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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________________________
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`
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`Halliburton Energy Services, Inc.,
`Petitioner
`
`v.
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`The United States of America
`represented by the Secretary of
`the Navy,
`Patent Owner
`
`U.S. Patent No. 7,030,971
`
`__________________________________
`
`Inter Partes Review Case No. IPR2017-02109
`______________________________________
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`PATENT OWNER PRELIMINARY RESPONSE
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`TABLE OF CONTENTS
`
`Case IPR2017-02109
`Patent 7,030,971
`
`
`
`
`Introduction ...................................................................................................... 1
`
`I.
`II. Summary of Petitioner’s Bases for Requesting Institution of IPR: ................ 4
`III. Patent Owner’s and Licensee’s Preliminary Comments Regarding Petitioner’s
`Bases for Requesting Institution of IPR .......................................................... 4
`IV. Discussion ........................................................................................................ 6
`1.
`Petitioner’s Proposed Construction for “Light Source” Is Incorrect and
`Renders the Petition Insufficient ........................................................... 6
`
`2.
`
`3.
`
`Everard Fails to Provide an Enabling Disclosure of the Claimed
`Invention ................................................................................................ 8
`
`Kersey teaches away and does not provide an enabling disclosure .... 11
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`V. Conclusion ..................................................................................................... 14
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`I.
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`
`
`Introduction
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`Patent Owner, The United States of America represented by the Secretary of
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`the Navy, (“Patent Owner”) and licensee Adelos, Inc. (“Licensee”) (a Bayh-Dole
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`Licensee; see 35 U.S.C. § 207) represented by Lane Powell PC, respectfully submit
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`this Preliminary Response in accordance with 35 U.S.C. § 313 and 37 C.F.R. §
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`42.107. This Response responds to the Petition for inter partes review (the
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`“Petition”) filed by Halliburton Energy Services, Inc. (“Petitioner”) regarding claims
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`1-3, 6-16, and 18-22 of U.S. Patent No. 7,030,971 (“the ’971 Patent”). The Petition’s
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`grounds argue that certain claims of the ’971 Patent are anticipated by UK Patent
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`Application GB 2 190 186 to Everard (“Everard”) or rendered obvious by Everard
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`or US Patent No. 6,285,806 to Kersey (“Kersey”).
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`The ’971 Patent is a pioneering patent to a sensor that uses the innate
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`properties of natural optical fiber to sense lightwave signals stemming at least in part
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`from the incidence of external physical signals such as acoustic pressure waves on
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`the natural optical fiber. The claimed invention describes a time-domain
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`reflectometer that includes signal processing components that take advantage of the
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`“natural, or innate, properties of commercial grade optical fiber cables” of the fiber.
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`See, e.g., Ex. 1001, (the ’971 Patent) at 2:52-58; Claim 1 (at 34:9-13). The inventive
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`sensor’s ability to use natural fiber is an advantage over acoustic sensors that
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`required Bragg gratings to be irradiated into the optical fiber, resulting in fiber spans
`– 1 –
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`
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`
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`costing hundreds of thousands of dollars. See, e.g., ’971 Patent at 1:51-62; 2:9-15.
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`Instead of relying on fixed position fiber Bragg gratings, the invention allows for
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`sensors to be established at a continuum of positions along the length of the natural
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`fiber. See, e.g., ’971 Patent at claim 1 (at 34:9-25), claim 21 (at 37:22-24), claim 22
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`(at 38:12-17); 11:35-58; Fig. 2 (reproduced below).
`
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`In fact, the different structure and operation of sensors using natural
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`commercial grade optical fibers, as opposed to fibers irradiated to form Bragg
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`gratings, distinguishes the claimed invention from Petitioner’s Kersey reference.
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`And because Kersey represented the conventional understanding of those in the art
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`at the time, Kersey actually reinforces the innovative nature of the ’971 Patent.
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`Moreover, the specificity provided by the disclosure and claims of the ’971 Patent
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`stand in stark contrast to the thin disclosure of Petitioner’s Everard reference, which
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`fails to provide an enabling description of the features claimed in the ’971 Patent.
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`– 2 –
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`For the reasons detailed herein, it is respectfully submitted that the Board
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`should decline to institute inter partes review of the requested claims of U.S. Patent
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`No. 7,030,971. By statute, the Board must decide whether to institute review based
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`on “the information presented in the petition” while also determining whether to
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`“reject the petition or request because, the same or substantially the same prior art
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`or arguments previously were presented to the Office.” 35 U.S.C. §§ 314(a), 325(d).
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`In particular, the Petition should be denied because it:
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`(1) Improperly relies on a proposed construction of the term “light source” that
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`is inconsistent with the intrinsic evidence;
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`(2) Improperly relies on Everard despite its lack of an enabling disclosure of
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`features expressly recited in the challenged claims of the ’971 Patent; and
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`(3) Improperly relies on Kersey despite its express teaching away from the
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`claimed invention and the lack of providing a disclosure (much less an
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`enabling disclosure) of features expressly recited in the challenged claims
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`of the ’971 Patent.
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`– 3 –
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`
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`II.
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`Summary of Petitioner’s Bases for Requesting Institution of IPR:
`• Everard anticipates claims 1-3, 6, 12, 14, 15, and 18-22, and renders them
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`unpatentable (Ground 1);
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`• Everard, either alone or in combination with additional cited reference(s),
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`renders claims 7-11, 13, and 16 unpatentable as being obvious in view of the
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`cited reference(s), with Everard serving as the primary reference to which are
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`added modifications (Grounds 2-7); and
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`• Kersey, in combination with additional the cited reference(s), renders claims
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`1-3, 6-10, 11, 12, 13, 14, 15, 16, and 18-22 unpatentable as being obvious in
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`view of the reference(s), with Kersey serving as the primary reference to
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`which are added modifications (Grounds 8-12).
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`III. Patent Owner’s and Licensee’s Preliminary Comments Regarding
`Petitioner’s Bases for Requesting Institution of IPR
`• Everard fails to provide sufficient information to enable the claimed invention
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`(i.e., to provide a person having ordinary skill in the art, referred to as a
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`PHOSITA with a sufficient breadth and depth of information to permit them
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`to implement a working embodiment of the claimed invention without having
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`to go
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`through what would be considered an “undue” amount of
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`experimentation). And because of this dearth of relevant disclosure, Everard
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`– 4 –
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`
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`would not have logically commended itself to a PHOSITA’s attention in
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`considering the problem addressed by the claimed invention;
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`• Kersey was considered by the Examiner during the prosecution of the
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`application that resulted in the ’971 Patent and was not found by the Examiner
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`to render the claimed invention unpatentable (either alone or in combination
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`with other references), and to thereby prevent the issuance of the ’971 Patent
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`- Petitioner has failed to articulate any reasons why the Examiner’s
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`understanding of Kersey was incorrect and why Kersey should now be
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`considered as posing a challenge to the validity of the ’971 Patent;
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`• Kersey teaches away from what a PHOSITA would consider relevant, as it is
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`based on a technology (Bragg gratings) that is specifically referenced as being
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`undesirable by the ’971 Patent, and one whose disadvantages the claimed
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`invention was intended to overcome. Kersey also fails to disclose the claimed
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`invention or provide sufficient information to “enable” the claimed invention
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`(i.e., to provide a PHOSITA with a sufficient breadth and depth of information
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`to permit them to implement a working embodiment of the claimed invention
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`without having to go through what would be considered an “undue” amount
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`of experimentation), since Kersey is directed to a system that uses Bragg
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`gratings to generate return signals instead of generating return signals as a
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`– 5 –
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`
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`result of Rayleigh scattering from a natural fiber. As a result, a person having
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`ordinary skill in the art (PHOSITA) would not have considered Kersey
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`reasonably pertinent to the problem solved by the claimed invention; and
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`• Challenged claims 1-20 each recite a “light source” (specifically, independent
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`claim 1 directly recites this element and dependent claims 2-20 incorporate it
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`by their dependence on claim 1). But Petitioner’s Proposed Claim
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`Construction for the Claim Term “light source” is demonstrably incorrect.
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`Indeed, petitioner proposes two inconsistent interpretations of the claim term.
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`And this incorrect construction demonstrates Petitioner’s attempt to extend
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`the teaching of Everard and/or Kersey beyond what those references teach or
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`enable.
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`IV. Discussion
`1.
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`Petitioner’s Proposed Construction for “Light Source” Is
`Incorrect and Renders the Petition Insufficient
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`
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`Petitioner proposes that the claim term “light source” be interpreted under the
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`“broadest reasonable interpretation” standard as “one or more components that
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`generate electromagnetic radiation in wavelengths from near ultraviolet to mid-
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`infrared.” Petition at 13 (emphasis added). Petitioner also states that “[t]he
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`specification describes an embodiment that uses laser 3 as the ‘first light source’ and
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`laser 45 as the ‘second light source.’” However, the Petition goes on to describe an
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`– 6 –
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`alternative embodiment in which a “‘Bragg cell’ connected to laser 3 is substituted
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`for the laser 45 to form the ‘second light source’ by frequency shifting the lightwave
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`from the laser 3.” Id.
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`Petitioner’s proposed claim construction should not be adopted, as its
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`arguments are internally inconsistent: on one hand, Petitioner adopts a first
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`construction in which a source of light “generates” radiation; on the other, Petitioner
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`adopts a conflicting second construction in which a Bragg cell is used to produce a
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`second source of light from a first source of light, yet would still be a “light source.”
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`Hence, Petitioner offers two interpretations: a first in which light is generated, and a
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`second in which light is produced by altering the output of a source that generates
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`light. As the use of a Bragg cell for the second light source does not involve a source
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`that “generates” radiation, these interpretations are inconsistent and Petitioner’s
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`proposed construction is ambiguous and should not be adopted.
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`
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`Furthermore, according to the ’971 Patent, the second light source is used to
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`produce the “beat” signal, and its wavelength has a specific relationship to the
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`wavelength of the first light source. See, e.g., ’971 Patent, Claim 1 (at 34:29-42).
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`Neither Everard nor Kersey generates such a beat signal for purposes of detecting
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`positions along the fiber. Therefore, Petitioner’s proposed claim construction
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`attempts to extend the teachings of Everard and Kersey beyond what those
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`references teach or enable, so as to make the reference or references appear closer to
`– 7 –
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`the claims of the ’971 Patent than they actually are. Having failed to apply any other
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`construction, or explain how the petitioned claims are anticipated or rendered
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`obvious under any other construction, Petitioner has failed to meet its burden to
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`demonstrate invalidity.
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`2.
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`Everard Fails to Provide an Enabling Disclosure of the Claimed
`Invention
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`For a publication to be considered prior art to anticipate the claims of an issued
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`patent, the publication must provide an enabling disclosure. In re Donohue, 766 F.2d
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`531 (Fed. Cir. 1985); In re Antor Media Corp., 689 F.3d 1282, 1289-90 (Fed. Cir.
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`2012); see also, MPEP 2121.01. Enablement is determined by the requirement that
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`the prior art reference teach a skilled artisan—at the time of filing—to make or carry
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`out what it discloses in relation to the claimed invention without undue
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`experimentation.1
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`1 A reference contains an enabling disclosure if the public was in possession of the
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`claimed invention before the date of invention. “Such possession is effected if one
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`of ordinary skill in the art could have combined the publication’s description of the
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`invention with his [or her] own knowledge to make the claimed invention.” In re
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`Donohue, 766 F.2d 531, 533 (Fed. Cir. 1985). Enablement of prior art requires that
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`the reference teach a skilled artisan—at the time of filing—to make or carry out what
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`– 8 –
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`Everard does not provide an enabling disclosure of either (a) the selection of
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`the input signals needed and how to determine a specific location along the fiber
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`optic cable of a return signal or modified return signal that is altered or generated by
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`a change to the properties of the cable, or (b) the selection of the wavelength of the
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`claimed second light source. First, Everard fails to provide an enabling disclosure
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`of how a PHOSITA would process the various input and/or output signals to
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`determine at what location (or locations) a change occurred to the optical path length
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`of the fiber optic cable. Indeed, the claimed invention requires specific timing
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`relationships between the input signal(s) and the correlators/demodulators in order
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`to associate the detected return signal(s) with a specific location along the cable, and
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`these specific timing relationships need to be disclosed and properly described to
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`provide an enabling disclosure.
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`
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`Specifically, Everard fails to adequately describe how to implement the signal
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`processing functions that would operate as recited in the claims of the ’971 Patent.
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`For example, Everard does not operate so as to enable the claim 1 limitation
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`requiring “a set of correlation-type binary pseudo noise code sequence demodulators
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`[serving] to conjunctively temporally and spatially de-multiplex said r.f. composite
`
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`it discloses in relation to the claimed invention without undue experimentation. In
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`re Antor Media Corp., 689 F.3d 1282, 1289-90 (Fed. Cir. 2012); MPEP 2121.01.
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`
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`– 9 –
`
`
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`difference beat signal to provide at their respective outputs r.f. counterparts of the
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`subcomponents of
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`said
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`second
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`signal component of
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`said composite
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`back-propagating light wave signal caused by changes in the optical path within said
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`optical fiber span induced by external physical signals respectively coupled to the
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`corresponding sensing positions”. See Claim 1 of the ’971 Patent (at 34:58-67).
`
`
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`Everard also fails to provide an enabling disclosure of how a PHOSITA would
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`select the wavelength of the second source so that it satisfies the desired
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`relationship(s). Specifically, the claims of the ’971 Patent also recite:
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`“a second light source, …, said local oscillator signal being of a second
`predetermined wavelength which differs from the first predetermined
`wavelength by an amount of difference small enough to produce at the
`output of the heterodyner a radio frequency (r.f.) composite difference
`beat signal, but by an amount large enough to cause said r.f. composite
`difference beat signal to have sufficient bandwidth to cause it to include
`r.f. counterparts of signal components and subcomponents of said
`composite back propagating lightwave signal”
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`see ’971 Patent at claim 1 (at 34:29-43). With regards to this element, Everard fails
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`to disclose with sufficient specificity (i.e., without the necessity of undue
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`experimentation or calculation) how the wavelength of the second source is selected.
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`
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`Patent Owner and Licensee submit that for one or more of the reasons
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`discussed herein, Everard fails to provide an enabling disclosure of the claimed
`
`
`
`– 10 –
`
`
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`invention; a PHOSITA would require an undue amount of experimentation or
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`additional calculations to determine the required information. As a result, Everard
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`does not qualify as prior art that may be considered by an Examiner and cannot form
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`the basis for an attempt to anticipate claims of the ’971 Patent. And because of this
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`dearth of relevant disclosure, Everard would not have logically commended itself to
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`a PHOSITA’s attention in considering the problem addressed by the claimed
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`invention.
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`3. Kersey Teaches Away and Does Not Provide An Enabling
`Disclosure
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`Kersey relies on fiber Bragg gratings and therefore teaches away from the
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`claimed invention and fails to provide an enabling disclosure. Specifically, Kersey
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`describes using a fiber optic cable with internal features that function as fiber Bragg
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`gratings in order to perform the detection of events along the cable at specific
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`locations. See Kersey at, e.g., Title and Abstract, Fig. 2 and at 3:28-4:58. Thus,
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`Kersey describes solving a technical problem using Bragg gratings as part of the
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`solution. However, Bragg gratings are a specific type of feature that is created as
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`part of the fiber optic cable, and are undesirable for some uses, as disclosed in the
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`’971 Patent:
`
`[T]he cost of manufacturing such perimeter monitoring spans
`employing reflective Bragg grating sensors has been an obstacle to their
`use in perimeter intrusion monitoring applications. Thus, there is
`– 11 –
`
`
`
`
`
`considerable interest in the development of a reflectometer system in
`which a fiber span is the object of the reflectometry optic array that does
`not require the high cost of Bragg reflective acoustic sensors.
`
`’971 Patent at 2:9-15. Thus, although some conventional detection systems utilized
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`fiber optic cables containing Bragg gratings, the invention of the ’884 patent
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`obviates the necessity for Bragg gratings. Because Kersey is directed to a
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`technology (Bragg gratings) that is specifically mentioned as being undesirable to
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`use in the subject patent and is designed to be replaced by the claimed invention of
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`the ’971 Patent, Kersey teaches away from the elements of the claimed invention.
`
`
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`Kersey also fails to disclose the claimed invention or provide sufficient
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`information to enable the claimed invention, since Kersey is directed to a system
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`that uses Bragg gratings to generate return signals instead of generating return
`
`signals as a result of Rayleigh scattering from a natural fiber. Kersey does not
`
`disclose and would not enable, for example, the claim 1, 21, and 22 limitations
`
`reciting:
`
`a corresponding set of n correlation-type binary pseudonoise code
`sequence demodulators having their respective inputs connected to the
`corresponding output channels of said n-way splitter through a
`corresponding set of time delay circuits which respectively provide a
`corresponding set of predetermined time delays in relation to said
`predetermined timing base of the binary pseudonoise code sequence
`
`
`
`– 12 –
`
`
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`modulator, to establish said n desired sensing positions along said
`optical fiber span
`
`’971 Patent, Claim 1 (at 34:48-57) (emphasis added).
`
`
`means for retrieving back-propagating portions of the illumination back
`propagating from a continuum of locations along the span
`
`
`’971 Patent, Claim 21 (at 37:22-24) (emphasis added).
`
`
`network being operative to illuminate an optical fiber span with a CW
`optical signal and to retrieve portions of the illumination back-
`propagating from a continuum of locations along the fiber span
`
`’971 Patent, Claim 22 (at 38:13-17) (emphasis added). Rather, because Kersey is
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`directed to the use of fiber Bragg gratings, it would, at most, permit sensing at
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`specific positions (the locations of the Bragg gratings), and not at “n desired sensing
`
`positions” as contemplated by claims 1-20 of the petitioned claims, a “continuum of
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`locations along the span,” as contemplated by claim 21, or “a continuum of locations
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`along the fiber span,” as contemplated by claim 22.
`
`
`
`Moreover, Kersey was considered by the Examiner during the prosecution of
`
`the application that resulted in the ’971 Patent (see Exhibit 1002, File History for
`
`U.S. Patent No. 7,030,971, copy of IDS initialed by the Examiner, page 13 of PDF
`
`of file history) and was not found by the Examiner to render the claimed invention
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`unpatentable (either alone or in combination with other references), and to thereby
`– 13 –
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`
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`prevent the issuance of the ’971 Patent - Petitioner has failed to articulate any reasons
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`why the Examiner’s understanding of Kersey was incorrect and why Kersey should
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`now be considered as posing a challenge to the validity of the ’971 Patent.
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`
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`Therefore, all of Petitioner’s arguments that rely on Kersey as part of a
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`combination of references (specifically, Grounds 8-12 of the petition) should not be
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`considered in deciding whether to institute the IPR.
`
`V. Conclusion
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`
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`In view of the discussion and reasons presented herein, Patent Owner
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`respectfully submits that the Petition should be denied.
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`– 14 –
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`
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`Respectfully submitted,
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`January 5, 2018
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`January 5, 2018
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`
`
`United States Department of Justice
`
`CHAD A. READLER
`Acting Assistant Attorney General
`
`GARY L. HAUSKEN
`Reg. No. 34,178
`Director
`
`/Nicholas J. Kim/
`NICHOLAS J. KIM
`Reg. No. 57,344
`Trial Attorney
`
`Commercial Litigation Branch
`Civil Division
`U.S. Department of Justice
`Washington, D.C. 20530
`T: (202) 307-0342
`F: (202) 307-0345
`
`Attorneys for Patent Owner the United
`States, as represented by the Secretary
`of the Navy
`
`/Brian G. Bodine/
`Brian G. Bodine (Reg. No. 40520)
`
`/Alan D. Minsk/
`Alan D. Minsk (Reg. No. 35956)
`Lane Powell, PC
`1420 Fifth Avenue, Suite 4200
`Seattle, WA 98101-2375
`206.223.7406 / 206.223.7056
`
`Attorneys for Licensee Adelos, Inc.
`– 15 –
`
`
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`CERTIFICATION UNDER 37 C.F.R. § 42.24(d)
`
`
`
`Pursuant to 37 C.F.R. § 42.24(d), the undersigned hereby certifies that the
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`word count under § 42.24(a)(1) for the foregoing Patent Owner Preliminary
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`Response totals 2,911 words, which is within the 14,000-word limit allowed under
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`37 C.F.R. § 42.24(a)(1)(i).
`
`
`January 5, 2018
`
`
`
`
`
`
`
`United States Department of Justice
`
`CHAD A. READLER
`Acting Assistant Attorney General
`
`GARY L. HAUSKEN
`Reg. No. 34,178
`Director
`
`/Nicholas J. Kim/
`NICHOLAS J. KIM
`Reg. No. 57,344
`Trial Attorney
`
`Commercial Litigation Branch
`Civil Division
`U.S. Department of Justice
`Washington, D.C. 20530
`T: (202) 307-0342
`F: (202) 307-0345
`
`Attorneys for Patent Owner the United
`States, as represented by the Secretary
`of the Navy
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`In accordance with 37 C.F.R. §§42.6(e) and 42.105, the undersigned
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`certifies that on January 5, 2018, a complete and entire copy of the PATENT
`
`OWNER PRELIMINARY RESPONSE (“Response”) was sent via e-mail on the
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`Petitioner at the e-mail address of record:
`
`Michael Hawes
`michael.hawes@bakerbotts.com
`
`
`
`/Nicholas J. Kim/
`Nicholas J. Kim
`U.S. Department of Justice
`
`
`
`
`
`
`
`
`
`
`
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