`Trials@uspto.gov
`571-272-7822
`
`Entered: October 28, 2014
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PARROT S.A. and PARROT, INC.,
`Petitioner,
`
`v.
`
`DRONE TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-00732
`Patent 8,106,748 B2
`____________
`
`
`Before HOWARD B. BLANKENSHIP, MATTHEW R. CLEMENTS, and
`CHRISTOPHER M. KAISER, Administrative Patent Judges.
`
`
`BLANKENSHIP, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`I. BACKGROUND
`
`
`
`Parrot S.A. and Parrot, Inc. (collectively, “Petitioner”) filed a petition
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`requesting inter partes review of claims 1–12 of U.S. Patent No. 8,106,748
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`B2 (Ex. 1001, “the ’748 patent”) under 35 U.S.C. §§ 311–319. Paper 1
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`(“Petition” or “Pet.”). Patent Owner, Drone Technologies, Inc., filed a
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`IPR2014-00732
`Patent 8,106,748 B2
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`preliminary response as permitted by 37 C.F.R. § 42.107. Paper 7 (“Prelim.
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`
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`Resp.”). We have jurisdiction under 35 U.S.C. § 314. Section 314 provides
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`that an inter partes review may not be instituted “unless . . . the information
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`presented in the petition . . . shows that there is a reasonable likelihood that
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`the petitioner would prevail with respect to at least 1 of the claims
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`challenged in the petition.”
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`
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`For the reasons that follow, we institute an inter partes review as to
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`claims 1–12 of the ’748 patent.
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`
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`A. Related Proceedings
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`According to Petitioner, the ’748 patent is involved in the following
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`lawsuit: Drone Technologies, Inc. v. Parrot S.A., No. 2:05-mc-02025 (W.D.
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`Pa.). Pet. 4.
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`
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`B. The ’748 Patent
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`The ’748 patent relates to a remote control system in which a remote
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`control apparatus transmits a target motion signal to a remote-controlled
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`motion apparatus. Ex. 1001, Abstract.
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`Figure 5 of the ’748 patent is reproduced below.
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`Patent 8,106,748 B2
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`Figure 5 is a system diagram of a remote control system. Ex. 1001,
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`col. 3, ll. 7–9. Remote controller 5 comprises acceleration sensing module
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`51, communication module 53, and manual input module 54. In the first
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`operation mode, acceleration sensing module 51 detects the acceleration of
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`remote controller 5 and outputs acceleration sensing signal SG.
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`Communication module 53 connects to acceleration sensing module 51 and
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`transmits first target motion signal STAR1 according to the acceleration
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`sensing signal. First target motion signal STAR1 controls the motion of
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`remote-controlled device 4 to align with the acceleration sensing signal. Id.
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`at col. 5, ll. 54–67.
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`In the second operation mode, manual input module 54, which
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`includes direction control unit 55, outputs direction control signal SCNT.
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`Communication module 53 connects to manual input module 54 and
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`transmits second target motion signal STAR2 according to the direction control
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`3
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`Patent 8,106,748 B2
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`signal to control the motion of remote-controlled device 4. Id. at col. 6,
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`
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`ll. 8–15.
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`In the third operation mode, communication module 53 transmits third
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`target motion signal STAR3 according to the acceleration sensing signal and
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`the direction control signal to control the motion of remote-controlled device
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`4. Id. at col. 6, ll. 19–25.
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`Remote controller 5 includes configuration switch module 52. The
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`configuration switch module selects the mode of operation by selecting
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`acceleration sensing module 51 and/or manual input module 54 as the input
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`for communication module 53. Id. at col. 6, ll. 32–36.
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`
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`C. Illustrative Claim
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`
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`Claim 1, the sole independent claim, is illustrative and reproduced
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`below.
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`1. A remote control system, comprising:
`
` a
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` remote controller, comprising:
`
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`a first acceleration sensing module, which detects
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`the remote controller’s motion and outputs a motion detecting
`signal;
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`a manual input module, which has at least one
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`direction control unit to generate a direction control signal;
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`a first communication module, which connects to
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`the first acceleration sensing module and the manual input
`module, the first communication module receives the motion
`detecting signal and the direction control signal, and transmits a
`target motion signal; and
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`4
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`Patent 8,106,748 B2
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`a configuration switch module to select between
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`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; and
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`
`
` a
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` remote-controlled device, which is controlled by the
`remote controller, comprising:
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`a second communication module, which receives
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`the target motion signal from the remote controller;
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`a second acceleration sensing module, which
`detects the remote-controlled device’s acceleration and
`outputs an acceleration sensing signal;
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`a processing module, which has a first input
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`connected to the second acceleration sensing module and
`receives the acceleration sensing signal, and a second input
`connected to the second communication module and receives
`the target motion signal, and processes the acceleration sensing
`signal and the target motion signal to output a driving control
`signal; and
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`a driving module, which connects to the processing
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`module and receives the driving control signal, and adjusts the
`remote-controlled device’s motion according to the driving
`control signal.
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`5
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`IPR2014-00732
`Patent 8,106,748 B2
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`D. Prior Art
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`
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`Spirov et al. (“Spirov”)
` (Ex. 1005)
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`
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`Barr
` (Ex. 1007)
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`Fouche
` (Ex. 1008)
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`Bathiche et al. (“Bathiche”)
` (Ex. 1009)
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`Shkolnikov
` (Ex. 1010)
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`US 2006/0144994 A1
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`July 6, 2006
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`US 7,219,861 B1
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`May 22, 2007
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`US 6,751,529 B1
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`June 15, 2004
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`US 7,145,551 B1
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`Dec. 5, 2006
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`US 2004/0263479 A1 Dec. 30, 2004
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`E. Asserted Grounds of Unpatentability
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`Petitioner asserts the following grounds of unpatentability under
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`35 U.S.C. § 103(a) against claims 1–12:
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`
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`References
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`Spirov, Bathiche, and/or Shkolnikov
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`Spirov, Bathiche, and/or Shkolnikov
`and Fouche
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`Spirov, Bathiche, and/or Shkolnikov
`and Barr
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`
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`Claims
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`1–5 and 10–12
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`4, 8, and 9
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`
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`6 and 7
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`6
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`II. ANALYSIS
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`Claim Interpretation
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`
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`In an inter partes review, the Board construes claim terms in an
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`unexpired patent using their broadest reasonable construction in light of the
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`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
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`2012). The claim language should be read in light of the specification, as it
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`would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
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`Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The Office must
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`apply the broadest reasonable meaning to the claim language, taking into
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`account any definitions presented in the specification. Id. (citing In re Bass,
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`314 F.3d 575, 577 (Fed. Cir. 2002)). There is a “heavy presumption” that a
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`claim term carries its ordinary and customary meaning. CCS Fitness, Inc. v.
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`Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002). The “ordinary and
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`customary meaning” is that which the term would have to a person of
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`ordinary skill in the art in question. In re Translogic Tech., Inc., 504 F.3d
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`1249, 1257 (Fed. Cir. 2007).
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`A. Difference of Motion
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`Petitioner submits that “difference of motion,” a phrase in claim 4,
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`should be interpreted as “calculations related to motion that causes a change
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`in orientation.” Pet. 17. Patent Owner in its Preliminary Response
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`expresses no disagreement with that interpretation.
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`As Petitioner indicates (id.), the ’748 patent does not provide a
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`definition of the relevant terms different from the ordinary meaning of the
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`words. For purposes of this Decision, we interpret “difference of motion,”
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`under the required broadest reasonable interpretation, simply to mean
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`relative motion. That interpretation is consistent with the language of claim
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`4. Claim 4 recites that the “calculated result” — the calculated current
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`motion of the remote-controlled device — is compared with the target
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`motion signal to get the “difference of motion” (relative motion) between the
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`remote-controlled device and the remote controller. In relation to
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`Petitioner’s proffered interpretation, because a change in orientation is a type
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`of motion, relative orientation would be a type (or species) of “difference of
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`motion.”
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`
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`B. Information of the Remote Controller’s Motion in the 3D Space
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`Petitioner submits that the phrase “information of the remote
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`controller’s motion in the 3D space,” which appears in claim 12, should be
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`interpreted as “any motion in three dimensional space, including motion in
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`one or two dimensions.” Pet. 17–18. Patent Owner in its Preliminary
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`Response expresses no disagreement with that interpretation.
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`Again, we find no definition in the ’748 patent that would depart from
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`the ordinary meaning of the words. Claim 12 recites “wherein the motion
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`detecting signal represents the information of the remote controller’s motion
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`in the 3D space.” Claim 12 depends from claim 1. Neither claim sets forth
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`an antecedent for “the 3D space.” Consistent with Petitioner’s position,
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`information of motion in the 3D space, under its broadest reasonable
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`interpretation, does not require complete information of motion in each of
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`the three dimensions. Although the motion is in “the 3D space,” information
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`of the motion may be information relating to motion in one, two, or three
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`dimensions.
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`8
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`Patent 8,106,748 B2
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`Section 103(a) Challenges
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`A. Prior Art — Spirov, Bathiche, and Shkolnikov
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`Spirov describes a remotely controlled hovercraft in which the remote
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`controller may provide a thumb-activated throttle and yaw control 20 and
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`one or more finger-operated trigger controls 22 and 24. Ex. 1005 ¶ 82,
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`Fig. 3. The remote controller also may provide one-handed operation with
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`pitch and roll control by mimicking the pitch and roll of controlled
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`hovercraft 10 by means of XY axis transducers in the controller. Id. ¶ 87,
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`Fig. 3.
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`Bathiche teaches a computer input device that may be operated in a
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`first mode whereby X and Y axis tilt sensors generate orientation
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`information. Ex. 1009, col. 8, ll. 37–44. In a second mode, input is from
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`switches rather than the X and Y tilt sensors. Id. at col. 8, ll. 48–55. A
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`mode switch selects between the different modes. Id.
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`Shkolnikov (Ex. 1010) teaches an active keyboard system for
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`handheld electronic devices, such as remote controllers (id. ¶¶ 27, 87, 94),
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`that may include first selector 216 and second selector 218 (id. at Fig. 2) to
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`select between manual input and motion (via movement sensors) as an input.
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`Id. ¶¶ 24–25. Shkolnikov also teaches that the motion input may be
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`provided as an alternative or “in addition to” the manual input. Id. ¶ 25.
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`
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`B. Spirov, Bathiche, and Shkolnikov — Claims 1–3, 5, and 10–12
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`Petitioner asserts that the subject matter of claims 1–3, 5, and 10–12
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`would have been obvious over the combination of Spirov, Bathiche, and
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`Shkolnikov. Pet. 18–42, 49–51.
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`Patent Owner responds that Spirov discloses two separate and distinct
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`
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`embodiments, as opposed to two switch-selectable modes. Prelim. Resp.
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`12–14. Even if true, however, Bathiche teaches two switch-selectable
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`modes. Ex. 1009, col. 8, ll. 13–55. We, thus, do not consider the argued
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`feature to be missing from the applied prior art.
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`Patent Owner responds, additionally, that neither of Bathiche and
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`Shkolnikov is analogous art. Prelim. Resp. 15–17. Two criteria have
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`evolved for determining whether prior art is analogous: (1) whether the art
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`is from the same field of endeavor, regardless of the problem addressed, and
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`(2) if the reference is not within the field of the inventor’s endeavor, whether
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`the reference still is reasonably pertinent to the particular problem with
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`which the inventor is involved. In re Clay, 966 F.2d 656, 658–59 (Fed. Cir.
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`1992).
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`Patent Owner argues that, “[a]s defined by Petitioners, the field of the
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`‘748 Patent is that of control systems. See Pet. at 12.” Prelim. Resp. 15.
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`The Petition at page twelve, however, does not “define” the field of
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`endeavor but asserts that a person of ordinary skill in the art would be
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`familiar with control systems and that the ’748 patent “describes a control
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`system for a remotely controlled vehicle such as a hobby airplane.” Pet. 12.
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`Patent Owner also argues that neither of Bathiche and Shkolnikov is
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`reasonably pertinent to the particular problem with which the ’748 patent is
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`concerned, namely “control of remotely controlled vehicles.” Prelim. Resp.
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`16. The ’748 patent, however, indicates that the problem was broader than
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`“control of remotely controlled vehicles.” The patent, for example, refers to
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`remote control of “device[s].” E.g., Ex. 1001, col. 1, ll. 62–67. Moreover,
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`the claimed subject matter embraces more than remotely controlled
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`“vehicles,” as exemplified by dependent claim 5, which limits the generic
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`remote-controlled “device” incorporated from base claim 1 to a remote-
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`controlled vehicle such as a model airplane, a model helicopter, or a model
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`car. Id. at col. 8, ll. 30–33. Because Patent Owner’s arguments regarding
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`non-analogous art are not supported by the facts in this record, we are not
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`persuaded that either of Bathiche and Shkolnikov represents non-analogous
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`art.
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`We have reviewed Petitioner’s challenge of claim 1 and dependent
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`claims 2, 3, 5, and 10–12. Based on the information presented in the
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`Petition and the Preliminary Response, we determine that Petitioner has
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`demonstrated a reasonable likelihood that it would prevail in showing that
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`claims 1–3, 5, and 10–12 are rendered obvious by the combination of
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`Spirov, Bathiche, and Shkolnikov.
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`C. Spirov, Bathiche, Shkolnikov, and Fouche — Claims 4, 8, and 9
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`Petitioner contends that the subject matter of claims 4, 8, and 9 would
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`have been obvious over the above-noted combination of Spirov, Bathiche,
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`and Shkolnikov, with the further teachings of Fouche. Pet. 42–43, 46–48.
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`Fouche teaches a remotely controlled helicopter in which the pitch attitude
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`error is the difference between a commanded pitch attitude and a measured
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`(actual) pitch attitude. Ex. 1008, col. 7, ll. 37–56, Figs. 2, 3.
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`With respect to claim 4, Patent Owner responds that “Petitioners cite
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`to Fouche only for the claim limitation of calculating the difference.”
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`Prelim. Resp. 19. Patent Owner argues that Petitioner’s stated reason for
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`modifying the base references in view of Fouche is that “‘Fouche explicitly
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`describes what is standard and well known in the art.’” Id. According to
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`Patent Owner, that is legally insufficient to establish obviousness of claim 4.
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`Id.
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`However, Patent Owner identifies only one of the reasons that
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`Petitioner offers in support of the obviousness ground. Petitioner also
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`asserts that Fouche confirms that which is inherent in Spirov. Pet. 41;
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`Ex. 1011 (“D’Andrea Decl.”) ¶ 92. Moreover, Fouche demonstrates that the
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`described measurement was common knowledge to one of ordinary skill in
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`the art. “[I]f a technique has been used to improve one device, and a person
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`of ordinary skill in the art would recognize that it would improve similar
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`devices in the same way, using the technique is obvious unless its actual
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`application is beyond his or her skill.” KSR Int’l Co. v. Teleflex, Inc., 550
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`U.S. 398, 417 (2007). A person of ordinary skill is a person of ordinary
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`creativity, not an automaton. Id. at 421.
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`Based on the information presented in the Petition and the Preliminary
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`Response, we determine that Petitioner has demonstrated a reasonable
`
`likelihood that it would prevail in showing that the subject matter of claims
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`4, 8, and 9 would have been obvious over the combination of Spirov,
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`Bathiche, Shkolnikov, and Fouche.
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`
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`D. Spirov, Bathiche, Shkolnikov, and Barr — Claims 6 and 7
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`Petitioner contends that the subject matter of claims 6 and 7 would
`
`have been obvious over the combination of Spirov, Bathiche, and
`
`Shkolnikov, with the further teachings of Barr. Pet. 43–45. Claims 6 and 7
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`are specific to adjusting the pitch of an airplane wing. Barr teaches a
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`remotely-controlled airplane in which the pitch of the airplane wing is
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`adjusted. Ex. 1007, col. 4, ll. 18–41; D’Andrea Decl. ¶¶ 95–100.
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`Based on the information presented in the Petition and the Preliminary
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`Response, we determine that Petitioner has demonstrated a reasonable
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`likelihood that it would prevail in showing that claims 6 and 7 are rendered
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`obvious by the combination of Spirov, Bathiche, Shkolnikov, and Barr.
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`E. Other Asserted Grounds of Unpatentability
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`Petitioner also asserts that claim 4 is unpatentable as obvious over
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`Spirov, Bathiche, and Shkolnikov. Pet. 41–42.
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`We have discretion to institute inter partes review as to some asserted
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`grounds and not others. 37 C.F.R. § 42.108(a); see also 35 U.S.C. § 314(a)
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`(authorizing institution of inter partes review under particular
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`circumstances, but not requiring institution under any circumstances). This
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`discretion is consistent with the requirement that the regulations for inter
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`partes review proceedings take into account “the efficient administration of
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`the Office” and “the ability of the Office to timely complete [instituted]
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`proceedings,” 35 U.S.C. § 316(b), as well as with the requirement that the
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`rules for inter partes review proceedings be “construed to secure the just,
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`speedy, and inexpensive resolution of every proceeding.” 37 C.F.R.
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`§ 42.1(b). Accordingly, for reasons of administrative necessity, and to
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`ensure timely completion of the instituted proceeding, we exercise our
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`discretion and do not institute a review based on Petitioner’s other asserted
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`grounds.
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`III. CONCLUSION
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`The Petition demonstrates a reasonable likelihood of prevailing on the
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`grounds of obviousness over Spirov, Bathiche, and Shkolnikov as to claims
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`13
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`1–3, 5, and 10–12, over Spirov, Bathiche, Shkolnikov, and Fouche as to
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`claims 4, 8, and 9, and over Spirov, Bathiche, Shkolnikov, and Barr as to
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`claims 6 and 7.
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`The Board has not made a final determination on the patentability of
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`any challenged claim.
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`In consideration of the foregoing, it is
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`IV. ORDER
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`ORDERED that an inter partes review is instituted as to claims 1–3,
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`5, and 10–12 of the ’748 patent on the obviousness ground based on Spirov,
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`Bathiche, and Shkolnikov;
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`FURTHER ORDERED that an inter partes review is instituted as to
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`claims 4, 8, and 9 of the ’748 patent on the obviousness ground based on
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`Spirov, Bathiche, Shkolnikov, and Fouche;
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`FURTHER ORDERED that an inter partes review is instituted as to
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`claims 6 and 7 of the ’748 patent on the obviousness ground based on
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`Spirov, Bathiche, Shkolnikov, and Barr;
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
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`partes review of the ’748 patent is instituted with trial commencing on the
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`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
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`§ 42.4, notice is given of the institution of the trial; and
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`FURTHER ORDERED that the trial is limited to the grounds
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`identified immediately above, and no other ground is authorized for the ’748
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`patent claims.
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`IPR2014-00732
`Patent 8,106,748 B2
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`For Petitioner:
`
`James Hopenfeld
`hopenfeld@oshaliang.com
`
`Tammy Terry
`terry@oshaliang.com
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`For Patent Owner:
`
`Gene Tabachnick
`gtabachnick@beckthomas.com
`
`James Dilmore
`jdilmore@beckthomas.com
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`15
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