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 REQUEST FOR REHEARING OF
`THIS BOARD’S FINAL WRITTEN DECISION [37 CFR § 42.71(d)(2)]
`
`
`
`
`
`
`
`
`____________
`
`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 REQUEST FOR REHEARING OF
`THIS BOARD’S FINAL WRITTEN DECISION [37 CFR § 42.71(d)(2)]
`
`
`
`
`
`
`
`
`
`Patent Owner’s Request for Rehearing
`Case IPR2014-00730
`
`EXHIBIT LIST
`
`Description
`
`Exhibit No.
`U.S. Patent 7,584,071
`1001
`U.S. Patent 5,043,646 (“Smith”)
`1002
`French Patent No. 2789765
`1003
`Certified Translation of French Patent No. 2789765
`1004
`U.S. Patent No. 7,219,861 (“Barr”)
`1005
`U.S. Patent No. 6,751,529 (“Fouche”)
`1006
`U.S. Publication No. 2006/0144994 (“Spirov”)
`1007
`U.S. Patent No. 7,145,551 (“Bathiche”)
`1008
`U.S. Publication No. 2004/263479 (“Shkolnikov”)
`1009
`Declaration of Raffaello D’Andrea (Attachments A-C)
`1010
`1010, Att. A U.S. Patent No. 613,809 (“Tesla”)
`1010, Att. B U.S. Patent No. 3,101,569 (“Giardina”)
`1010, Att. C U.S. Patent No. 8,072,417 (“Jouanet”)
`1010
`Corrected Declaration of Dr. Raffaello D’Andrea
`(corrected)
`1011
`1012
`1013
`1014
`1015
`2001
`
`2002
`
`2003
`2004
`2005
`2006
`2007
`2008
`2009
`2010
`
`2
`
`Date Filed
`5/6/2014
`5/6/2014
`5/6/2014
`5/6/2014
`5/6/2014
`5/6/2014
`5/6/2014
`5/6/2014
`5/6/2014
`5/6/2014
`5/6/2014
`5/6/2014
`5/6/2014
`2/9/2015
`
`5/6/2014
`2/9/2015
`2/9/2015
`6/10/2015
`6/10/2015
`Not filed
`
`Not filed
`
`Claim Chart
`Declaration of Deborah Skolaski
`Declaration of James Hopenfeld
`Declaration of Prof. Raffaello D’Andrea
`Prof. D’Andrea Deposition Transcript (Jan. 8, 2015)
`D’Andrea Deposition Exhibit – Declaration Signature
`Page, ‘071
`D’Andrea Deposition Exhibit – Appendix A, Materials
`Considered by Dr. Raffaello D’Andrea
`Not filed
`D’Andrea Deposition Exhibit – Smith Patent
`Not filed
`D’Andrea Deposition Exhibit – Potiron Patent, French
`D’Andrea Deposition Exhibit – Translations Certification Not filed
`D’Andrea Deposition Exhibit – Declaration, ‘071
`Not filed
`D’Andrea Deposition Exhibit – Lee Patent, ‘071
`Not filed
`D’Andrea Deposition Exhibit – Bathiche Patent
`Not filed
`D’Andrea Deposition Exhibit – Declaration, ‘748
`Not filed
`D’Andrea Deposition Exhibit – Parrot Exhibits 1011 and
`Not filed
`1010
`
`
`
`Patent Owner’s Request for Rehearing
`Case IPR2014-00730
`
`Exhibit No.
`2011
`2012
`2013
`2014
`2015
`2016
`2017
`2018
`
`Description
`D’Andrea Deposition Exhibit – Lee Patent, ‘748
`Transcript of Dr. Raffaello D’Andrea Deposition
`Declaration of Robert Sturges
`Declaration of Jay Smith, III
`Definition for term “motion”
`Mot. to Correct & Decls. from IPR 2014/00732
`Memorandum Order from District Court Proceeding
`Email from Dr. Raffaello D’Andrea to James Hopenfeld
`dated April 30, 2014 from IPR 2014/00732
`
`Date Filed
`Not filed
`2/11/2015
`2/11/2015
`2/11/2015
`2/11/2015
`2/16/2015
`6/17/2015
`6/17/2015
`
`3
`
`
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`Patent Owner’s Request for Rehearing
`Case IPR2014-00730
`
`It is clear from the Final Written Decision (Paper No. 27) that this
`
`Honorable Board misapprehended the determinative difference between what is
`
`disclosed in the Smith reference (Ex. 1002) and what is claimed in the challenged
`
`patent, U.S. Patent No. 7,584,071 (“the ‘071 Patent,” Ex. 1001). Specifically, this
`
`Honorable Board misinterpreted Patent Owner’s analysis of Smith to be a
`
`characterization of the claimed invention. Below, Patent Owner explains how the
`
`Board misapprehended that argument, and how it resulted in the Board incorrectly
`
`finding claims 1-3 and 5-14 to be unpatentable.
`
`Pursuant to 37 C.F.R. § 42.71(d)(2), Patent Owner respectfully requests
`
`rehearing of this Honorable Board’s Final Written Decision.
`
`I.
`
`THE BOARD’S CONSTRUCTION OF “MOTION” REQUIRES
`SMITH TO DETERMINE CHANGES IN ORIENTATION TO
`ANTICIPATE
`
`Claim 1 requires that a motion detecting module “detect[] the remote
`
`controller’s motion.” This Honorable Board determined that, under the broadest
`
`reasonable interpretation, “determining a change in orientation” is within the scope
`
`of the claimed “detect[ing] the remote controller’s motion.” Paper No. 8 at 7; Paper
`
`No. 27 at 13.1 Using this construction, the Board held that claims 1-3 and 5-14 of
`
`the ‘071 Patent are unpatentable as anticipated by Smith.
`
`1 While Patent Owner does not agree with that construction, the arguments
`presented in the response and here demonstrate that under this construction,
`Smith cannot anticipate any of the claims of the ‘071 Patent.
`
`4
`
`
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`Patent Owner’s Request for Rehearing
`Case IPR2014-00730
`
`It is undisputed that Smith discloses a remote controller that sends only
`
`single, discrete direction control signals, and then only when the drive switch and
`
`the joystick are activated simultaneously:
`
`The direction control signal is sent from the remote controller only
`when both the drive switch and the joystick are activated
`simultaneously. Smith Patent at col. 5, lines 14-17 and col. 5, lines
`37-40.
`
`Ex. 2014 (Smith Dec.), ¶ 15 (emphasis added). Petitioners’ expert, Dr. D’Andrea,
`
`agreed. Ex. 2012, 306:24-307:7.
`
`Further, Smith discloses determining only the instantaneous orientation of
`
`the remote controller at the time it sent the direction control signal:
`
`In my Patent, we were only concerned with the orientation of the
`joystick with respect to magnetic North in generating the direction
`control signal. We accomplished this by determining the direction
`that the joystick is pressed with respect to the remote controller and
`the instantaneous orientation of the remote controller with respect
`to magnetic North.
`
`Ex. 2014, ¶ 14 (emphasis added).
`
`
`Since the remote controller in Smith only sends discrete and instantaneous
`
`determinations of orientation, and does not retain them, it cannot detect motion
`
`which, as construed by the Board, requires determining changes in orientation.
`
`Thus, the only way Smith could determine changes in orientation is by comparing
`
`the remote controller’s orientation at two points in time. Petitioner’s expert Dr.
`
`D’Andrea recognized this fact and conceded that to determine a change in a
`
`5
`
`
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`Patent Owner’s Request for Rehearing
`Case IPR2014-00730
`
`variable (e.g., orientation) requires knowledge of the previous value of the
`
`variable. Ex. 2012 (D’Andrea Depo.), p. 274, l. 23 – p. 275, l. 2.
`
`As detailed in Patent Owner’s response (Paper No. 15, at 5-9), Smith does
`
`not undertake this comparison and cannot accomplish it. As such, Smith does not
`
`disclose a system in which the remote controller’s motion is determined, and,
`
`accordingly, cannot anticipate claims 1-3 and 5-14 of the ‘071 Patent.
`
`II. THE BOARD MISAPPREHENDS PATENT OWNER’S ARGUMENT
`REGARDING SMITH
`
`The Board apparently misapprehended the important distinction that Patent
`
`Owner was making regarding Smith. At no point did Patent Owner suggest that
`
`motion in the ‘071 Patent required storing or retaining a previous orientation for
`
`comparison with a present orientation. The analysis of storing or retaining the
`
`remote controller’s orientation presented in Patent Owner’s response applied
`
`specifically and only to Smith because Smith sends only single, discrete direction
`
`control signals, and those signals (when sent) contain only the instantaneous
`
`orientation of the remote controller at the time it sent the direction control signal.
`
`This became clear when, in its Final Written Decision, the Board mistakenly
`
`criticized Patent Owner for not providing support in the ‘071 Patent for its
`
`storing/retaining argument regarding Smith, stating that:
`
`6
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`
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`Patent Owner’s Request for Rehearing
`Case IPR2014-00730
`
`Patent Owner does not, however, address how the supposed
`requirement of storing a previous orientation for comparison with
`the current orientation is consistent with the disclosure of the ’071
`patent. In particular, Patent Owner does not address the portion of
`the ’071 patent, reproduced in § II.A.1 supra, that describes and
`provides support for “detect[ing] the remote controller’s motion” as
`claimed.
`
`Doc. No. 27, at 12 (emphasis added). See also id. at 13 (“Patent Owner has not
`
`pointed to any disclosure in the ’071 patent of the remote controller storing a
`
`previous orientation for comparison with a present orientation to effect ‘detect[ing]
`
`the remote controller’s motion’ as claimed.”).
`
`The Board’s observation that Patent Owner does not cite to support in the
`
`‘071 Patent for the supposed requirement of storing a previous orientation for
`
`comparison in Smith is misplaced. Patent Owner does not have the burden of
`
`providing support in the challenged patent for Petitioner’s strained interpretation of
`
`an anticipatory reference. The requirement for storing a previous orientation for
`
`comparison arises from the Board’s construction (“changes in orientation”) and Dr.
`
`D’Andrea’s definition of “change” as those concepts are applied to Smith.
`
`III. CONCLUSION
`
`The claims of the ‘071 Patent cannot be anticipated by Smith because the
`
`remote controller in Smith discloses sending only discrete signals, having only
`
`instantaneous orientation, that are never used to determine “motion” as required in
`
`7
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`
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`Patent Owner’s Request for Rehearing
`Case IPR2014-00730
`
`the claims of the ‘071 Patent. Accordingly, Patent Owner respectfully requests
`
`that this Honorable Board grant Patent Owner’s request for rehearing and withdraw
`
`its conclusion that claims 1-3 and 5-14 are unpatentable.
`
`
`
`While the Patent Owner believes that no fee is due, the Patent Owner
`
`authorizes the Board to charge any deficiencies in fees and credit any overpayment
`
`of fees to deposit account no. # 502395/2664.
`
`
`
`The Patent Owner consents to electronic service of process and receipt of
`
`any other correspondence when sent to all of these email addresses:
`
`gtabachnick@beckthomas.com;
`
`jdilmore@beckthomas.com; and
`
`docket@beckthomas.com
`
`
`
`Respectfully submitted,
`
`/Gene A. Tabachnick/
`
`Gene Tabachnick; Reg. No. 33,801
`James Dilmore; Reg. No. 51,618
`BECK & THOMAS, P.C.
`Pittsburgh, PA 15216-1808
`(412) 343-9700
`
`
`
`Date of Deposit: November 19, 2015
`
`
`
`8
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`
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`Patent Owner’s Request for Rehearing
`Case IPR2014-00730
`
`IV. CERTIFICATE OF SERVICE
`
`
`
`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on
`
`November 19, 2015, a copy of the foregoing document was served by email upon
`
`the following:
`
`James E. Hopenfeld (hopenfeld@oshaliang.com)
`Tammy J. Terry (terry@oshaliang.com)
`
`
`
`and via FedEx:
`
`James E. Hopenfeld
`Tammy J. Terry
`Osha Liang LLP
`909 Fannin Street, Suite 3500
`Houston, Texas 77010
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Gene A. Tabachnick/
`
`
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`
`9
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