IN THE 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 IPR2014-00732
`U.S. Patent No. 8,106,748
`
`
`
`
`
`
`
`Before HOWARD B. BLANKENSHIP, MATTHEW R. CLEMENTS, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE TO
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Parrot S.A. and Parrot, Inc.
`
`Petitioners,
`
`v.
`
`Drone Technologies, Inc.
`
`Patent Owner
`
`
`
`
`
`
`
`
`
`Case IPR2014-00732
`U.S. Patent No. 8,106,748
`
`
`
`
`
`
`
`Before HOWARD B. BLANKENSHIP, MATTHEW R. CLEMENTS, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE TO
`PETITION FOR INTER PARTES REVIEW
`
`
`
`
`
`Case IPR2014-00732
`Petitioner’s Reply to Patent Owner’s Response to Petition
`
`TABLE OF CONTENTS
`
`A.
`
`Spirov teaches the use of a “configuration switch” ......................................... 1
`
`B.
`
`C.
`
`Bathiche and Shkolnikov are analogous art .................................................... 6
`
`Prof. D’Andrea’s testimony is consistent with the Board’s conclusions ........ 7
`
`D.
`
`Patent Owner’s Objections to Prof. D’Andrea’s Declaration is meritless ...... 7
`
`E.
`
`Conclusion ....................................................................................................... 8
`
`
`
`i
`
`
`
`Case IPR2014-00732
`Petitioner’s Reply to Patent Owner’s Response to Petition
`
`EXHIBIT LIST
`
`Exhibit #
`
`Reference Name
`
`Ex. 1001
`
`U.S. Patent No. 8,106,748 (“the ’748 Patent”)
`
`Ex. 1002
`
`U.S. Patent No. 5,043,646 (“Smith”)
`
`Ex. 1003
`
`French Patent No. 9901683 to Potiron
`
`Ex. 1004
`
`Certified Translation of French Patent No. 9901683
`(“Potiron”)
`
`Ex. 1005
`
`U.S. Pat. Pub. No. 2006/10144994 A1 (“Spirov”)
`
`Ex. 1006
`
`EXHIBIT INTENTIONALLY LEFT BLANK
`
`Ex. 1007
`
`U.S. Pat. No. 7,219,861 (“Barr”)
`
`Ex. 1008
`
`U.S. Pat. No. 6,751,529 (“Fouche”)
`
`Ex. 1009
`
`U.S. Pat. No. 7,145,551 (“Bathiche”)
`
`Ex. 1010
`
`U.S. Pat. Pub. No. 2004/0263479 (“Shkolnikov”)
`
`Ex. 1011
`
`Expert Declaration of Prof. Raffaello D’Andrea with
`Attachments A-C
`
`Ex. 1011, Att. A U.S. Patent No. 613,809 to Tesla (“Tesla”)
`
`Ex. 1011, Att. B U.S. Patent No. 3,101,569 to Giardina (“Giardina”)
`
`Ex. 1011, Att. C U.S. Patent No. 8,072,417 (“Jouanet”)
`
`Ex. 1012
`
`Claim Chart Demonstrating Invalidity of the ’748 Patent
`
`Ex. 1013
`
`Declaration of Deborah A. Skolaski
`
`Ex. 1014
`
`Declaration of James E. Hopenfeld
`
`Ex. 1015
`
`Declaration of Prof. Raffaello D’Andrea
`
`
`
`ii
`
`
`
`Case IPR2014-00732
`Petitioner’s Reply to Patent Owner’s Response
`
`In
`
`its Patent Owner Response (Paper 15, “POR”), Patent Owner
`
`mischaracterizes the primary reference, Spirov, fails to distinguish additional
`
`references Bathiche and Shkolnikov, and relies on meritless procedural objections
`
`to Prof. D’Andrea’s declaration supporting the obviousness of all claims of the
`
`’748 Patent. Patent Owner does not, however, overcome the prima facie case of
`
`invalidity already established by Petitioner and recognized by the Board in its
`
`Institution Decision. Therefore, Petitioner has met its burden in establishing that
`
`all challenged claims of the ’748 Patent are unpatentable in view of prior art and
`
`should be cancelled.
`
`A.
`
`Spirov teaches the use of a “configuration switch”
`
`Patent Owner does not dispute that all claims of the ’748 Patent require a
`
`“configuration switch” having three modes of operation. In its Petition, supported
`
`by the declaration of Prof. D’Andrea, Petitioner demonstrated that Spirov literally
`
`teaches every element of claims 1-5 and 10-12, with the exception of the
`
`“configuration switch.” Patent Owner does not dispute any of this. Petitioner
`
`further demonstrated, and the Board agreed, that Spirov inherently teaches a
`
`configuration switch having two modes of operation and, whether or not Spirov so
`
`teaches a two mode switch, it would have been obvious to combine Spirov with
`
`Bathiche and/or Shkolnikov to include a “three mode” switch. Paper 8, 10-11.
`
`1
`
`
`
`Case IPR2014-00732
`Petitioner’s Reply to Patent Owner’s Response
`
`Disregarding the alternative grounds for obviousness found by the Board,
`
`Patent Owner argues that Spirov does not teach any configuration switch, and that
`
`therefore Spirov cannot be combined with Bathiche and Shkolnikov. Of course, as
`
`the Board recognized, Spirov teaches a configuration switch. Even if, however,
`
`Spirov does not teach a “configuration switch,” Patent Owner’s argument does not
`
`overcome Petitioner’s demonstration of obviousness. The combination of Spirov,
`
`Bathiche, and/or Shkolnikov still would yield every element of claims 1-5 and 10-
`
`12. The suggestions to combine these references, explained in detail in the Petition
`
`and Prof. D’Andrea’s supporting declaration (Ex. 1011), apply just as well even if
`
`Spirov is assumed to lack a configuration switch.
`
`In its Institution Decision, the Board agreed with Petitioner. The Board
`
`found that the asserted claims1 are obvious whether or not Spirov discloses a mode
`
`switch. Paper 8, 11. The Board found that Bathiche teaches switch-selectable
`
`modes and that, accordingly, the “mode switch” feature is taught by the prior art.
`
`Paper 8, 9-10. It follows that the Board’s finding of obviousness can be sustained
`
`on an independent ground, not disputed by Patent Owner.
`
`Even assuming that whether Spirov teaches a two-mode switch somehow is
`
`required to combine the references for purposes of obviousness, the evidence
`
`
`
`1 The Board used an additional reference, Fouche, for purposes of claim 4.
`
`2
`
`
`
`Case IPR2014-00732
`Petitioner’s Reply to Patent Owner’s Response
`
`demonstrates that Spirov does in fact necessarily teach a two-mode switch. Patent
`
`Owner’s arguments to the contrary mischaracterize what is taught by Spirov.
`
`Patent Owner first argues that Spirov teaches only one mode of operation.
`
`POR, 5. In that mode or embodiment, the thumb-activated controller can be tilted
`
`to detect pitch and roll motions, while yaw is controlled by the thumb-controller.
`
`As Patent Owner reads Spirov, there is no teaching that the remote controller can
`
`also be used to detect the “yaw” motion. According to the Patent Owner, yaw
`
`detection is accomplished only on the remotely-controlled hovercraft, not on the
`
`remote controller, and Patent Owner further argues that all of Petitioner’s citations
`
`supporting yaw detection on the remote controller are directed to the hovercraft
`
`instead of the remote controller.
`
`Patent Owner is incorrect. Spirov explicitly describes the operation of the
`
`remote controller in paragraph 72. Ex. 1005, ¶ 72. It states that the remote
`
`controller includes a “homeostatic control system” that further includes an “XYZ
`
`sensor arrangement.” The hovercraft in Spirov includes the same “homestatic
`
`control system” including an “XYZ sensor arrangement.” Ex. 1005 ¶ 73.
`
`Paragraph 77 of Spirov then describes the “XYZ sensor” arrangement that is
`
`included in both the remote controller and the hovercraft. Paragraph 77 is not, as
`
`Patent Owner argues, limited to the homeostatic control system aboard the
`
`hovercraft. That would imply that the “homeostatic control systems” and the
`
`3
`
`
`
`Case IPR2014-00732
`Petitioner’s Reply to Patent Owner’s Response
`
`“XYZ sensor arrangements” are different in the remote controller and the
`
`hovercraft. There is no such teaching in Spirov. In describing the remote
`
`controller, paragraph 72 refers to the same “homeostatic control system” and
`
`“XYZ sensor arrangement” that is used in the hovercraft. Paragraph 77 expressly
`
`refers to the “XYZ sensor arrangement” in a “body,” and paragraph 72 expressly
`
`describes the remote controller as including a “body.”
`
`It also is clear that the “XYZ sensor arrangement” in Spirov includes yaw
`
`detection. Paragraph 77 states: “The Z axis sensor system is positioned in a Z
`
`plane of the body and includes at least one sensor that senses yaw in the Z plane.”
`
`Ex. 1005, ¶ 77. It necessarily follows that the remote controller senses yaw, as the
`
`remote controller is described as having a “body” that includes an “XYZ sensor
`
`arrangement.” Ex. 1005, ¶ 72.
`
`Patent Owner next turns to Figure 29 and Spirov ¶ 93 for the notion that
`
`Spirov teaches only one embodiment, and that embodiment includes only thumb-
`
`activated yaw control. POR, 8. The logic of this argument, if there is any, is not
`
`entirely clear. Patent Owner seems to be arguing that there is no sensed yaw
`
`control because the “tilt switch” transducers operate only in the XY plane. Patent
`
`Owner’s argument ignores, however, Fig. 29’s “yaw gyro,” which is indisputably
`
`part of Fig. 29’s “homeostatic control system,” which in turn is indisputably part of
`
`the remote controller. Indeed, Spirov paragraph 30 expressly states that the
`
`4
`
`
`
`Case IPR2014-00732
`Petitioner’s Reply to Patent Owner’s Response
`
`remotely controlled vehicle “mimic[s] the position of the controller in terms of
`
`yaw, pitch, roll, and lateral flight maneuvers.”
`
`Patent Owner’s argument is, therefore, flatly inconsistent with the express
`
`teaching of Spirov. Given Patent Owner’s concession of an embodiment in which
`
`yaw is controlled by manual manipulation of a joystick, there can be no reasonable
`
`dispute that Spirov teaches two modes of operation: one in which yaw is
`
`controlled manually, and another in which yaw in the remote controller is sensed
`
`by the “XYZ sensor arrangement.” Ex. 1005, ¶¶ 76 and 77.
`
`That leaves the issue of the existence of a switch between the two modes of
`
`operation. Patent Owner argues through its declarant, Prof. Sturges, that there is
`
`no such switch because the switch is not shown in the block diagrams of the
`
`control systems. But a switch need not be expressly disclosed in a block diagram
`
`in order to be understood by a person of ordinary skill in the art. The block
`
`diagram also does not show the hovercraft’s “on/off (power) switch,” but of course
`
`it must have such a switch.
`
`That Spirov must have a configuration switch follows from the fact that the
`
`two modes of operation taught in Spirov are implemented using the same remote
`
`controller (the “hand-held bee controller”) having a thumb-activated controller.
`
`Ex. 1005, ¶ 70; Ex. 1011, ¶ 77. A configuration switch must exist to allow the
`
`5
`
`
`
`Case IPR2014-00732
`Petitioner’s Reply to Patent Owner’s Response
`
`sensed yaw circuitry (Z-plane sensor) to override the thumb-controlled yaw
`
`operation, or vice-versa. Id.
`
`B.
`
`Bathiche and Shkolnikov are analogous art
`
`In its Institution Decision, the Board found that claims 1-3, 5, and 10-12 are
`
`obvious over Smith in view of Spirov, Bathiche, and Shkolnikov, and that claims 4
`
`and 6-9 are obvious in view of additional references. Patent Owner does not
`
`appear to dispute that claims 4 and 6-9 are obvious if the remaining claims are
`
`obvious.
`
`Instead, Patent Owner argues that Bathiche and Shkolnikov are not
`
`analogous art and that, as a result, all obviousness rejections should be withdrawn.
`
`Patent Owner’s argument is, in substance, identical to the argument it raised in its
`
`Patent Owner Preliminary Response (POPR). The Board already has addressed
`
`this argument in its Institution Decision, concluding that “Patent Owner’s
`
`arguments regarding non-analogous art are not supported by the facts in this
`
`record.” Paper 8, 10. To its previously rejected argument, Patent Owner adds that
`
`Petitioner’s expert, Prof. D’Andrea, had not heard of Bathiche or Shkolnikov prior
`
`to this case. That fact has, however, no relevance to the question of whether
`
`Bathiche or Shkolnikov are in fact analogous art. Patent Owner’s arguments,
`
`which notably are completely unsupported by any evidence, should be given no
`
`weight.
`
`6
`
`
`
`Case IPR2014-00732
`Petitioner’s Reply to Patent Owner’s Response
`
`C.
`
`Prof. D’Andrea’s testimony is consistent with the Board’s conclusions
`
`Prof. D’Andrea’s declaration explains, in detail, the basis for Petitioner’s
`
`assertion that all of the claims of the ’748 Patent are obvious in view of Spirov in
`
`combination with Spirov, Bathiche, and/or Shkolnikov, and other references for
`
`purposes of claims 4 and 6-9. In its decision to institute these proceedings, the
`
`Board agreed with Petitioner’s assertion. Paper 8, 12-13.
`
`Patent Owner now asks the Board to disregard Prof. D’Andrea’s declaration
`
`for a variety of reasons that have absolutely no bearing on the technical merits of
`
`his declaration, such as Prof. D’Andrea’s pay and the fact that he consulted with
`
`Petitioner’s counsel instead of Petitioner’s business or technical people. Being
`
`irrelevant to the questions before the Board, they do not merit serious discussion.
`
`The remaining arguments by Patent Owner are irrelevant to the question of
`
`unpatentability of the challenged claims in the ’748 Patent and do not rebut the
`
`overwhelming evidence that the claims ought to be canceled in view of the prior
`
`art as discussed in the Petition.
`
`D.
`
`Patent Owner’s Objections to Prof. D’Andrea’s Declaration is meritless
`
`Patent Owner objects to Prof. D’Andrea’s declaration on the baseless charge
`
`that he did not actually sign his declaration. Apart from the fact that Patent
`
`Owner’s allegation is demonstrably false, Patent Owner’s objection cannot be
`
`heard by this Board, because it was not timely made. 37 C.F.R. § 42.64(b)(1)
`
`7
`
`
`
`Case IPR2014-00732
`Petitioner’s Reply to Patent Owner’s Response
`
`(“Any objection to evidence submitted during a preliminary proceeding must be
`
`served within ten business days of the institution of the trial.”) Patent Owner first
`
`raised its Objection on January 22, 2015, but those Objections were required to be
`
`made by November 11, 2014. Id. To the extent Patent Owner’s arguments are the
`
`same as or similar to those made in opposition to Petitioner’s Motion to Correct
`
`Exhibit (Paper 14), those arguments fail for the same reasons explained in
`
`Petitioner’s Reply in support of that same motion (see Paper 17).
`
`E. Conclusion
`
`As discussed in the Petition, claims 1-12 of the ’748 Patent are unpatentable
`
`in view of the prior art and should, therefore, be cancelled.
`
`Dated: April 28, 2015
`
`Respectfully submitted,
`
`
`
`
`
`
`
`/James E. Hopenfeld/
`James E. Hopenfeld (Reg No. 47,661)
`Hopenfeld@oshaliang.com
`Tammy J. Terry (Reg No. 69,167)
`Terry@oshaliang.com
`OSHA LIANG LLP
`909 Fannin Street, Suite 3500
`Houston, Texas 77010
`Tel: 713-228-8600/Fax: 713-228-8778
`Counsel for Petitioner
`
`8
`
`
`
`Case IPR2014-00732
`Petitioner’s Reply to Patent Owner’s Response
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies service pursuant to 37 C.F.R. § 42.6 on the Patent
`
`Owner by email and U.S. Mail a copy of this Reply to Patent Owner’s Response to
`
`Petition for Inter Partes Review pursuant to 37 C.F.R. § 42.104(c) as follows:
`
`Gene Tabachnick
`James Dilmore
`gtabachnick@beckthomas.com
`jdilmore@beckthomas.com
`docket@beckthomas.com
`BECK & THOMAS, P.C.
`1575 McFarland Road, Suite 100
`Pittsburgh, PA 15216-1808
`
`Respectfully submitted,
`
`Dated: April 28, 2015
`
`/James E. Hopenfeld/
`James E. Hopenfeld (Reg No. 47,661)
`Hopenfeld@oshaliang.com
`Tammy J. Terry (Reg No. 69,167)
`Terry@oshaliang.com
`OSHA LIANG LLP
`909 Fannin Street, Suite 3500
`Houston, Texas 77010
`Tel: 713-228-8600/Fax: 713-228-8778
`Counsel for Petitioner
`
`
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
