 33 and 35-38 is anticipated by Nicholas (Ground 1). Petitioner relies on a personal
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`computer (PC) reference which was taught against by the Patent Owner.
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`Fifth, Petitioner fails to establish a reasonable likelihood of success that Claims 22, 23,
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`25, 27-29, 32, 33 and 35-38 is obvious in view of Inoue and Nair (Ground 2) and in view of
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`Inoue, Nair and Narayanaswami (Ground 3). These combinations fail to teach or suggest that
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`“the Internet direct device automatically switches to another available mode of connection when
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`IPR2017-02059 – Patent Owner’s Preliminary Response
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`the Internet direct device detects that the primary mode of connection to the communications
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`network is unavailable.” Nair merely describes providing seamless routing between wireless
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`network while the cell phone user is roaming, i.e., when both wireless networks are
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`simultaneously present and available when “handoff” or switch is made from one wireless
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`network to another wireless network, and Inoue’s camera establishes a network connection on
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`power-up only when a communication card is installed in the card slot. Inoue’s card slot can (a)
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`be empty, (b) have a communication card, or (c) have a memory card. Narayanaswami is merely
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`cumulative and adds nothing to the combined teachings of Inoue and Nair.
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`Sixth, Petitioner fails to establish a reasonable likelihood of success that Claims 22, 23,
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`25, 27-29, 32, 33 and 35-38 is obvious over Umeda in view of Inoue (Ground 4). This
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`combination must fail because “seamless routing between wireless networks” during roaming as
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`taught by Umeda is achieved only when both wireless networks are simultaneously present and
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`available. Whereas, the claimed invention automatically switches to another available mode of
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`connection when the primary mode of connection to the communications network is
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`unavailable.
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`II.
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`INTER PARTES REVIEW IS UNCONSTITUTIONAL
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`Patent Owner believes any attempt to retract Patent Owner’s intellectual property rights
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`through invalidation of any claims of the AITB patent at the United States Patent and Trademark
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`Office is unconstitutional. In particular, the IPR process at least violates the Constitution by
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`extinguishing private property rights through a non-Article III forum without a jury. Once a
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`patent is granted, it “is not subject to be revoked or canceled by the president, or any other
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`officer of the Government” because “[i]t has become the property of the patentee, and as such is
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`entitled to the same legal protection as other property.” McCormick Harvesting Mach. Co. v.
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`2
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`IPR2017-02059 – Patent Owner’s Preliminary Response
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`Aultman & Co., 169 U.S. 606 (1898). The Supreme Court has recently granted certiorari on this
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`issue in Oil States Energy Services LLC v. Greene’s Energy Group, LLC. Patent Owner reserves
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`all rights in the event the PTAB invalidates any claims of the subject Patent in this proceeding.
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`III.
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`PATENT OWNER IS ENTITLED TO EFFECTIVE FILING DATE OF JULY 26,
`2005
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`The Petitioner asserts that the Patent Owner is not entitled to the benefit of the earlier
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`filing date U.S. Provisional Application Serial No. 60/702,470 (Ex. 1002, the “Provisional”)
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`because the Provisional allegedly does not describe the following two elements of independent
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`Claims 22 and 32 of the AITB patent:
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`said
`to
`“automatically
`Internet direct device
`(a)
`connects
`communications network on power-up using one of a plurality of
`available modes of connection” using a primary mode of connection and
`(b) “automatically switches to another available mode of connection
`when … said primary mode of connection to said communications
`network is unavailable.”
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`Petition at 9. The Patent Owner disagrees with the Petitioner’s erroneous assertion. Support for
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`these two allegedly unsupported claimed elements are at least as follows:
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`“An Internet Direct Camera (IDC) that transmits video only or video and audio
`directly to the internet (without any intermediate hardware) to a website.” (Ex.
`1002, Provisional at 1, lines 2-4).
`“My invention allows total portability and instant setup anywhere, at any time,
`where there is internet access.” (Ex. 1002, Provisional at 4, lines 13-14).
`“[Internet direct] camera has imbedded cell phone or portable cell phone antenna
`unit that connects to camera and transmits live video and audio.” (Ex. 1002,
`Provisional at 1, lines 13-15).
`“So as to ensure seamless recording IDC’s [Internet Direct Camera] could
`transmit via various methods. For example, IDC’s could be programmed to jump
`to satellite, cellular wireless or Wi-Fi, in case of DLS failure. A notification of this
`status would alert users to this change. (Ex. 1002, Provisional at 6, liens 19-22).
`“6. Six ways to transmit data to internet: …
`d) WiMax or Wi-Fi wireless direct to internet
`e) Satellite wireless transmission direct to internet
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`IPR2017-02059 – Patent Owner’s Preliminary Response
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`f) Cell phone number direct to a WSSC.
`And any combo of above as primary with another as secondary backup” (Ex.
`1002, Provisional from 1, line 31 to 2, line 4).
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`It is readily apparent to a person of ordinary skill in the art that cell phone on power-up
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`automatically connects to a communication network on power-up. This position cannot be
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`disputed by the Petitioner since the Petitioner has fully adopted this position in support of its
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`arguments in the Petition. Accordingly, consistent with the case law, the Provisional conveys
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`with reasonable clarity to those skilled in the art that, as of the filing date, the Patent Owner was
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`in possession of the claimed invention.
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`Therefore, the Petition fails establish a reasonable likelihood that Petitioner would prevail
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`on this issue. Accordingly, Patent Owner is entitled to the benefit of the earlier filing date of the
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`Provisional.
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`IV.
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`THE PETITION FAILS TO ESTABLISH A REASONABLE LIKELIHOOD AT
`LEAST ONE OF THE CHALLENGED CLAIMS IS UNPATENTABLE
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`Petitioner alleges that the Challenged Claims are unpatentable on the grounds1:
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`• Ground 1: Claims 22, 23, 25, 27-29, 32, 33 and 35-38 are anticipated by U.S.
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`Patent Publication 2004/0133668 to Nicholas, III (hereinafter “Nicholas”).
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`1 In seven (7) other related proceedings involving related AITB patents: (I) IPR2017-02052, Petitioner cites Nair,
`Inoue, Narayanaswami (“Expanding the Digital Camera’s Reach”, Kusaka (U.S. Patent Publication 2004/0109063),
`Nicholas, and Yamazaki (U.S. Patent Publication 2004/0105008) in asserting nine (9) obvious grounds for
`cancellation; (II) IPR2017-02053, Petitioner cites Inoue, Nair, Narayanaswami, Yamazaki, Nicholas and Kusaka in
`asserting six (6) obvious grounds for cancellation; (III) IPR2017-02054, Petitioner cites Nair, Lavelle (U.S. Patent
`7,333,785) – this reference was already considered by the Examiner, Nicholas, Kusaka, and Yamazaki in asserting
`eight (8) obvious grounds for cancellation; (IV) IPR2017-02055, Petitioner cites Nicholas, Nair, Umeda and Inoue
`in asserting three (3) anticipation and obvious grounds for cancellation; (V) IPR2017-02056, Petitioner cites
`Nicholas, Nair, Kusaka, Khedouri (U.S. Patent Publication 2006/0008256, Morris (U.S. Publication 2006/0143684),
`Inoue, Narayanswami and Umeda in asserting eleven (11) anticipation and obvious grounds for cancellation; (VI)
`IPR2017-02057, Petitioner cites Inoue, Nair, Narayanaswami, Yamazaki, Nicholas, and Kusaka in asserting six (6)
`obvious grounds for cancellation; (VII) IPR2017-02058, Petitioner cites Inoue, Nair, Yamazaki, Nicholas and
`Kusaka in asserting six (6) obvious grounds for cancellation.
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`IPR2017-02059 – Patent Owner’s Preliminary Response
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`• Ground 2: Claims 22, 23, 25, 27-29, 32, 33 and 35-38 are rendered obvious in
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`view of U.S. Publication 2004/0109066 to Inoue et al. (hereinafter “Inoue”) and
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`U.S. Patent Publication 2004/0127208 to Nair et al. (hereinafter “Nair”).
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`• Ground 3: Claims 22, 23, 25, 27-29, 32, 33 and 35-38 are rendered obvious in
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`view of Inoue, Nair and Narayanaswami et al., “Expanding the Digital Camera’s
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`reach,” Computer, vol. 37, issue 12 (IEEE Dec. 2004), p. 65 (hereinafter
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`“Narayanaswami”).
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`• Ground 4: Claims 22, 23, 25, 27-29, 32, 33 and 35-38 are rendered obvious in
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`view of U.S. Publication 2002/0150228 to Umeda et al. (hereinafter “Umeda”)
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`and Inoue.
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`Petition at 7.
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`A.
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`The Petition Fails to Establish a Motivation to Combine for Obvious
`Grounds
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`With respect to the obvious grounds, Petitioner must demonstrate a reasonable likelihood
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`that at least one of Challenged Claims would have been obvious in view of the art cited in the
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`Petition. See 37 C.F.R. § 42.108(c). “An obviousness analysis requires more than simply
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`showing that each limitation is found in the prior art.” Jacobs Corp. v. Generis III, Inc., IP2014-
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`01267, Paper 12, slip op. at 8 (P.T.A.B. Jan. 22, 2015) (citing KSR Int’l Co. v. Teleflex, Inc., 550
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`U.S. 398, 418 (2007). “Petitioner must also show ‘whether there was an apparent reason to
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`combine the known elements in the fashion claimed by the patent at issue.’” Id. (quoting KSR,
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`550 U.S. at 418).
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`A combination of references cannot be used to establish unpatentability unless “a skilled
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`artisan would have been motivated to combine the teachings of the prior art references to achieve
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`IPR2017-02059 – Patent Owner’s Preliminary Response
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`the claimed invention ….” Ex Parte Ahlfeld, APPEAL 2014-009272, 2016 WL 4775709, at *3
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`(P.T.A.B. Sept. 9, 2016) (citing Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342,
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`1360 (Fed. Cir. 2012)). “To satisfy its burden of proving obviousness, a petitioner cannot employ
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`mere conclusory statements. The petitioner must instead articulate specific reasoning, based on
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`evidence of record, to support the legal conclusion of obviousness.” In re Magnum Oil Tools
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`Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016); accord Moses Lake Indus., Inc. v. Enthone,
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`Inc., IPR2014-00243, Paper 6, slip op. at 20 (P.T.A.B. June 18, 2014) (“MLI must provide more
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`than conclusory expert testimony, … and conclusory rationales to combine the teachings, to
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`present a prima facie case of obviousness.”). The petitioner must establish an adequate reason
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`why a person of ordinary skill in the art would have been prompted to combine prior art elements
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`“in the way the claimed invention does,” and show there was a “reasonable expectation of
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`success form doing so.” Purdue Pharma L.P. v. Depomed, Inc., 643 F. App’x 960, 965 (Fed. Cir.
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`2016).
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`1.
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`The Petition fails to provide a satisfactory motivation to combine
`Inoue and Nair (Ground 2)
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`In support of modifying Inoue with teachings from Nair, Petitioner argues:
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`Inoue describes a digital camera that automatically establishes a primary
`connection to a communications network when the camera is turned on for
`transmission of images to a server and, thereafter, to other digital cameras via the
`Internet. Nair describes a wireless device and system for automatically switching
`among networks when a primary network becomes unavailable in order to
`maintain a seamless connection to the communication network for data
`transmission. A person of ordinary skill in the art would have known to combine
`Inoue and Nair to arrive at the alleged invention in the challenged claims.
`Madisetti, ¶¶637-640, 745-780.
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`Petition at 32-33. This conclusory statement fails to provide any factual basis to deduce that a
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`person of ordinary skill in the art would have been motivated to modify Inoue’s digital camera to
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`incorporate the cell phone roaming system in Nair.
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`IPR2017-02059 – Patent Owner’s Preliminary Response
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`Although Inoue describes a digital camera, contrary to the Petitioner’s assertion, Inoue
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`does not teach that “‘[w]hen the digital camera is powered on, it automatically establishes a
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`network connection with the file server in an activation process.’” Petition at 34.
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`Inoue clearly states that the digital camera establishes a network connection with the file
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`server if and only if “the card slot 20 is loaded with a communication card (C at S30), the
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`communication control unit 72 and the communication card cooperate to establish a network
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`connection with the file server 100 (S32) … If the identification of the card type at S30
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`determines that the card slot 20 is loaded with a memory card (M at S30), the processing of S32
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`is skipped since the network connection with the file server 100 is impossible.” (emphasis added)
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`(Inoue at ¶¶ [0066], [0067]).
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`In addition, contrary to the Petitioner’s assertions, Nair is directed to providing “seamless
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`routing between wireless networks” as cell phone user “roams” between the wireless networks
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`(Nair at ¶ [0029]). That is, in Nair, both wireless networks are simultaneously present and
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`available when “handoff” or switch is made from one wireless network to the other wireless
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`network. Hence, Nair fails to teach “seamless routing between wireless networks” when the cell
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`phone user is “not roaming,” i.e., when a wireless network becomes unavailable, as required in
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`the claimed invention.
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`Furthermore, the Petitioner’s proffered obviousness combination of Inoue and Nair must
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`fail because such combination will change the principles of the reference by eliminating Inoue’s
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`storing process which transfers the image from the buffer 56 to the memory card. (Inoue at ¶
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`[0069]).
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`Moreover, even assuming arguendo that the combination is proper, it will not lead one of
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`ordinary skill in the art to the claimed invention because “seamless routing between wireless
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`IPR2017-02059 – Patent Owner’s Preliminary Response
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`networks” is achieved only when both wireless networks are simultaneously present and
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`available.
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`In short, the Petition fails to set forth why a person of ordinary skill in the art would have
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`combined Inoue with Nair, and therefore does not establish a reasonable likelihood that
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`Petitioner would prevail on Ground 2, which rely upon this obviousness combination.
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`2.
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`The Petition fails to provide a satisfactory motivation to combine with
`Inoue with Nair and Narayanaswami (Ground 3)
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`In asserting this Obviousness Ground 3, the Petitioner is implicitly admitting that its
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`Obviousness Ground 2 is without any merit. In asserting this Obviousness Ground 3, the
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`Petitioner provides no factual basis to deduce that a person of ordinary skill in the art would have
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`been motivated to modify Inoue to incorporate teachings of Nair and Narayanaswami:
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`These claims, however, are also obvious in view of Inoue, Nair and
`Narayanaswami. As discussed above, Nair describes mobile phones and
`Narayanaswami recognizes that digital cameras are in mobile phones and states
`the benefits of including a digital camera in a mobile phone. Ex. 1010, p. 65. For
`the reasons discussed in Nair and Narayanaswami, and the further reasons
`discussed above, an ordinary artisan would have been motivated to combine
`Inoue’s camera in a mobile phone, as discussed in Narayanaswami, with the
`functionality described in Nair. Madisetti, ¶¶102-105, 641, 781.
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`Petition at 54. This conclusory statement fails to provide a satisfactory motivation to combine
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`Inoue with Nair and Narayanaswami.
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`As noted herein, although Inoue describes a digital camera, contrary to the Petitioner’s
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`assertion, Inoue does not teach “a digital camera that automatically establishes a primary
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`connection to a network when the camera is turned on for transmission of images to a server and
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`other digital cameras via the Internet.” Petition at 50.
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`As noted herein, Inoue clearly states that the digital camera establishes a network
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`connection with the file server if and only if “the card slot 20 is loaded with a communication
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`card (C at S30), the communication control unit 72 and the communication card cooperate to
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`IPR2017-02059 – Patent Owner’s Preliminary Response
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`establish a network connection with the file server 100 (S32) … If the identification of the card
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`type at S30 determines that the card slot 20 is loaded with a memory card (M at S30), the
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`processing of S32 is skipped since the network connection with the file server 100 is
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`impossible.” (emphasis added) (Inoue at ¶¶ [0066], [0067]).
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`As noted herein, contrary to the Petitioner’s assertions, Nair is directed to providing
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`“seamless routing between wireless networks” as cell phone user “roams” between the wireless
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`networks (Nair at ¶ [0029]). That is, in Nair, both wireless networks are simultaneously present
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`and available when “handoff” or switch is made from one wireless network to the other wireless
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`network. Hence, Nair fails to teach “seamless routing between wireless networks” when the cell
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`phone user is “not roaming,” i.e., when a wireless network becomes unavailable, as required in
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`the claimed invention.
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`Narayanaswami merely describes a potential trend wherein a cell phone evolves to
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`incorporate a digital camera, spelling the end of a standalone, bulky digital camera. Hence,
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`Narayanaswami is merely cumulative and adds nothing to the combined teachings of Inoue and
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`Nair. Additionally, Narayanaswami fails to cure the aforenoted deficiencies with Inoue and Nair.
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`Accordingly, this Obviousness Ground 3 appears to be redundant in view of the
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`Petitioner’s Obviousness Ground 2. In fact, the Petitioner has not provided any explanation as to
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`why the addition of Narayanaswami more satisfies any particular claim limitation than the
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`combination of Inoue and Nair.
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`Further, the Petitioner’s proffered obviousness combination of Inoue, Nair and
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`Narayanaswami must fail because such combination will change the principles of the reference
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`by eliminating Inoue’s storing process which transfers the image from the buffer 56 to the
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`memory card. (Inoue at ¶ [0069]).
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`IPR2017-02059 – Patent Owner’s Preliminary Response
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`Moreover, even assuming arguendo that the combination is proper, as with the
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`Petitioner’s Obviousness Ground 2, it will not lead one of ordinary skill in the art to the claimed
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`invention because “seamless routing between wireless networks” is achieved only when both
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`wireless networks are simultaneously present and available, contrary to the claimed invention.
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`In short, the Petition fails to set forth why a person of ordinary skill in the art would have
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`combined Inoue with Nair and Narayanaswami, and therefore does not establish a reasonable
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`likelihood that Petitioner would prevail on Ground 3, which rely upon this obviousness
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`combination.
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`3.
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`The Petition fails to provide a satisfactory motivation to combine
`Umeda with Inoue (Ground 4)
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`In support of modifying Umeda with teachings from Inoue, Petitioner argues:
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`Umeda describes devices, methods and systems that allow seamless roaming over
`multiple networks in order to transmit video images captured by a camera via the
`Internet. Umeda describes switching from a preferred mode of connection to
`another mode of connection when the first mode is unavailable. Inoue describes a
`camera that automatically establishes a primary connection to a network when the
`camera is turned on for transmission of images to a server on the Internet. As
`discussed below, skilled artisan would have been motivated to combine Inoue’s
`method of connecting to a preferred network on power-up with Umeda’s
`invention. Madisetti, ¶¶782-807.
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`Petition at 54-55. This conclusory statement fails to provide any factual basis to deduce that a
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`person of ordinary skill in the art would have been motivated to modify Umeda to incorporate
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`the digital camera in Inoue.
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`Umeda is directed to “a mobile communication system comprising a structure for
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`realizing ‘network seamless’ for roaming between different kinds of network.” (Umeda at
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`Abstract). That is, in Umeda, both networks are simultaneously present and available when
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`“handoff” or switch is made from one network to the other network. Hence, Umeda fails to teach
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`IPR2017-02059 – Patent Owner’s Preliminary Response
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`“seamless routing between wireless networks” when the cell phone user is “not roaming,” i.e.,
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`when a wireless network becomes unavailable, as required in the claimed invention.
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`As noted herein, although Inoue describes a digital camera, contrary to the Petitioner’s
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`assertion, Inoue does not teach that “‘[w]hen the digital camera is powered on, it automatically
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`establishes a network connection with the file server in an activation process.” Petition at 56.
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`As noted herein, Inoue clearly states that the digital camera establishes a network
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`connection with the file server if and only if “the card slot 20 is loaded with a communication
`
`card (C at S30), the communication control unit 72 and the communication card cooperate to
`
`establish a network connection with the file server 100 (S32) … If the identification of the card
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`type at S30 determines that the card slot 20 is loaded with a memory card (M at S30), the
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`processing of S32 is skipped since the network connection with the file server 100 is
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`impossible.” (emphasis added) (Inoue at ¶¶ [0066], [0067]).
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`Moreover, even assuming arguendo that the combination is proper, it still will not lead
`
`one of ordinary skill in the art to the claimed invention because “seamless routing between
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`wireless networks” is achieved only when both wireless networks are simultaneously present
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`and available, and Inoue’s digital camera establishes a network connection only when a
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`communication card is present in the card slot. Inoue’s card slot 20 can (a) be empty, (b) have a
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`communication card or (c) have a memory card.
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`In short, the Petition fails to set forth why a person of ordinary skill in the art would have
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`combined Umeda with Inoue, and therefore does not establish a reasonable likelihood that
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`Petitioner would prevail on Ground 3, which rely upon this obviousness combination.
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`IPR2017-02059 – Patent Owner’s Preliminary Response
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`B.
`
`Ground 1: The Petition Fails to Establish That Challenged Claims are
`Anticipated by Nicholas
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`The Petitioner fails to establish a prima facie case that claims 22, 23, 25, 27-29, 32, 33
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`and 35-38 is anticipated by Nicholas for at least the following reasons.
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`1.
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`The Petition Relies on a Reference that Teaches Away from the
`Claimed Invention
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`The claimed invention is directed to a system and method that “seamlessly and
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`automatically transmits, receives, stores and/or archives still images, video and/or audio” without
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`the necessity of connecting to another device, such as a personal computer (PC) (Ex. 1001
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`(AITB patent) from col. 1, lines 62 to col. 2, line 3). Nevertheless, the Petitioner relies on a
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`reference that is directed to a personal computer (PC), which was explicitly excluded and taught
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`against by the Patent Owner (Ex. 1006 (Nicholas) at ¶ [0021] (“As shown in Fig. 1, exemplary
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`end user device 100 comprises a mobile client device, such as a notebook or tablet PC, operating
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`under the Microsoft Windows™ XP operating system.”); Ex. 1006 (Nicholas) at ¶ [0026] (the
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`notebook or tablet PC “operates as a communications base station”; Ex. 1006 (Nicholas) at ¶ (the
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`notebook or table PC “operating as an access point or a repeater”).
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`Accordingly, Nicholas is not a relevant reference to the claimed invention because it
`
`teaches away from the claimed invention.
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`Therefore, the Petitioner has failed establish a reasonable likelihood that Petitioner would
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`prevail on Ground 1.
`
`C.
`
`Ground 2: The Petition Fails to Establish a Reasonable Likelihood That
`Claims 22, 23, 25, 27-29, 32, 33 and 35-38 are Rendered Obvious by Inoue in
`view of Nair
`
`As noted herein, although Inoue describes a digital camera, contrary to the Petitioner’s
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`assertion, Inoue does not teach “a digital camera that automatically establishes a primary
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`IPR2017-02059 – Patent Owner’s Preliminary Response
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`connection to a communication network when the camera is turned on for transmission of images
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`to a server and, thereafter, to other digital cameras via the Internet.” Petition at 33-34.
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`As noted herein, Inoue clearly states that the digital camera establishes a network
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`connection with the file server if and only if “the card slot 20 is loaded with a communication
`
`card (C at S30), the communication control unit 72 and the communication card cooperate to
`
`establish a network connection with the file server 100 (S32) … If the identification of the card
`
`type at S30 determines that the card slot 20 is loaded with a memory card (M at S30), the
`
`processing of S32 is skipped since the network connection with the file server 100 is
`
`impossible.” (emphasis added) (Inoue at ¶¶ [0066], [0067]).
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`In addition, as noted herein, contrary to the Petitioner’s assertions, Nair is directed to
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`providing “seamless routing between wireless networks” as cell phone user “roams” between the
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`wireless networks (Nair at ¶ [0029]). That is, in Nair, both wireless networks are simultaneously
`
`present and available when “handoff” or switch is made from one wireless network to the other
`
`wireless network. Hence, Nair fails to teach “seamless routing between wireless networks”
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`when the cell phone user is “not roaming,” i.e., when a wireless network becomes unavailable,
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`as required in the claimed invention.
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`Furthermore, Petitioner’s proffered obviousness combination of Inoue and Nair must fail
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`because such combination will change the principles of the reference by eliminating Inoue’s
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`storing process which transfers the image from the buffer 56 to the memory card. (Inoue at ¶
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`[0069]).
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`Moreover, even assuming arguendo that the combination is proper, it still will not lead
`
`one of ordinary skill in the art to the claimed invention because “seamless routing between
`
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`IPR2017-02059 – Patent Owner’s Preliminary Response
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`wireless networks” as taught by Nair is achieved only when both wireless networks are
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`simultaneously present and available.
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`In other words, the combination still fails to teach or suggest that “the Internet direct
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`device automatically switches to another available mode of connection when the Internet direct
`
`device detects that the primary mode of connection to the communications network is
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`unavailable,” as required in Claim 22 of AITB patent (and similarly required in Claim 32 of
`
`AITB patent).
`
`Therefore, the Petitioner has failed establish a reasonable likelihood that Petitioner would
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`prevail on Ground 2.
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`D.
`
`Ground 3: The Petition Fails to Establish a Reasonable Likelihood That
`Claims 22, 23, 25, 27-29, 32, 33 and 35-38 are Rendered Obvious in view of
`Inoue, Nair and Narayanaswami
`
`In asserting this Obvio