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
`Patent 8,106,748
`____________
`
`
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,106,748
`CASE IPR2014-00732
`
`
`
`
`
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`

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`Patent Owner’s Prel. Response for Inter Partes Review of U.S. Patent No. 8,106,748
`Case IPR2014-00732
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`
`I.
`
`TABLE OF CONTENTS
`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 ........................................................................................4
`
`1.
`
`Petitioners’ Primary Reference Fails to Disclose a Fundamental Claim Element ....5
`
`2.
`
`Petitioners’ Expert Admittedly Knows Nothing About the Relevant Legal
`Standards ...............................................................................................................7
`
`II.
`
`III.
`
`A.
`
`B.
`
`C.
`
`SUMMARY OF THE ‘748 PATENT ....................................................................9
`
`THE BOARD SHOULD DENY THE PETITION BECAUSE THE PROPOSED
`REJECTIONS ARE NOT LIKELY TO PREVAIL.............................................. 10
`
`Law of Obviousness ............................................................................................ 10
`
`Spirov Fails as a Primary Reference .................................................................... 12
`
`1.
`
`Petitioners misinterpret Spirov ............................................................................. 12
`
`All Proposed Rejections Fail Because No Prima Facie Case of Obviousness Is
`Stated .................................................................................................................. 14
`
`D.
`
`Additional Reasons for Failure of the Proposed Rejections .................................. 14
`
`1.
`
`Proposed rejection of claims 1, 3, 5, 11, and 12. .................................................. 14
`
`2.
`
`Proposed rejection of claim 2............................................................................... 18
`
`3.
`
`Proposed rejection of claim 4............................................................................... 19
`
`4.
`
`Proposed rejection of claims 6 and 7 .................................................................... 19
`
`5.
`
`Proposed rejection of claims 8 and 9. ................................................................... 20
`
`6.
`
`Proposed rejection of claim 10. ............................................................................ 21
`
`CONCLUSION.................................................................................................... 21
`
`CERTIFICATE OF SERVICE ............................................................................. 23
`
`2
`
`IV.
`
`V.
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`
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`

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`Patent Owner’s Prel. Response for Inter Partes Review of U.S. Patent No. 8,106,748
`Case IPR2014-00732
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`
`INTRODUCTION
`
`
`
`I.
`
`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
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`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
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`strength or weakness of their invalidity arguments.
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`This Petition is a perfect case in point. Petitioners rely on inadequate prior
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`art, and assert conclusory and unsupported arguments. As a result, Petitioners fail
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`to meet the requisite standard of “reasonable likelihood” of success. 35 U.S.C. §
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`314(a). After due consideration, this Honorable Board should deny all the grounds
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`presented in this Petition.
`
`A.
`
`Petitioners Filed This Petition in Order to Delay the District Court
`Proceedings
`
`Despite lacking adequate prior art and plausible arguments, Petitioners filed
`
`this Petition with one goal in mind – to delay the district court proceedings. After
`
`numerous attempts to resolve the matter with Petitioners failed, Patent Owner was
`
`
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`3
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`Patent Owner’s Prel. Response for Inter Partes Review of U.S. Patent No. 8,106,748
`Case IPR2014-00732
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`forced to file suit on January 24, 2014. ECF No. 1.1 True to their delay-at-all-costs
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`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 to secretly
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`prepare two petitions for inter partes review, one for each of the two patents
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`asserted against them in the district court litigation. On May 6, 2014, Petitioners
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`filed both petitions (Cases IPR2014-00730 and IPR2014-00732). The very next
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`day, on May 7, 2014, Petitioners finally answered the Complaint, ECF No. 16, and
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`concurrently filed a Motion to Stay the district court proceedings. ECF No. 17.
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`Petitioners’ plans were thwarted less than two weeks later when, on May 19, 2014,
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`the district court denied their motion to stay. ECF No. 29.
`
`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, this Petition is replete
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`with material misstatements, conclusory arguments, and misdirection. Petitioners
`
`
`
`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.).
`
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`Patent Owner’s Prel. Response for Inter Partes Review of U.S. Patent No. 8,106,748
`Case IPR2014-00732
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`are now saddled with this Petition, as filed, and its inadequate prior art and
`
`unsupported arguments.
`
`
`
`1.
`
`Petitioners’ Primary Reference Fails to Disclose a Fundamental
`Claim Element
`
`Petitioners argue that all of the claims of the ‘748 Patent are invalid as
`
`obvious. Each proposed rejection is based upon Spirov [Ex. 1005] in view of
`
`Bathiche [Ex. 1009] and/or Shkolnikov [Ex. 1010], with additional secondary
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`references used in specific rejections. Pet. at 18-51.
`
`Petitioners acknowledge that Spirov does not disclose, either expressly or
`
`inherently, a “configuration switch module” to select among three configurations,
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`as recited by claim 1 of the ‘748 Patent. Id. at 20. Petitioners argue that that
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`limitation is obvious because Spirov allegedly discloses a remote control that
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`operates in two modes, which “necessarily” discloses a switch module to switch
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`between those modes. Id. at 19-20.
`
`Petitioners’ argument suffers from two foundational errors, readily apparent
`
`from a review of Spirov. First, Petitioners misinterpret Spirov. Petitioners (and
`
`their expert) cite to sections of Spirov (¶ 77) that describe the remotely controlled
`
`vehicle to support their interpretation of the remote controller’s operation. Pet. at
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`20. They also cite two different embodiments of Spirov’s remote controller to
`
`support their non-disclosed embodiment of a remote control having two modes.
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`Patent Owner’s Prel. Response for Inter Partes Review of U.S. Patent No. 8,106,748
`Case IPR2014-00732
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`Compare ¶ 87 (cited for the first mode; directed to embodiment shown in Fig. 3)
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`with ¶ 70 (cited for the second mode; directed to embodiment shown in Fig. 16)
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`Spirov [Ex. 1005]; see also id. at ¶ 82 (“FIGS. 1-3, an overall view of another
`
`embodiment of the present invention.”).
`
`Secondly, Petitioners misconstrue Spirov. At no point does Spirov disclose
`
`two modes of operation of its remote control. In fact, Spirov discloses only a
`
`single mode of operation for its remote control, regardless of the embodiment.
`
`To supplement their muddled arguments, Petitioners rely on Bathiche and/or
`
`Shkolnikov. The foundational error here is that one of skill in the art would never
`
`look to these references. They are not analogous art to the ‘748 Patent or Spirov.
`
`Bathiche discloses to a two-handed computer input device useful in video
`
`gaming. Bathiche, col. 1, lines 25-29 [Ex. 1009]. Shkolnikov discloses an active
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`keyboard system for handheld electronic devices. Shkolnikov, ¶3 [Ex. 1010].
`
`Neither reference discloses a remote control useful for wirelessly controlling a
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`vehicle. One of ordinary skill in the art would not consider them when addressing
`
`the problem confronting the inventor of the ‘748 Patent.
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`Petitioners’ proposed rejections are not grounded in the references or the
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`relevant prior art. Instead, they are based on hindsight and contrived combinations.
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`Patent Owner’s Prel. Response for Inter Partes Review of U.S. Patent No. 8,106,748
`Case IPR2014-00732
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`Petitioners fail to establish a reasonable likelihood of success and, as a result, the
`
`Petition should be denied on all grounds.
`
`
`
`2.
`
`Petitioners’ Expert Admittedly Knows Nothing About the
`Relevant Legal Standards
`
`Petitioners’ expert concedes that he knows nothing about the relevant legal
`
`standards or how to apply them. Under the heading, “Legal Standards For
`
`Patentability” (page 3), Petitioners’ expert confesses that he is “relying upon
`
`certain basic legal principles that [Petitioners’] counsel explained to me.” Ex.
`
`1011. For the next 27 paragraphs (¶¶ 10-36), he expounds upon the legal
`
`principles he intends to apply (e.g., definition of prior art, obviousness, etc.). In
`
`virtually every paragraph, and more than 25 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.
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`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.
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`This “expert” declaration (Ex. 1011) fails to support the Petition.
`
`At paragraph 35, Petitioners’ expert recognizes the role of objective indicia
`
`of non-obviousness but then immediately dismisses any consideration: “I am not
`
`aware of any objective factors supporting non-obviousness of any claim of the
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`Patent Owner’s Prel. Response for Inter Partes Review of U.S. Patent No. 8,106,748
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`‘748 Patent.” Dec., ¶ 36 [Ex. 1011]. That is particularly curious since Petitioners’
`
`have enjoyed remarkable commercial success, which is just one example of a
`
`relevant secondary consideration. See, e.g.¸
`
`2013 Earnings presentation at
`
`slide 29 (February 27, 2014) (available at
`
`http://www.parrotcorp.com/en/documents/q42013earningspresentationinvestorsday
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`), citing sales of 181,000 units in 2013 alone. Apparently Petitioners’ expert is not
`
`aware of the Federal Circuit precedent that mandates that objective indicia of non-
`
`obviousness must be considered. See, e.g., InTouch Techs., Inc. v. VGo Communs.,
`
`Inc., 751 F.3d 1327, 1347 (Fed. Cir. 2014) (explaining that an invalidity
`
`determination “must consider evidence showing objective indicia of
`
`nonobviousness, which constitute independent evidence of nonobviousness”)
`
`(emphasis added).
`
`Additionally, Petitioners’ expert repeatedly parrots the arguments presented
`
`in the Petition, sometimes whole, verbatim paragraphs at a time.2 The expert
`
`report is, in actuality, nothing more than lawyer argument cloaked in the guise of
`
`
`
`2
`
`The copying between the Petition and the expert report extends even to
`typographical errors. For example, on page 23 of the Petition, the phrase “a
`person or ordinary skill in the art” (emphasis added) is included in a
`paragraph citing to paragraph 81 of the expert report. Along with almost all
`of the substantive content of the Petition, the very same typographical error
`may be found of the expert report.
`
`
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`Patent Owner’s Prel. Response for Inter Partes Review of U.S. Patent No. 8,106,748
`Case IPR2014-00732
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`objective, technical analysis. As such, it should be given no weight in this Board’s
`
`consideration of the proposed rejections.
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`In Section III, infra, Patent Owner describes, reference-by-reference and
`
`argument-by-argument, why this Petition should properly be denied. Patent Owner
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`respectfully requests that this Honorable Board deny all the grounds presented in
`
`this Petition.
`
`
`II.
`
`SUMMARY OF THE ‘748 PATENT
`
`The claimed invention is entitled “Remote-Controlled Motion Apparatus
`
`with Acceleration Self-Sense and Remote Control Apparatus Therefor.” The ‘748
`
`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 ‘748 Patent relates to remote control systems that utilize accelerometers to
`
`control movement of the remote-controlled device based on the movement of the
`
`remote controller, e.g., side-to-side and front-to-back.
`
`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
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`the magnetometers and accelerometers in the smartphone or tablet to allow piloting
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`Patent Owner’s Prel. Response for Inter Partes Review of U.S. Patent No. 8,106,748
`Case IPR2014-00732
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`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.
`
`Claim 1 is the only independent claim of the ‘748 Patent. Of particular
`
`relevance to the present Petition is the limitation of claim 1 of “a configuration
`
`switch module to select between the first acceleration sensing module, the manual
`
`input module and the combination of the first acceleration sensing module and the
`
`manual input module as the input of the first communication module.”
`
` THE BOARD SHOULD DENY THE PETITION BECAUSE THE
`III.
`PROPOSED REJECTIONS ARE NOT LIKELY TO PREVAIL
`
`Petitioners propose only obviousness rejections for the claims of the ‘748
`
`Patent. As shown below, none of the proposed rejections is likely to prevail.
`
`A. Law of Obviousness
`
`A patent claim is invalid as obvious when “the differences between the
`
`subject matter sought to be patented and the prior art are such that the subject
`
`matter as a whole would have been obvious at the time the invention was made to a
`
`person having ordinary skill in the art to which said subject matter pertains.” 35
`
`U.S.C. § 103(a). “Under § 103, the scope and content of the prior art are to be
`
`determined; differences between the prior art and the claims at issue are to be
`
`ascertained; and the level of ordinary skill in the pertinent art resolved. Against
`
`this background the obviousness or nonobviousness of the subject matter is
`
`
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`determined.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting
`
`Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966)).
`
`The mere existence of the elements in various prior art references does not
`
`demonstrate that the combination of such elements is obvious. See KSR, 550 U.S.
`
`at 418 (stating “a patent composed of several elements is not proved obvious
`
`merely by demonstrating that each of its elements was, independently, known in
`
`the prior art”). Instead, “obviousness requires the additional showing that a person
`
`of ordinary skill at the time of the invention would have selected and combined
`
`those prior art elements in the normal course of research and development to yield
`
`the claimed invention.” Unigene Labs. v. Apotex, Inc., 655 F.3d 1352, 1361 (Fed.
`
`Cir. 2011) (citing KSR, 550 U.S. at 421).
`
`To be used in an obviousness rejection of a claim, a reference must be
`
`analogous to the claimed invention. This consideration assesses “whether the art is
`
`‘too remote to be considered prior art.’” In re Clay, 966 F.2d 656, 658 (Fed. Cir.
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`1992) (quoting In re Sovish, 769 F.2d 738, 721 (Fed. Cir. 1985)). This assessment
`
`requires the evaluation of two criteria: “(1) whether the art is from the same field
`
`of endeavor, regardless of the problem addressed, and (2) if the reference is not
`
`within the field of the inventor's endeavor, whether the reference still is reasonably
`
`pertinent to the particular problem with which the inventor is involved.” Id. at 659.
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`Patent Owner’s Prel. Response for Inter Partes Review of U.S. Patent No. 8,106,748
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`The doctrine of analogous art serves to limit the scope of obviousness, in
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`that “[t]he combination of elements from non-analogous sources, in a manner that
`
`reconstructs the applicant's invention only with the benefit of hindsight, is
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`insufficient to present a prima facie case of obviousness.” In re Oetiker, 977 F.2d
`
`1443, 1447 (Fed. Cir. 1992).
`
`B.
`
`Spirov Fails as a Primary Reference
`
`
`
`1.
`
`Petitioners misinterpret Spirov
`
`Petitioners make two points regarding Spirov. First, Petitioners argue that
`
`Spirov teaches all of the limitations of independent claim 1, excepting the
`
`configuration switch limitation. Pet. at 20. Second, Petitioners argue that “Spirov
`
`necessarily discloses a switch module [on the remote controller] to select between
`
`configurations.” Id.
`
`Petitioners’ second point rests entirely on their view that Spirov describes a
`
`remote controller that can be operated in two modes, or configurations. Id. It does
`
`not, and Petitioners’ cited evidence does not support that proposition.
`
`To be clear, the word “mode” does not even appear in Spirov. What
`
`Petitioners cite as “two configurations” or “modes” are really two separate and
`
`distinct embodiments. Petitioners cite as the “first configuration” (or mode)
`
`paragraphs 0077 and 0087 of Spirov. [Ex. 1005]. Pet. at 20. Paragraph 0077,
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`Patent Owner’s Prel. Response for Inter Partes Review of U.S. Patent No. 8,106,748
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`however, does not refer to a remote control at all; it refers to the body of the flying
`
`saucer. See Spirov, ¶0076 [Ex. 1005]. Paragraph 0087, in turn, describes the
`
`remote control shown in Figure 3 (which, according to paragraph 0037 is
`
`referencing “the embodiment of FIG. 1.”) Id.
`
`For the purported “second configuration” (or mode), Petitioners reference a
`
`different embodiment, citing paragraphs 0070 and 0082 of Spirov [Ex. 1005]. Pet.
`
`at 20. Paragraph 0070 of Spirov describes Figures 22a and 22b (which, according
`
`to paragraph 0056 is referencing “the embodiment of FIG. 16.”). Spirov [Ex.
`
`1005]. Paragraph 0082 describes “FIGS. 1-3, an overall view of another
`
`embodiment of the present invention.” Id.
`
`Petitioners fail to explain why they hop between two embodiments to argue
`
`that Spirov discloses a remote control that has two configurations or modes. After
`
`all, for it to be relevant, Spirov would need to disclose a remote control that has
`
`two configurations or modes in a single embodiment. Petitioners’ own divergent
`
`citations sound the death knell for any reliance on Spirov.
`
`The point of the two modes or configurations in the ‘748 Patent is that one
`
`can switch the remote controller from operating in one mode, to a second mode, or
`
`to the combination of both modes. ‘748 Patent, col. 7, lines 54-58 [Ex. 1001].
`
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`Spirov does not disclose two such modes or configurations at all, either with a
`
`switch or without.
`
`Petitioners fail to acknowledge the obvious − Spirov has no configuration
`
`switch because Spirov does not have two modes to switch between. Citing to
`
`various embodiments in Spirov, and representing those different embodiments as
`
`being the modes or configurations required by the claims of the ‘748 Patent, is
`
`false and misleading.
`
`C. All Proposed Rejections Fail Because No Prima Facie Case of
`Obviousness Is Stated
`
`Spirov does not disclose two modes of operation for the remote controller,
`
`and therefore that limitation from claim 1 is missing from each of Petitioners’
`
`proposed rejections. As such, all proposed obviousness rejections must fail. In re
`
`Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (“Dependent claims are nonobvious
`
`under section 103 if the independent claims from which they depend are
`
`nonobvious.”).
`
`D. Additional Reasons for Failure of the Proposed Rejections
`
`
`Proposed rejection of claims 1, 3, 5, 11, and 12.
`
`1.
`
`Petitioners propose a rejection of claims 1, 3, 5, 11, and 12 as obvious over
`
`Spirov in view of Bathiche and/or Shkolnikov. Pet. at 18-38. The defects of Spirov
`
`are detailed above; neither Bathiche nor Shkolnikov cures those deficiencies.
`
`
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`Case IPR2014-00732
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`Claim 1 of the ‘748 Patent requires three modes of operation. As Petitioners
`
`acknowledge, the three modes required by claim 1 are not found in Spirov. Pet. at
`
`21. Petitioners conjure the third mode of manual-only control out of a vague
`
`reference to prior art remotely controlled vehicles “routinely us[ing] manual input
`
`control.” Id. For that proposition, they cite to Spirov—despite the fact that they
`
`acknowledge in the immediately preceding sentence that Spirov includes no such
`
`mode. Id. Tellingly, Petitioners do not provide a pinpoint cite to Spirov to support
`
`that concept.
`
`Moreover, neither Bathiche nor Shkolnikov is analogous prior art, therefore
`
`their use in the proposed obviousness rejections is inappropriate. Bathiche is
`
`directed to a hand-held computer input device. Bathiche, abstract [Ex. 1009]. As
`
`defined by Petitioners, the field of the ‘748 Patent is that of control systems. See
`
`Pet. at 12. One of ordinary skill in the art of control systems would not turn to
`
`computer input devices to modify a reference about remotely controlled vehicles.
`
`Bathiche is not in the ‘748 Patent’s field of endeavor, nor reasonably pertinent to
`
`the particular problem with which the ‘748 Patent is concerned. See Clay, 966 F.2d
`
`at 659.
`
`Additionally, although Bathiche arguably provides two modes, one of them
`
`is a game pad mode where an entirely distinct input device (a direction pad input
`
`
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`device) is used. Bathiche, col. 8, l. 48 – col. 9, l. 27 [Ex. 1009]. It is not two
`
`modes of operation of one device. Bathiche discloses nothing about remote
`
`controllers or a single device operating in two modes. Its use in the proposed
`
`obviousness rejection here is inappropriate.
`
`In another attempt to identify three modes of operation, Petitioners turn to
`
`Shkolnikov. Shkolnikov is an active keyboard system for hand-held electronic
`
`devices. Shkolnikov, ¶ 20 [Ex. 1010]. Shkolnikov discloses entering alphanumeric
`
`text and data into the system using only one hand. Id. In no way is this technology
`
`analogous the ‘748 Patent.
`
`Just as with Bathiche, Shkolnikov is not in the ‘748 Patent’s field of
`
`endeavor, nor reasonably pertinent to the particular problem with which the ‘748
`
`Patent is concerned (control of remotely controlled vehicles). See Clay, 966 F.2d at
`
`659. Its use here is wholly inappropriate.
`
`Petitioners cite to Shkolnikov and state that “[t]he prior art expressly
`
`suggests combining both the three-configuration mode of Shkolnikov and the
`
`switch of Bathiche with remote control systems for controlling vehicles such as
`
`Spirov.” Pet. at 24. This argument is totally unsupported.
`
`Petitioners cite to paragraph 94 of Shkolnikov, which merely states that its
`
`system may be configured as a remote control for entering alphanumeric text and
`
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`data. Despite Petitioners’ claim to the contrary, it does not “expressly” say that it
`
`should be combined with anything, much less remote control systems for
`
`controlling vehicles.
`
`Petitioners’ argument at page 24 of the Petition is equally unavailing, i.e.,
`
`since Bathiche uses computers, and Spirov uses computers, their combination
`
`would be obvious. Id. In a similar vein, Petitioners argue that since Spirov
`
`includes a remote control, and Shkolnikov uses the words “remote control,” their
`
`combination would also be obvious.
`
` In summary, Petitioners provide no reason why one of skill in the art would
`
`combine Spirov with a two-handed video game computer input device (Bathiche)
`
`and/or an active keyboard system (Shkolnikov). The proposed obviousness
`
`rejections must fail for this additional reason.3
`
`Given claim 1 is the only independent claim of the ‘748 Patent, the proposed
`
`rejections for the remaining claims also fail for these same reasons.
`
`
`
`3
`
`Patent Owners also note that the claim charts on pages 30-32 contain no
`information in the “claim language” column. It is unclear to what elements
`those cited portions of the references refer. This is yet a further
`demonstration of Petitioners failure to identify their proposed rejections with
`particularity. See 35 U.S.C. § 312(a)(3).
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`Petitioners’ remaining proposed rejections are also deficient for the
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`additional reasons discussed below.
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`2.
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`Proposed rejection of claim 2
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`Petitioners propose rejection of claim 2 as obvious over Spirov in view of
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`Bathiche and/or Shkolnikov. The numerous defects of these references are
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`explained above and incorporated herein by this reference.
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`In addition, Petitioners argue that the “comparison” as required by claim 2 is
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`inherent in the combination of Spirov, Bathiche , and/or Shkolnikov. They argue
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`that such a comparison is a most commonly used technique, a standard approach,
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`ubiquitous, and simple to implement. Pet. at 38-39.4 It is difficult to reconcile
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`something being both inherent and a most commonly used technique. This
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`proposed rejection must fail for all of the reasons stated above.
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`4
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`
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`Petitioners also cite to paragraphs 88 and 89 of their expert declaration. [Ex.
`1011] Those two paragraphs again nearly track the Petitioners’ arguments
`verbatim – even to the point of including the same typographical error of
`omitting the close quotation mark for claim 2. In fact, the only substantive
`difference between paragraph 89 of the expert’s declaration and Petitioners’
`argument on page 39 is that the expert begins the paragraph with “In my
`opinion. . .” Id.
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`3.
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`Proposed rejection of claim 4
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`
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`Petitioners propose rejecting claim 4 as obvious over Spirov in view of
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`Bathiche and/or Shkolnikov alone or in combination with Fouche. Pet. at 41-43.
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`The numerous defects of Spirov, Bathiche, and Shkolnikov are articulated above,
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`and incorporated herein by this reference.
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`Petitioners cite to Fouche only for the claim limitation of calculating the
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`difference. The reason they provide for the modification of the three base
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`references is that “Fouche explicitly describes what is standard and well known in
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`the art,” therefore, a person of ordinary skill in the art would have been motivated
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`to combine those references. This is nothing more than stating that the claimed
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`elements existed in the prior art in different references. That is legally insufficient
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`to establish obviousness of claim 4. See KSR, 550 U.S. at 418 (stating “a patent
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`composed of several elements is not proved obvious merely by demonstrating that
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`each of its elements was, independently, known in the prior art”). This proposed
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`obviousness rejection must fail.
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`
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`4.
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`Proposed rejection of claims 6 and 7
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`Petitioner proposes a rejection of claims 6 and 7 as obvious over Spirov in
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`view of Bathiche and/or Shkolnikov and Barr. Pet. at 43-45. The numerous
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`defects of Spirov, Bathiche, and Shkolnikov are articulated above, and again
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`incorporated herein by this reference.
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`Petitioners cite to Barr for the claim elements that are specific to airplanes.
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`Petitioners allege that there is an express suggestion to combine references –
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`presumably Barr with the three base references. Pet. at 44. Spirov relates to
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`hovercraft and disparages model airplanes at paragraph 12, where it states, “[w]hile
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`this represents an improvement in terms of simplicity and operability, model
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`airplanes, and particularly model helicopters, are still expensive, complicated,
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`temperamental and fragile hobby toys that can require months to build, learn,
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`rebuild and master.” [Ex. 1005]
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`As noted above, Bathiche and Shkolnikov do not relate to remotely
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`controlled vehicles of any sort. The allegation of an express suggestion to combine
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`is wholly lacking. The present proposed rejection of claims 6 and 7 must fail.
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`
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`5.
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`Proposed rejection of claims 8 and 9.
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`Petitioners propose rejecting claims 8 and 9 as obvious over Spirov in view
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`of Bathiche and/or Shkolnikov and Fouche. Pet. at 46-48. The numerous defects
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`of Spirov, Bathiche, and Shkolnikov are articulated above, and incorporated herein
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`by this reference.
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`Fouche is cited only for the claim elements relating to helicopters.
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`Petitioners only argue that it would be obvious to combine references for the “same
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`reasons” articulated for the proposed rejection of claims 6 and 7. For the same
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`reasons as noted above, this proposed rejection must fail.
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`
`
`6.
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`Proposed rejection of claim 10.
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`Petitioners propose rejecting claim 10 as obvious over Spirov in view of
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`Bathiche and /or Shkolnikov and the knowledge of one of ordinary skill in the art.
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`Pet. at 49-51. Petitioners also argue that claim 10 is inherently obvious. The
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`numerous defects of Spirov, Bathiche, and Shkolnikov are articulated above, and
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`incorporated herein by this reference. The knowledge of one of ordinary skill in
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`the art does nothing to cure those deficiencies. For the same reasons as noted
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`above, this proposed rejection must fail.
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` CONCLUSION
`IV.
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`Petitioners’ have failed to establish a reasonable likelihood of prevailing on
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`at least one claim. The prior art identified in the Petition is insufficient to render
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`the claims unpatentable, and Petitioners’ arguments are conclusory and
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`unsupported. Accordingly, Patent Owner respectfully submits that this Petition
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`should be denied on all grounds.
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`Patent Owner’s Prel. Response for Inter Partes Review of U.S. Patent No. 8,106,748
`Case IPR2014-00732
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`While the Patent Owner believes that no fee is due, the Patent Owner
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`authorizes the Board to charge any deficiencies in fees and credit any overpayment
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`of fees to deposit account no. #502395/2664.
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`The Patent Owner consents to electronic service of process and receipt of
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`any other correspondence when sent to all of these email addresses:
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`gtabachnick@beckthomas.com;
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`jdilmore@beckthomas.com; and
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`email@beckthomas.com.
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`
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`Respectfully submitted,
`
`
`
`/s/ Gene A. Tabachnick
`
`Gene Tabachnick; Reg. No. 33,801
`James G. Dilmore; Reg. No. 51,618
`BECK & THOMAS, P.C.
`Pittsburgh, PA 15216-1808
`(412) 343-9700
`
`
`Date of Deposit: August 11, 2014
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`V.
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` CERTIFICATE OF SERVICE
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`
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`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on August 11,
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`2014, a copy of the foregoing document was served by email