UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`AVER INFORMATION INC. AND IPEVO, INC.,
`Petitioners,
`
`v.
`
`PATHWAY INNOVATIONS AND TECHNOLOGIES, INC.,
`Patent Owner
`
`
`
`
`Case IPR 2017-02108
`United States Patent No. 8,508,751 B1
`
`
`
`
`PATENT OWNER’S REQUEST FOR REHEARING FROM
`FINAL WRITTEN DECISION AND DECISION ON MOTION TO AMEND
`
`
`

`

`Case No. IPR 2017-02108
`
`TABLE OF CONTENTS
`INTRODUCTION ........................................................................................... 1
`I.
`PROCEDURAL HISTORY ............................................................................ 2
`II.
`III. APPLICABLE LAW ....................................................................................... 3
`A.
`Standard of Review ............................................................................... 3
`B.
`Obviousness (35 U.S.C §103) ............................................................... 3
`IV. ARGUMENTS ................................................................................................ 4
`A.
`The Parties Have Not Had an Opportunity to Present Argument Under
`the Board’s Claim Construction, Presented for the First Time in the
`Final Decision ........................................................................................ 4
`That a Combination of Prior Art Yields an Advantage and is Within
`the Ordinary Skill in the Art is Not Legally Sufficient to Establish
`Obviousness, Absent A Motivation to Combine to Meet the Context
`of the Claim as a Whole ........................................................................ 6
`The Board’s Obvious Conclusion is Premised on the Ability to Make
`the Proposed Morichika Adaptation; Not Whether a Skilled Artisan
`Would Have Been Motivated to Make the Morichika Adaptation .....11
`CONCLUSION ..............................................................................................14
`
`B.
`
`C.
`
`V.
`
`
`
`
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`Case No. IPR 2017-02108
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`TABLE OF AUTHORITIES
`CASES
`Ariosa Diagnostics v. Verinata Health, Inc.,
`805 F.3d 1359 (Fed. Cir. 2015) .............................................................................. 4
`Belden Inc. v. Berk-Tek LLC,
`805 F.3d 1064 (Fed. Cir. 2015) ..................................................................... 11, 14
`In re Epstein,
`32 F.3d 1559 (Fed. Cir. 1994) ..............................................................................14
`In re Gartside,
`203 F.3d 1305 (Fed. Cir. 2000) .............................................................................. 4
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ................................................................................ 7
`In re Kotzab,
`217 F.3d 1365 (Fed. Cir. 2000) ............................................................................12
`In re Kubin,
`561 F.3d 1351 (Fed. Cir. 2009) .............................................................................. 3
`In re NuVasive, Inc.,
`842 F.2d 1376 (Fed. Cir. 2016) .............................................................................. 4
`In re Ochiai,
`71 F.3d 1565 (Fed. Cir. 1995) ..............................................................................12
`In re Warsaw Orthopedic, Inc.,
`832 F.3d 1327 (Fed. Cir. 2016) .............................................................................. 4
`InTouch Techs., Inc. v. VGO Communications, Inc.,
`751 F.3d 1327 (Fed. Cir. 2014) ............................................................................11
`KSR Int’l Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) .................................................................................... 7, 8, 10
`Lockwood v. Am. Airlines, Inc.,
`107 F.3d 1565 (Fed. Cir. 1997) ............................................................................14
`Personal Web Techs., LLC v. Apple, Inc.,
`848 F.3d 987 (Fed. Cir. 2017) ................................................................................ 7
`SAS Inst., Inc. v. ComplementSoft, LLC,
`825 F.3d 1341 (Fed. Cir. 2016) .............................................................................. 5
`
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`Case No. IPR 2017-02108
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`Stratoflex, Inc. v. Aeroquip Corp.,
`713 F.2d 1530 (Fed. Cir. 1983) ................................................................... 6, 7, 10
`Volkswagen Grp. of Am., Inc. v. Velocity Patent LLC,
`IPR2015-00276, Paper No. 8 at 10 .......................................................................13
`RULES
`37 C.F.R. § 42.71(d) .................................................................................................. 3
`
`
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`Case No. IPR 2017-02108
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`I.
`
` INTRODUCTION
`
`Pursuant to 37 C.F.R. § 42.71(d), Patent Owner respectfully requests a
`
`rehearing of the Board’s Final Written Decision and Decision on Motion to Amend
`
`(the “Final Decision,” Paper No. 31). Particularly, Patent Owner requests
`
`reconsideration of the Board’s finding that proposed substitute claims 21-27 are
`
`obvious over Morichika (Ex. 1002) in view of Liang (Ex. 1023). See Decision at 41,
`
`et seq.
`
`Reconsideration is appropriate because the parties have not had an
`
`opportunity to present argument under the Board’s new construction of the claim
`
`element “a video stream comprising a series of frame images.” Proposed substitute
`
`claims 21-27 recite this element. Accordingly, Patent Owner respectfully requests
`
`reconsideration with respect to the obviousness findings of substitute claims 21-27,
`
`and specifically with respect to the applicability of the cited prior art to this claim
`
`element (in the full context of the claim as a whole, as presently construed) for
`
`purposes of obviousness under § 103.
`
`When analyzed in the full context of the claim as a whole, substitute claims
`
`21-27 are patentable over Morichika and Liang. The Board has not performed the
`
`proper inquiry. It is not enough to find that a video camera may substitute for a still
`
`image camera in Morichika, even if that substitution would be a useful upgrade to
`
`that system. Simply reciting advantages of a combination is not legally sufficient to
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`Case No. IPR 2017-02108
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`show that there was a motivation to combine references at the time of the invention.
`
`Moreover, whether a skilled artisan could have adapted Morichika to use a video
`
`camera is not the proper inquiry. Rather, Petitioner must show that a person of
`
`ordinary skill would have been motivated to adapt Morichika to use a video camera.
`
`Petitioner has failed to do such.
`
`Accordingly, Patent Owner respectfully requests the Board to grant Patent
`
`Owner’s Motion to Amend with respect to substitute claims 21-27.
`
`II.
`
`PROCEDURAL HISTORY
`
`On September 15, 2017, Aver Information Inc. and IPEVO, Inc. (collectively
`
`“Petitioner”) filed a Petition pursuant to 35 U.S.C. §§ 311-319 to institute an inter
`
`partes review of claims 1–5, 7–10, 12–14, 16, 18, and 20 of United States Patent No.
`
`8,508,751 (Ex. 1001, “the ’751 patent”). Paper No. 3 (“Petition”). On December 27,
`
`2017, Pathway Innovations and Technologies, Inc. (“Patent Owner”) filed a
`
`Preliminary Response. Paper No. 6. On March 21, 2018, the Board instituted an inter
`
`partes review of claims 1–5 and 7, but not claims 8–10, 12–14, 16, 18, and 20. Paper
`
`No. 8. Following the Supreme Court’s decision in SAS Inst. Inc. v. Iancu, 138 S. Ct.
`
`1348 (2018), the Board issued an Order to include review of all challenged claims
`
`and all grounds presented in the Petition. Paper No. 10, May 29, 2018.
`
`Following institution, Patent Owner filed its Response to the Petition along
`
`with a Motion to Amend. Paper Nos. 11, 12, respectively. Petitioner filed a Reply to
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`Case No. IPR 2017-02108
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`Patent Owner’s Response and an Opposition to the Motion to Amend. Paper Nos.
`
`16, 17, respectively. Patent Owner filed its Reply to Petitioner’s Opposition on
`
`November 13, 2018. Paper No. 19. A hearing was held on December 13, 2018. See
`
`Paper No. 30 (Record of Oral Hearing).
`
`On March 6, 2019, the Board issued its Final Decision determining that
`
`Petitioner has failed to demonstrate by a preponderance of the evidence that claims
`
`18 and 20 of the ‘751 patent are unpatentable; denying the Motion to Amend as to
`
`proposed substitute claims 21-25, 27-30, 32-34, and 36; and cancelling claims 1-5,
`
`7-10, 12-14, and 16.
`
`III. APPLICABLE LAW
`
`Standard of Review
`A.
`Under 37 C.F.R. § 42.71(d), “[a] party dissatisfied with a decision may file a
`
`single request for rehearing without prior authorization from the Board.” “The
`
`request must specifically identify all matters the party believes the Board
`
`misapprehended or overlooked, and the place where each matter was previously
`
`addressed in a motion, an opposition, or a reply.” Id.
`
`B. Obviousness (35 U.S.C. § 103)
` Obviousness is a question of law based on underlying findings of fact. In re
`
`Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009). In order to support an obviousness
`
`conclusion, the Board must find that a person of ordinary skill in the art would have
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`Case No. IPR 2017-02108
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`been motivated to combine the prior art in the way claimed in the ‘751 patent claims
`
`and had a reasonable expectation of success in doing so. See In re NuVasive, Inc.,
`
`842 F.2d 1376, 1381-82 (Fed. Cir. 2016); In re Warsaw Orthopedic, Inc., 832 F.3d
`
`1327, 1333-34 (Fed. Cir. 2016); Ariosa Diagnostics v. Verinata Health, Inc., 805
`
`F.3d 1359, 1364-67 (Fed. Cir. 2015). The Federal Circuit reviews the Board’s
`
`ultimate determination of obviousness de novo and its underlying factual
`
`determinations for substantial evidence. In re Gartside, 203 F.3d 1305, 1312 (Fed.
`
`Cir. 2000).
`
`IV. ARGUMENTS
`
`A. The Parties Have Not Had an Opportunity to Present Argument
`Under the Board’s Claim Construction, Presented for the First
`Time in the Final Decision
`In the decision instituting inter partes review, the Board construed the claim
`
`element “a series of frame images” as including a series of still images, not limited
`
`to video frames. Paper No. 8 at 9-13 (adopting the Petitioner’s proposed
`
`construction). In its briefing and arguments, Patent Owner disputed this
`
`construction, offering instead a construction of “a plurality of real-time video frame
`
`images.” Paper No. 11 at 6-10. Patent Owner then moved to amend to clarify this
`
`claim element and to obviate the need for claim construction entirely. Paper No. 12
`
`at 3, 9-12 (“The proposed amendments attempt to obviate the need for claim
`
`construction.”); see also Paper No. 30 (Record of Oral Hearing) at 29-30 (noting that
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`Case No. IPR 2017-02108
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`the amendments were intended “to make the claims more consistent and to address
`
`prior art”). The Board considered this amendment in its final written decision. Final
`
`Decision at 12-14, 30-31.
`
`Even though the amendment was offered to obviate the need for claim
`
`construction, the Board then rendered a new construction of this claim element. Id.
`
`at 14 (construing a “video stream comprising a series of frame images” as “a series
`
`of frame images captured automatically, but not necessarily continuously at a
`
`constant rate”). This new construction is different from Petitioner’s proposed
`
`construction, Patent Owner’s proposed construction, Patent Owner’s proposal for no
`
`construction, and the Board’s prior construction in the Decision to Institute Inter
`
`Partes Review. The Board then relied on this new construction to reach a finding of
`
`obviousness. See, e.g., id. at 45 (“[A]s discussed above, a ‘video stream’ does not
`
`necessarily entail compression encoding schemes or high frame rates.”).
`
`The Board cannot adopt a new claim construction in its Final Decision that is
`
`different from the one in the institution decision without providing the parties an
`
`opportunity to present argument under the new claim construction, even if the new
`
`claim construction is correct. See SAS Inst., Inc. v. ComplementSoft, LLC, 825 F.3d
`
`1341, 1350-52 (Fed. Cir. 2016), rev’d on other grounds, 138 S. Ct. 1348 (2018) (“an
`
`agency may not change theories in midstream without giving respondents reasonable
`
`notice of the change and the opportunity to present argument under the new theory.”
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`Case No. IPR 2017-02108
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`(internal citations and quotations omitted)). Although other elements of SAS were
`
`reversed, this portion of the Federal Circuit’s decision was not appealed or addressed
`
`by the Supreme Court and, therefore, stands as controlling law.
`
`In this case, the parties have not had an opportunity to present argument under
`
`the Board’s new construction of the claim element “a video stream comprising a
`
`series of frame images.” Accordingly, Patent Owner respectfully requests
`
`reconsideration with respect to the obviousness findings of the claims containing this
`
`element, and specifically with respect to the applicability of the cited prior art to this
`
`claim element (in the full context of the claim as a whole, as presently construed)
`
`for purposes of obviousness under § 103.
`
`B.
`
`That a Combination of Prior Art Yields an Advantage and Is
`Within the Ordinary Skill in the Art Is Not Legally Sufficient to
`Establish Obviousness, Absent a Motivation to Combine to Meet
`the Context of the Claim as a Whole
`In determining the differences between the prior art and the claims, the
`
`question under 35 U.S.C. § 103 is not whether the differences themselves would
`
`have been obvious, but whether the claimed invention as a whole would have been
`
`obvious. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1536-37 (Fed. Cir. 1983).
`
`It is not sufficient to find that one prior art component may substitute for another
`
`prior art component in a prior art system, even if that substitution would be a useful
`
`upgrade to the system. In other words, it is not enough to find that a video camera
`
`may substitute for a still image camera in a prior art document imaging system, even
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`Case No. IPR 2017-02108
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`if that substitution would be a useful upgrade to that system. It could be said that
`
`every patent builds on known prior art to produce a useful upgrade. Therefore, the
`
`efficacy of the combination is not the proper inquiry. See In re Kahn, 441 F.3d 977,
`
`988 (Fed. Cir. 2006), cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
`
`398, 417-18 (2007) (“[T]here must be some articulated reasoning with some rational
`
`underpinning to support the legal conclusion of obviousness.”).
`
`For example, in Personal Web Technologies v. Apple, the Federal Circuit
`
`found that the Board’s reasoning that a skilled artisan “would have understood that
`
`the combination [of references] would have allowed for [the claimed combination]”
`
`was insufficient to establish the legal conclusion of obviousness. 848 F.3d 987, 993-
`
`94 (Fed. Cir. 2017) (emphasis in original). Rather, the court emphasized that the
`
`requirement is not whether one “could have” combined references, but instead
`
`requires a reasoning of why those two references would be selected and combined
`
`in the manner specifically claimed. See also id. at 994 (“[T]he Board nowhere clearly
`
`explained, or cited evidence showing, how the combination of the two references
`
`was supposed to work.”) (emphasis in original).
`
`Rather, to reach a legal conclusion of obviousness under §103, the Board must
`
`find a teaching or motivation in the prior art to assemble the claimed invention as a
`
`whole. Stratoflex, 713 F.2d at 1536-37. The Supreme Court stated that in cases
`
`involving more than the simple substitution of one known element for another, or
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`Case No. IPR 2017-02108
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`the mere application of a known technique to a piece of prior art ready for the
`
`improvement, it is necessary to “determine whether there was an apparent reason to
`
`combine the known elements in the fashion claimed by the patent at issue.” KSR,
`
`550 U.S. at 417-18 (emphasis added). The Court noted that “[t]o facilitate review,
`
`this analysis should be made explicit.” Id. at 418. In this case, the claimed invention
`
`as a whole is directed to capturing real-time video with zooming capability and
`
`scanning high-resolution still images of documents using the same apparatus by
`
`offloading the processing to a processor separate from the video camera, thereby
`
`simplifying, miniaturizing, and substantially lightening the camera stand without
`
`sacrificing resolution. See, e.g., ‘751 Patent, Title. Then the prior art must be
`
`rigorously analyzed to determine whether one or more specific combinations meets
`
`the claim construction. In this case, however, the Board provided vague, generalized
`
`combinations and did not mention its own claim construction in its obviousness
`
`analysis, leaving the specific basis for its legal conclusion unclear.
`
`To find a motivation to combine video camera prior art with the document
`
`imaging system of Morichika, the Board relied on an assessment of the advantages
`
`of such combinations, specifically with respect to live video preview for alignment
`
`and preparation of the target document, as exemplified by Gann. Final Decision at
`
`42-43; Ex. 1007, Fig. 5, Abstract, col. 8, ll. 58-60. As explained above, however,
`
`simply reciting advantages of a combination is not legally sufficient to show an
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`Case No. IPR 2017-02108
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`actual motivation to combine references. And although the system of Morichika (the
`
`primary reference) might be improved by providing live video feedback for purposes
`
`of aligning the document, no motivation to entirely replace the still image camera
`
`with a video camera and separate video processor is specifically taught or suggested.
`
`Moreover, a combined system that provides for live video feedback for purposes of
`
`aligning the document is still wholly different from capturing real-time video with
`
`zooming capability and scanning high-resolution still images of documents using the
`
`same apparatus, especially given the significant modifications necessary to
`
`accommodate the claimed video processing. Thus, the Board’s findings (based on
`
`Petitioner’s arguments from hindsight) are divorced from the specific context of the
`
`claims as presently construed by the Board. Petitioner’s arguments fail to appreciate
`
`the particular problem and its solution as claimed by Patent Owner.
`
`Furthermore, the inquiry under §103 is not simply whether a person of
`
`ordinary skill in the art at the time of the invention could overcome the challenges
`
`of integrating a particular substitution into a prior art system. In other words, it is
`
`not legally sufficient to simply allege that the level of skill of the ordinary
`
`practitioner in the applicable art at the pertinent time period was “high” (see Petition
`
`at 20-21; Petitioner’s Reply at 19-20) and that such person would have had
`
`experience capturing video with sufficient processing capability that the capturing
`
`could keep up with the incoming frame rate. See Decision at 43-44. Instead,
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`Case No. IPR 2017-02108
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`Petitioner must find a teaching or motivation in the prior art to assemble the claimed
`
`invention as a whole, in light of the Board’s construction. Stratoflex, 713 F.2d 1530.
`
`The fact finder must also be aware “of the distortion caused by hindsight bias and
`
`must be cautious of arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421
`
`(citing the warning in Graham, 383 U.S. at 36, against the “temptation to read into
`
`the prior art the teachings of the invention in issue”).
`
`Moreover, the Board applies a double standard in dealing with the evidence
`
`of record. As noted above, the Board’s adoption of Petitioner’s support is untethered
`
`from specifics of the claimed invention; resting on general uses of different
`
`components plucked from different references. Like Petitioner, the Board noted
`
`many different circuitry and software components in the prior art, but did not
`
`specifically correlate these to the claim construction in the context of the whole
`
`claim. Decision at 43, 46-52. Notably, the Board’s construction of “video stream
`
`comprising a series of frame images” never appears in the obviousness analysis, so
`
`the rationale behind the Board’s legal conclusion is absent. Conversely, Patent
`
`Owner’s expert testimony, disputing that one of ordinary skill would have been
`
`motivated to adapt the approach of Morichika to video input, is critiqued because a
`
`few, but not all, aspects thereof are not necessarily entailed by the claimed “video
`
`stream.” Id. at 13-14.
`
`
`
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`Case No. IPR 2017-02108
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`C. The Board’s Obvious Conclusion Is Premised on the Ability to
`Make the Proposed Morichika Adaptation, Not Whether a Skilled
`Artisan Would Have Been Motivated to Make the Morichika
`Adaptation
`The Board’s reasoning is deficient in its findings “that a person of ordinary
`
`skill would have been motivated to combine Morichika and Liang to use a video
`
`camera, such as is disclosed in Liang, with the high-resolution, off-loading
`
`processing approach of Morichika,” or “it would have been obvious, even in light of
`
`Morichika alone, given the level of ordinary skill in the art, to adapt Morichika to
`
`use a video camera.” Decision at 46. Particularly, the Board’s reasoning seems to
`
`say no more than that a person of ordinary skill, once presented with Liang’s video
`
`camera or video cameras in general, would have understood that Morichika could be
`
`modified. Yet, that it is not enough; it does not imply a motivation to pick out
`
`Morichika and substitute its still image camera with a video camera, nor to modify
`
`Morichika’s downstream circuitry to process video in such a way to achieve video
`
`zoom. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015)
`
`(“[O]bviousness concerns whether a skilled artisan not only could have made but
`
`would have been motivated to make the combinations or modification of prior art to
`
`arrive at the claimed invention.”) (emphasis added); InTouch Techs., Inc. v. VGO
`
`Communications, Inc., 751 F.3d 1327, 1352 (Fed. Cir. 2014). To the contrary, the
`
`evidence of record does not support that a person of ordinary skill would have been
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`Case No. IPR 2017-02108
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`motivated to combine Morichika and Liang to use a video camera or to similarly
`
`adapt Morichika per se.
`
`The Board contends that “there was ample motivation to use a video camera
`
`in [Liang, Gann, and Slater] to facilitate proper alignment and preparation of the
`
`target document or object during a presentation or prior to capturing a still image of
`
`the document.” Decision at 42. This is conclusory and irrelevant. Such a contention
`
`has nothing to do with why a person of ordinary skill would have been motivated to
`
`replace Morichika’s still image camera with a video camera and to make all the
`
`processor changes necessary to add video zooming to the system of Morichika. It
`
`only shows that video cameras existed and could be used for alignment and
`
`preparation of the target. See In re Kotzab, 217 F.3d 1365, 1371 (Fed. Cir. 2000)
`
`(explaining that a finding of obviousness “cannot be predicated on the mere
`
`identification in [the prior art] of individual components of claimed limitations”).
`
`The Board’s contention that “circuitry and software required to process video
`
`frame images in real time were readily available and well known to persons of
`
`ordinary skill in the art at the pertinent time period” is also irrelevant. Decision at
`
`43. This contention does not explain why a person of ordinary skill would have been
`
`motivated to replace Morichika’s camera with a video camera. See In re Ochiai, 71
`
`F.3d 1565, 1572 (Fed. Cir. 1995) (noting that reliance on per se rules of obviousness
`
`that eliminate the need for fact-specific analysis on claims and prior art is legally
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`Case No. IPR 2017-02108
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`incorrect). At best, it merely supports that general video processing circuitry and
`
`software was known, which is insufficient to support an obvious determination. See,
`
`e.g., Volkswagen Grp. of Am., Inc. v. Velocity Patent LLC, IPR2015-00276, Paper
`
`No. 8 at 10 (“An invention ‘composed of several elements is not proved obvious
`
`merely by demonstrating that each of its elements was, independently, known in the
`
`prior art.’”).
`
`Assuming that the Board is correct that “the level of skill of the ordinary
`
`practitioner in the applicable art at the pertinent time period was high,” this also does
`
`not support why such a person would have been motivated to replace Morichika’s
`
`camera with a video camera. Decision at 43. This contention goes to whether a
`
`skilled artisan could have adapted Morichika to use a video camera, not whether that
`
`person would have been motivated to adapt Morichika to use a video camera.
`
`Likewise, the Board’s conclusion that “a system using the approach of Morichika
`
`would be performing the same image processing (such as digital zoom) to each
`
`image in the series of frame images” goes to whether Morichika could have been
`
`adapted, not whether a skilled artisan would have adapted Morichika.
`
`The reliance on the ‘751 patent’s purported lack of “circuitry, software, or
`
`other disclosure of how to perform the video processing functionality that is
`
`claimed” merely demonstrates what may have been known or “that one of ordinary
`
`skill in the art would have been able to adapt Morichika to accommodate video
`
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`Case No. IPR 2017-02108
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`input.” Decision at 44. Again, what was known or “would have been able to adapt”
`
`does not support that a person would have been motivated to adapt Morichika to use
`
`a video camera. As noted above, the test is whether “a skilled artisan would have
`
`been motivated to make” the adaption, not whether the skilled artisan could have
`
`made or would have been able to do so. See Belden Inc., 805 F.3d at 1073.
`
`Furthermore, the Board’s reliance on the Lockwood and Epstein decisions are
`
`misplaced. See Decision at 44 (citing Lockwood v. Am. Airlines, Inc., 107 F.3d 1565
`
`(Fed. Cir. 1997) and In re Epstein, 32 F.3d 1559, 1568 (Fed. Cir. 1994)). Lockwood
`
`was concerned with whether a public-use bar applied if the public did not have
`
`access to the inner technical workings of the device in prior use, finding that there is
`
`no requirement for an enablement-type inquiry for issues of public use. Epstein was
`
`concerned with whether a prior art reference was an enabling disclosure, finding that
`
`it was enabled in view of the patent-at-issue’s own lack of specifics. Neither of these
`
`cases dealt with whether a skilled artisan would have been motivated to make an
`
`obvious adaptation of prior art.
`
`V. CONCLUSION
`
`Substitute claims 21-27 are patentable over Morichika, either taken alone or
`
`in combination with Liang, Gann, and Slatter. Accordingly, Patent Owner
`
`respectfully requests the Board to grant Patent Owner’s Motion to Amend with
`
`respect to substitute claims 21-27.
`
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`Dated: April 5, 2018
`
`
`
`
`
`Case No. IPR 2017-02108
`
`Respectfully Submitted,
`
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`/s/Trevor Q. Coddington, Ph.D.
`TREVOR Q. CODDINGTON, PH.D.
`PTO REG. NO. 46,633
`DONNY K. SAMPORNA
`PTO REG. NO. 76,604
`SAN DIEGO IP LAW GROUP LLP
`12526 High Bluff Drive, Suite 300
`San Diego, California 92130
`Telephone: (858) 792-3446
`Facsimile: (858) 408-4422
`Email: uspto@sandiegoiplaw.com
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`Counsel for Patent Owner,
`PATHWAY INNOVATIONS AND
`TECHNOLOGIES, INC.
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing PATENT OWNER’S
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`REQUEST FOR REHEARING FROM FINAL WRITTEN DECISION AND
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`DECISION ON MOTION TO AMEND was served on April 5, 2019, by filing
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`this document through the Patent Review Processing System as well as delivering a
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`copy via email directed to the attorneys of record for Petitioners:
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`K&L Gates LLP
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`Jackson Ho
`Jackson.ho@klgates.com
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`Benjamin Weed
`Benjamin.weed.ptab@klgates.com
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`Kevin McCormick
`Kevin.mccormick@klgates.com
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`Respectfully submitted,
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`/s/Trevor Q. Coddington, Ph.D.
`Trevor Q. Coddington, Ph.D.
`Registration No. 46,633
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