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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ____________
`
`PARROT S.A. and PARROT, INC.
`Petitioners
`v.
`DRONE TECHNOLOGIES, INC.
`Patent Owner
`____________
`
`Case IPR2014-00730
`Patent 7,584,071
`____________
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 7,584,071
`CASE IPR2014-00730
`
`
`
` 
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`

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`Patent Owner’s Prel. Response for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
` 
`
`TABLE OF CONTENTS
`
`
`I.
`
`INTRODUCTION ................................................................................................................... 3
`A. Petitioners Filed This Petition in Order to Delay the District Court Proceedings ............... 3
`B. Petitioners Are Now Stuck With This Petition, and Its Inadequate Prior Art and
`Unsupported Arguments ............................................................................................................. 5
`1. Neither of Petitioners’ Primary References Discloses the Fundamental Claim Element 5
`2. Petitioners Misrepresent What the References Actually Disclose ................................... 6
`3. Petitioners’ Expert Admittedly Knows Nothing About the Relevant Legal Standards ... 8
`II. SUMMARY OF THE ‘071 PATENT ..................................................................................... 9
`III. CLAIM CONSTRUCTION ............................................................................................... 10
`A. Petitioners Fail to Properly Construe a Determinative Element ........................................ 10
`B. Neither Primary Reference Discloses “Detect[ing] the Remote Controller’s Motion” ..... 11
`IV. THE BOARD SHOULD DENY THE PETITION BECAUSE THE PROPOSED
`REJECTIONS ARE NOT LIKELY TO PREVAIL ..................................................................... 16
`A. Anticipation........................................................................................................................ 19
`1. Law of anticipation ......................................................................................................... 19
`2. Proposed anticipation rejections over Smith .................................................................. 19
`3. Proposed anticipation rejections over Potiron ................................................................ 21
`B. Proposed obviousness rejections ........................................................................................ 23
`1. Law of obviousness ........................................................................................................ 24
`2. Proposed obviousness rejections using Smith as the primary reference. ....................... 26
`3. Proposed obviousness rejections using Potiron as the primary reference ...................... 32
` CONCLUSION ................................................................................................................. 42
`V.
`VI. CERTIFICATE OF SERVICE .......................................................................................... 44
`
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`Patent Owner’s Prel. Response for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
` 
`I.
`
`INTRODUCTION
`
`Whether intended or not, one obvious effect of the AIA’s inter partes review
`
`(IPR) procedure (35 U.S.C. § 311, et. seq.) is that defendants in patent litigation
`
`are now routinely filing petitions in an attempt to stay the district court
`
`proceedings. This tactic is being employed by accused infringers, regardless of the
`
`strength or weakness of their invalidity arguments.
`
`This Petition is a perfect case in point. Petitioners rely on inadequate prior
`
`art, and assert conclusory and unsupported arguments. As a result, Petitioners fail
`
`to meet the requisite standard of “reasonable likelihood” of success. 35 U.S.C.
`
`§314(a)). After due consideration, this Honorable Board should deny all the
`
`grounds presented in this Petition.
`
`Petitioners Filed This Petition in Order to Delay the District Court
`Proceedings
`
`A.
`
` 
`
`Despite lacking adequate prior art and plausible arguments, Petitioners filed
`
`this Petition with one goal in mind – to delay the district court proceedings. Given
`
`Petitioners’ considerable financial resources, the cost of filing this Petition was
`
`inconsequential when compared to the costs of district court litigation and, most
`
`importantly, an adverse infringement determination. After all, a finding of
`
`infringement will have far-reaching impacts on Petitioners, including:
`
`(1) substantial monetary damages (due to the high volume of infringing sales),
`
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`Patent Owner’s Prel. Response for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
` 
`(2) the risk of a potential business-ending injunction, and (3) the lasting stigma of
`
`being branded an “infringer” in a market that rewards “innovators.”
`
`Delay has been Petitioners’ strategy from the start. Petitioners became
`
`aware of the infringement allegations in September, 2012. ECF No. 18 at 2.1 For
`
`more than a year, Petitioners offered various excuses and promised to negotiate a
`
`settlement in good faith. When that did not happen, Patent Owner was forced to
`
`file suit on January 24, 2014. ECF No. 1. True to their delay-at-all-costs approach,
`
`Petitioners sought extensions of time to answer the Complaint. ECF No. 9.
`
`Of course, that was all a ruse, as Petitioners used the extensions it requested
`
`from Patent Owner to secretly prepare two petitions for inter partes review, one for
`
`each of the two patents asserted against them in the district court litigation. On
`
`May 6, 2014, Petitioners filed both Petitions (Cases IPR2014-00730 and IPR2014-
`
`00732).
`
`The very next day, on May 7, 2014, Petitioners finally answered the
`
`Complaint, ECF No. 16, and concurrently filed a Motion to Stay the district court
`
`proceedings. ECF No. 17. However, Petitioners’ plans were thwarted less than
`
`two weeks later when, on May 19, 2014, the district court denied their motion to
`
`stay. ECF No. 29.
`
`                                                            
`1 References to “ECF No. __” refer to documents filed in related pending
`litigation, Drone Techs., Inc. v. Parrot S.A., No. 2:14-cv-111 (W.D. Pa.).
`4 
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`Patent Owner’s Prel. Response for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
` 
`B.
`
`Petitioners Are Now Stuck With This Petition, and Its Inadequate Prior
`Art and Unsupported Arguments
`
` 
`
`In their haste to file their Petition and stay the district court proceedings,
`
`Petitioners neglected to make plausible arguments that would satisfy this
`
`Honorable Board that a review should be instituted. Instead, their Petition is
`
`replete with material misstatements, conclusory arguments, and misdirection.
`
`Petitioners are now saddled with this Petition, as filed, and its inadequate prior art
`
`and unsupported arguments.
`
`1.
`
`Neither of Petitioners’ Primary References Discloses the
`Fundamental Claim Element
`
`For example, Petitioners cite Smith [Ex. 1002] as a primary reference,
`
`asserting that it is “[a]n early example of a sensed-motion control device.” Pet. at
`
`9. Smith, however does not disclose “a sensed-motion control device” in any way,
`
`shape, or form. What Smith discloses, and what Petitioners cite, is using the
`
`Earth’s magnetic North as a reference to determine the angle at which a remote
`
`controller is pointing. Pet. at 18-26; Smith, col. 6, ll. 29-35 [Ex. 1002].
`
`Smith determines the Earth’s magnetic North (Smith, col. 3, ll. 51-60 [Ex.
`
`1002]), but that is not what is required by the claims of the ‘071 Patent. Rather,
`
`independent claim 1 (the only independent claim) fundamentally requires “a
`
`motion detecting module, which detects the remote controller’s motion.” ‘071
`
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`Patent Owner’s Prel. Response for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
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`Patent, col. 7, ll. 65-67 [Ex. 1001]. Smith is limited to using magnetic North to
`
`determine a remote controller’s orientation with respect to magnetic North; Smith
`
`discloses nothing at all about detecting a remote controller’s motion. See Section
`
`III, infra.
`
`Similarly, Petitioners rely on Potiron. [Exs. 1003, 1004]. Like Smith,
`
`Potiron also discloses using the Earth’s magnetic North as a reference to determine
`
`the angle at which a remote controller is pointing. Pet. at 41-45; Potiron, p. 4, ll.
`
`11-15 [Ex. 1004]. Like Smith, Potiron discloses nothing about a fundamental
`
`claim element, i.e., “detecting the remote controller’s motion,” as required by the
`
`claims of the ‘071 Patent. ‘071 Patent, col. 7, ll. 65-67 [Ex. 1001].
`
`Neither of Petitioners’ two primary references (Smith and Potiron) discloses
`
`this fundamental claim element. That is fatal to the Petition. Yet these are just two
`
`examples of the Petition’s many glaring deficiencies.
`
`2.
`
`Petitioners Misrepresent What the References Actually Disclose
`
`With regard to the references, Petitioners make bold representations that are
`
`demonstrably false. For example, Petitioners state that “[t]he Potiron patent
`
`expressly discusses combining Smith’s control system with other vehicles, such as
`
`motor vehicles and agricultural machines. Potiron (Ex. 1004) at 7:10-11.” Pet. at
`
`52 (emphasis added). Despite Petitioners’ representation, Potiron makes
`
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`Patent Owner’s Prel. Response for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
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`absolutely no reference to Smith, let alone the “express” discussion promised by
`
`Petitioners. It is not there; it does not exist. It was all made up by Petitioners in an
`
`attempt to convince this Honorable Board that there was a teaching to combine the
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`two references. There is none.
`
`Petitioners’ recklessness is not limited to their legal argument; Petitioners’
`
`paid expert joins in as well. At page 44 (¶ 133) of his declaration [Ex. 1010],
`
`Petitioners’ expert parrots, verbatim, the same demonstrably false statement: “[t]he
`
`Potiron patent expressly discusses combining Smith’s control system with other
`
`vehicles, such as motor vehicles and agricultural machines. Potiron (Ex. 1004) at
`
`7:10-11.” Expert’s Dec., p. 44, ¶ 133 [Ex. 1010] (emphasis added).
`
`Petitioners’ expert also repeated, verbatim, the mischaracterization of the
`
`Smith reference: “An early example of a sensed-motion controlled device is
`
`described in U.S. patent no. 5,043,646 (“Smith”, Pet. Ex. 1002).” Cf. Expert’s
`
`Dec., p. 14, ¶ 48 [Ex. 1010] with Pet. at 9. One would expect that an expert,
`
`proffered for his supposed objective, technical expertise, would be more careful.
`
`However, it is just the opposite. In numerous instances, the expert declaration
`
`simply regurgitates the legal argument found in the body of the Petition in an
`
`attempt to cloak their lawyer argument in some form technical legitimacy.
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`Patent Owner’s Prel. Response for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
` 
`3.
`
`Petitioners’ Expert Admittedly Knows Nothing About the
`Relevant Legal Standards
`
`Moreover, Petitioners’ expert concedes that he knows nothing about the
`
`relevant legal standards or how to apply them. Under the heading, “Legal
`
`Standards For Patentability” (Pet. at 3), Petitioners’ expert confesses that he is
`
`“relying upon certain basic legal principles that [Petitioners’] counsel explained to
`
`me.” Id. For the next 32 paragraphs (¶¶ 10-41), he expounds upon the legal
`
`principles he intends to apply (e.g., definition of prior art, anticipation, etc.). In
`
`virtually every paragraph, and more than 30 times, Petitioners’ expert repeatedly
`
`qualifies each stated principle or legal standard as his “understanding,” presumably
`
`based on the “basic legal principles that counsel explained to me.” Id. at 3-11.
`
`Petitioners’ expert does not “understand” the legal principles he purports to
`
`apply. Instead, he simply incorporates Petitioners’ lawyer argument into his
`
`declaration, without concern as to whether it is legally (or even factually) accurate.
`
`This “expert” declaration (Ex. 1010) fails to support the Petition.
`
`In Section IV, infra, Patent Owner describes reference-by-reference,
`
`argument-by-argument, why this Petition should properly be denied. Patent Owner
`
`respectfully requests that this Honorable Board deny all the grounds presented in
`
`this Petition.
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`Patent Owner’s Prel. Response for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
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`II.
`
`SUMMARY OF THE ‘071 PATENT
`
`The claimed invention is entitled “Remote-Controlled Motion Apparatus
`
`with Sensing Terrestrial Magnetism and Remote Control Apparatus Therefor.”
`
`The ‘071 Patent relates to remote control systems comprising a remote controller
`
`and a remote-controlled device, such as a remote-controlled hobby airplane or
`
`helicopter. The ‘071 Patent relates to remote control systems that utilize
`
`magnetometers to control movement of the remote-controlled device based on the
`
`movement of the remote controller.
`
`For example, Petitioners’ accused products in the pending related litigation
`
`are hobby drones that are controlled using a smartphone or tablet with a piloting
`
`application downloaded onto it as a remote controller. The accused drones utilize
`
`the magnetometers and accelerometers in the smartphone or tablet to allow piloting
`
`of the drone based on the smartphone or tablet’s movement, such that a drone pilot
`
`may steer the drone by tilting the smartphone or tablet, e.g., side-to-side and front-
`
`to-back.
`
`Claim 1 is the only independent claim of the ‘071 Patent. Of particular
`
`relevance to the present Petition is the limitation of claim 1 of “a motion detecting
`
`module, which detects the remote controller’s motion and outputs a motion
`
`detecting signal.”
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`Patent Owner’s Prel. Response for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
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`III. CLAIM CONSTRUCTION
`A.
`Petitioners Fail to Properly Construe a Determinative Element
`
`At pages 15-18, Petitioners presented only two phrases to be construed, one
`
`from dependent claim 4 and the other from dependent claim 13. What is most
`
`striking about that decision is that Petitioners simply avoided any discussion of the
`
`fundamental claim element that is missing from their primary references, Smith
`
`and Potiron. That determinative element appears in independent claim 1 (and, by
`
`incorporation, each challenged claim), as the first element of the remote controller:
`
`“a motion detecting module, which detects the remote controller’s motion.” ‘071
`
`Patent, col. 7, ll. 65-66 [Ex. 1001].
`
`Perhaps Petitioners did not proffer the construction for “detect[ing] the
`
`remote controller’s motion” because they believed that no construction was
`
`required, i.e., the plain and ordinary meaning is easily discerned. If that were
`
`Petitioners’ position, Patent Owner would agree. It seems highly unlikely,
`
`however, that Petitioners hold that view because Petitioners argue (incorrectly) that
`
`detecting “orientation” with respect to magnetic North and “pointing direction”
`
`with respect to magnetic North mean the same things as the claimed “detect[ing]
`
`the remote controller’s motion.” Pet. at 18. Clearly, they do not mean the same
`
`thing and that, by itself, demonstrates that Smith and Potiron—Petitioners’ primary
`
`references—are insufficient to invalidate the claims.
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`Patent Owner’s Prel. Response for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
` 
`
`To illustrate, at page 18, Petitioners argue Smith’s remote controller and
`
`hobby vehicle include magnetometers “to sense the motion (change in orientation)
`
`of both the remote and the vehicle in one or more dimensions.” Pet. at 18
`
`(emphasis added). Without explanation or support, Petitioners conclude that
`
`“detecting the remote controller’s motion” is the same as determining “change in
`
`orientation” (which it is not). Notably, Petitioners offer no supporting citations to
`
`the ‘071 Patent, to their expert declaration, or to any other evidence. Instead,
`
`Petitioners present only unsupported lawyer argument.
`
`B. Neither Primary Reference Discloses “Detect[ing] the Remote
`Controller’s Motion”
`
`An objective review of Smith and Potiron reveals why Petitioners
`
`improperly conclude that “orientation” (in Smith) and “pointing direction” (in
`
`Potiron) is the same as “detect[ing] the remote controller’s motion.” As set forth
`
`below, Petitioners rely on Smith (claims 1 through 5, 10 through 14) and Potiron
`
`(claims 1-3, 5, and 10-13) as proposed anticipatory references, and as the primary
`
`references in its proposed obviousness rejections of the remaining claims. Pet. at
`
`18-26, 41-45.
`
`Smith and Potiron both disclose determining orientation or, as the translation
`
`of Potiron puts it so descriptively, “pointing direction,” in relation to magnetic
`
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`Patent Owner’s Prel. Response for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
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`North. Potiron, p. 2, ll. 4-15 [Ex. 1004]. Neither reference, however, discloses
`
`“detect[ing] the remote controller’s motion.”
`
`Potiron and Smith both disclose the use of a remote control to wirelessly
`
`direct a remote controlled vehicle – for Smith, a hobby vehicle, and for Potiron, a
`
`full-sized boat. Smith and Potiron incorporate magnetic compasses in both the
`
`remote controlled vehicle and the remote controller to determine orientation with
`
`respect to magnetic North. Neither reference, however, is “detect[ing] the remote
`
`controller’s motion.”
`
`As Petitioners admit, Potiron uses a magnetic compass to determine the
`
`remote controller’s “orientation as an angle from due north . . .” Pet. at 41. This
`
`measurement is shown as θP,N on Figure 2 in Potiron and it allows Potiron’s system
`
`to calculate the “pointing direction” (P) of the remote controller. See Potiron, p. 4,
`
`ll. 11-15 [Ex. 1004] and Figure 2:
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`Patent Owner’s Prel. Response for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
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`
`
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`Notably, neither θP,N nor the pointing direction (P) includes “detect[ing] the remote
`
`controller’s motion,” or any component thereof. Rather, the information conveyed
`
`in Potiron does not indicate motion at all. It is only an angle, representing the
`
`direction the remote controller is pointing. As such, the orientation of a remote
`
`controller under Potiron may be determined regardless of whether the remote
`
`controller is in motion or stationary.
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`Patent Owner’s Prel. Response for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
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`
`Similarly, Smith uses information about an angular distance from magnetic
`
`North, as measured by an electronic compass, to control a hobby truck. Smith, col.
`
`3, ll. 51-60 [Ex. 1002]. The object of Smith is to make the control of the hobby
`
`truck more intuitive. Id., col. 1, l. 65 – col. 2, l. 2.
`
`For example, prior to Smith, when a hobby truck was travelling radially
`
`away from the user, the user would send a “turn left” instruction by moving a
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`joystick to the left, and the hobby truck to turn to the left. However, when the
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`hobby truck was travelling radially towards the user, the same “turn left”
`
`instruction would cause the hobby truck to turn to the right as it approached the
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`user (i.e., the left based on the truck’s orientation towards the user).
`
`The hobby truck interpreted instructions from its own frame of reference; a
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`“turn left” instruction meant the hobby truck turned left, regardless of whether the
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`instruction came from a remote control physically in front of, or behind, the hobby
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`truck. Smith addressed this problem by providing the instructions with reference
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`to magnetic North, so that instructions were interpreted in an absolute, and not
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`relative, reference frame. Id., col. 2, ll. 16-21. Using Smith’s control, a “turn left”
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`instruction from the user would be interpreted by the user to be a left turn with
`
`regards to the orientation (or “pointing direction”) of the user, with both the
`
`orientation/pointing direction of the “turn left” instruction and the remotely
`
`controlled vehicle using magnetic North as a common reference.
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`Patent Owner’s Prel. Response for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
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`In this way, both Potiron and Smith detect the angle of the remote controller
`
`relative to magnetic North, and transmit that angle information to the remotely
`
`controlled hobby truck. Of course, using magnetic North as a reference to transmit
`
`an angle (as disclosed by Smith and Potiron) is different from “detect[ing] the
`
`remote controller’s motion” as required by each of the claims of the ‘071 Patent.
`
`To illustrate the difference, consider the situation where a remote controller
`
`of Smith or Potiron was “in motion,” i.e., moving. For this example, assume the
`
`remote controller is in motion directly north (i.e., along the line of magnetic
`
`North). If the user is walking with the remote control along the line of magnetic
`
`North, the remote control is moving (with the user) but it is not changing its
`
`orientation with respect to magnetic North. As disclosed in Smith and Potiron,
`
`there would be no change in the orientation/pointing direction signal, even though
`
`the remote controller was in motion.
`
`Alternatively, each claim of the ‘071 Patent requires “a motion detecting
`
`module, which detects the remote controller’s motion.” ‘071 Patent, col. 7, lines
`
`65-66 [Ex. 1001]. The example above clearly illustrates that determining the
`
`orientation/pointing direction of the remote control with respect to magnetic North
`
`(as disclosed in Smith or Potiron) is not the same as “detect[ing] the remote
`
`controller’s motion.” Neither Smith nor Potiron disclose “detect[ing] the remote
`
`controller’s motion,” or anything like it. Instead, they only determine the remote
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`Patent Owner’s Prel. Response for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
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`control’s “orientation” with respect to magnetic North (the term used in Smith) or
`
`“pointing direction” with respect to magnetic North (the term used in Potiron).
`
`These are very different things and highlight the fundamental inadequacy of the art
`
`that Petitioners rely upon.
`
`Patent Owner urges this Honorable Board to reject Petitioners’ inadequate
`
`prior art, and to deny all the grounds presented in the Petition.
`
`IV. THE BOARD SHOULD DENY THE PETITION BECAUSE THE
`PROPOSED REJECTIONS ARE NOT LIKELY TO PREVAIL
`As summarized in the following table, Petitioners propose anticipation
`
`rejections for some claims (i.e., claims 1-5, 10-14) [Pet. at 18-28 (citing Smith)]
`
`and claims 1-3, 5, 10-13) [Pet. at 41-47 (citing Potiron)], and obviousness
`
`rejections for the remaining claims [Pet. at 28-41 (citing Smith as the primary
`
`reference) and 47-59 (citing Potiron as the primary reference)].
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`Patent Owner’s Prel. Response for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
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`
`Claim §102(b) Grounds for Challenge
`1
`Smith; Potiron
`
`
`
`
`Smith
`
`Smith; Potiron
`
`Smith
`
`Smith; Potiron
`
`
`
`
`
`
`
`Smith; Potiron
`
`Smith; Potiron
`Smith; Potiron
`Smith; Potiron
`
`Smith
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`
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`9
`
`10
`
`11
`12
`13
`
`14
`
`15
`
`
`
`
`
`§103(a) Grounds for Challenge
`
`Smith (plus knowledge);
`Potiron (plus knowledge)
`
`Smith (plus knowledge);
`Potiron in view of Fouche
`
`Smith in view of Barr;
`Potiron in view of Barr
`Smith in view of Barr;
`Potiron in view of Barr
`Smith in view of Fouche;
`Potiron in view of Fouche
`Smith in view of Fouche;
`Potiron in view of Fouche
`Smith (plus knowledge);
`Potiron (plus knowledge)
`
`
`
`Potiron in view of Smith, Spirov,
`Bathiche, or Shkolnikov
`Smith in view of Spirov and/or
`Bathiche and/or Shkolnikov;
` Potiron in view of Spirov and/or
`Bathiche and/or Shkolnikov
`
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`Patent Owner’s Prel. Response for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
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`
`As illustrated in the table, Petitioners’ proposed anticipation rejections rely
`
`exclusively on the Smith and Potiron references. If this Honorable Board agrees
`
`that those two references do not disclose “detect[ing] the remote controller’s
`
`motion,” then it should decline to institute trial as to claims 1, 3, 5, and 11-13.
`
`This is because Petitioners proposed only anticipation rejections for claims 1, 3, 5,
`
`and 11-13, and did not propose obviousness as an alternative basis. See Pet. at 18-
`
`59.
`
`Moreover, Smith and Potiron are the two primary references asserted in
`
`Petitioners’ proposed obviousness rejections. Petitioners cite no other prior art for
`
`the claim element, “a motion detecting module, which detects the remote
`
`controller’s motion.” ‘071 Patent, col. 7, ll. 65-66 [Ex. 1001]. If this Honorable
`
`Board agrees that neither Smith nor Potiron disclose “detect[ing] the remote
`
`controller’s motion,” then it should decline to institute trial as to all claims since
`
`there is no other prior art cited by Petitioners for that claim element.
`
`To aid the Board in its evaluation of the proposed rejections, Patent Owner
`
`will discuss all proposed anticipation rejections first, followed by all proposed
`
`obviousness rejections. Through this analysis, the proposed rejections will be
`
`shown to be insufficient to render the claims unpatentable.
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`18 
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`Patent Owner’s Prel. Response for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
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`A. Anticipation
`1.
`Law of anticipation
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`A reference anticipates a patent claim under 35 U.S.C. § 102 if the “prior art
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`reference disclose[s] every limitation of the claimed invention, either explicitly or
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`inherently.” Liebel-Flarsheim Co. v. Medrad, Inc., 481 F.3d 1371, 1381 (Fed. Cir.
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`2007); see also Schering Corp. v. Geneva Pharm., 339 F.3d 1373, 1377 (Fed. Cir.
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`2003) (“[A] prior art reference may anticipate without disclosing a feature of the
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`claimed invention if that missing characteristic is necessarily present, or inherent,
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`in the single anticipating reference.”) (Emphasis added.)
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`Petitioners rely on inherency. An inherent characteristic is one that must
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`always be present in the allegedly anticipating reference. “Inherency, however,
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`may not be established by probabilities or possibilities. The mere fact that a
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`certain thing may result from a given set of circumstances is not sufficient.” In re
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`Oelrich, 666 F.2d 578, 581 (CCPA 1981).
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`2.
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`Proposed anticipation rejections over Smith
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`Petitioners propose anticipation rejections of claims 1-5, and 10-14 based on
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`Smith. Petitioners allege that Smith discloses the requisite “motion detecting
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`module, which detects the remote controller’s motion.” Pet. at 18-20. It does not.
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`As discussed in Section III above, Smith does not disclose “a motion detecting
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`module, which detects the remote controller’s motion.” Instead, Smith only
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`19 
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`Patent Owner’s Prel. Response for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
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`determines the “orientation” of the remote control with respect to magnetic North.
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`Indeed, Petitioners cite only to Smith’s calculation of sine and cosine values (from
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`angle deviation from magnetic North) as support for the claimed element of motion
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`detecting module. Pet. at 20. Nowhere do Petitioners explain how Smith
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`purportedly “detects the remote controller’s motion.” This is fatal to the proposed
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`anticipation rejections based on Smith. See Zetec, Inc. v. Westinghouse Elec. Co,
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`LLC, IPR2014-00384, Paper 10 at 8 (declining to institute an IPR for anticipation
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`rejections based on “underdeveloped arguments”).
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`To prevail, the Petitioners’ proposed rejection must establish that each and
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`every claim element of the allegedly invalid claims is present in the cited
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`reference. Liebel-Flarsheim, 481 F.3d at 1381. As discussed in Section III above,
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`Smith lacks a “motion detecting module, which measures the motion of the remote
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`controller” as recited in claim 1 (and each claim, by reference). Accordingly,
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`Smith is insufficient to support the Petitioners’ proposed anticipation rejection of
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`claims 1-5 and 10-14.
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`Petitioners also propose anticipation rejections of claims 2, 4, and 10 as
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`inherently anticipated by Smith, to the extent that they are not literally anticipated
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`by Smith. Pet. at 26-28. These proposed rejections suffer from the same deficiency
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`as the literal anticipation arguments, i.e., Smith does not disclose “a motion
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`20 
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`Patent Owner’s Prel. Response for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
` 
`detecting module, which detects the remote controller’s motion.” On this basis, the
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`proposed rejections must fail.
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`3.
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`Proposed anticipation rejections over Potiron
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`Petitioners also propose anticipation rejections of claims 1-3, 5, and 10-13
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`based on Potiron. The Petitioners allege that Potiron discloses the requisite
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`“motion detecting module, which detects the remote controller’s motion.” Pet. at
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`41. It does not.
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`As discussed above in Section III, Potiron does not disclose a motion
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`detecting module, which detects the remote controller’s motion. Instead, Potiron
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`only determines the “pointing direction” of the remote controller with respect to
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`magnetic North. Indeed, Petitioners cite only to Potiron’s calculation of a
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`“pointing direction” as support for the requisite motion-detecting-module element.
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`Id. at 42. Nowhere do Petitioners explain how Potiron purportedly “detects the
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`remote controller’s motion.” This is fatal to the proposed anticipation rejection.
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`See Zetec, IPR2014-00384, Paper 10 at 8 (declining to institute an IPR for
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`anticipation rejections based on “underdeveloped arguments”).
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`To prevail, the Petitioners’ proposed rejection must establish that each and
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`every claim element of the allegedly invalid claims is disclosed in the cited
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`reference. Liebel-Flarsheim, 481 F.3d at 1381. As discussed above in Section III,
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`21 
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`Patent Owner’s Prel. Response for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
` 
`Potiron lacks a “motion detecting module that measures the motion of the remote
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`controller” as recited in claim 1 (and each claim, by reference). Accordingly,
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`Potiron is insufficient to support Petitioners’ proposed anticipation rejection of
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`claims 1-3, 5, and 10-13.
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`Petitioners also propose anticipation rejections of claims 2 and 10 as
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`inherently anticipated by Potiron, to the extent that they are not literally anticipated
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`by Potiron. Pet. at 45-46. These proposed rejections suffer from the same
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`deficiency as the literal anticipation arguments, i.e., Potiron does not disclose “a
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`motion detecting module, which detects the remote controller’s motion.” For this
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`reason alone, the proposed rejections must fail.
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`Regardless, Petitioners argue that the “comparison” limitation of claim 2 and
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`the conversion to “baseband” limitation of claim 10 are inherently present in
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`Potiron. Petitioners’ arguments are insufficient to support a legal finding of
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`inherency. Petitioners allege only that the “comparison” limitation of claim 2 is a
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`“simple, standard technique[],” not that it must occur every time in Potiron. Pet. at
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`47. Similarly, Petitioners’ argument that conversion to baseband (per claim 10) is
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`the “only practical way for radio communication to occur” is merely a probability
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`or possibility that communication occurs that way in Potiron. Id.
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`22 
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`Patent Owner’s Prel. Response for Inter Partes Review of U.S. Patent No. 7,584,071
`Case IPR2014-00730
` 
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`Inherent anticipation requires that the allegedly inherent characteristic must
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`always be present in the allegedly anticipating reference. Inherency “may not be
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`established by probabilities or possibilities.” Oelrich, 666 F.2d at 581. These
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`proposals are insufficient to support a legal finding of inherent anticipation. See
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`Zetec, IPR 2014-00384, Paper 10 at 10 (refusing to institute review on the basis of
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`a proposed inherent anticipation rejection where there was not “sufficient
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`explanation and evidence why such a feature necessarily would be present”). For
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`this additional reason, the proposed rejections