Case IPR 2015-01341
`Patent Owner Response
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`
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`Filed on behalf of Seymour Levine
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`
`
`THE BOEING COMPANY
`Petitioner,
`
`v.
`
`SEYMOUR LEVINE
`Patent Owner
`
`________________
`
`Case IPR2015-01341
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`Patent RE039,618
`
`_________________
`
`
`
`PATENT OWNER’S RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.120
`
`
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`06012-00001/7652692.6
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`TABLE OF CONTENTS
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`Case IPR 2015-01341
`Patent Owner Response
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`Page
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`I.
`
`INTRODUCTION ........................................................................................... 1
`
`A.
`
`B.
`
`Procedural Background ......................................................................... 1
`
`Summary of Argument .......................................................................... 2
`
`II.
`
`THE ’618 PATENT AND RELATED TECHNOLOGY ............................... 5
`
`III. All Limitations of the Challenged Claims Are Entitled to Patentable
`Weight .............................................................................................................. 6
`
`A.
`
`B.
`
`Each Claim Limitation is Comprised Of Functional Descriptive
`Material and Should Therefore Be Afforded Patentable Weight .......... 6
`
`None of the Limitations of the Challenged Claims Are Directed
`to Intended Uses of Prior Art Systems ................................................ 11
`
`IV. PETITIONER HAS NOT ESTABLISHED THAT THE
`CHALLENGED CLAIMS ARE UNPATENTABLE. ................................. 13
`
`A.
`
`Petitioner Has Not Established that Dependent Claim 8, 9 and
`10 are Unpatentable ............................................................................. 13
`
`1.
`
`2.
`
`3.
`
`Grounds 1-3: Patent Owner Can Swear Behind Monroe
`Without Which Petitioner Cannot Demonstrate that
`Claims 8-10 are Obvious in Grounds 1-3 ................................. 13
`
`Ground 4: The Combination of ARINC 702-6 With the
`References of Ground 1 Do Not Render Obvious Claims
`8, 9 and 10 ................................................................................. 21
`
`Ground 5: The Combination of Farmakis and the
`References of Ground 1 Do Not Render Obvious Claims
`8, 9 and 10 ................................................................................. 24
`
`B.
`
`The Petition Cites No Evidence that Any of the References
`Cited for any Ground Disclose or Suggest a Transmitter that is
`“portable” or “positionable” ................................................................ 26
`
`1.
`
`2.
`
`None of the References Cited for Ground 1 Disclose or
`Suggest a Transmitter that is “Portable” or “Positionable” ...... 28
`
`None of the References Cited for Ground 2 Disclose or
`Suggest a transmitter that is “portable” or “positionable” ........ 29
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`3.
`
`None of the References Cited for Ground 3 Disclose or
`Suggest a transmitter that is “portable” or “positionable” ........ 29
`
`C.
`
`The References of Ground 2 Do Not Disclose or Render
`Obvious the Generation of “Maintenance Advice” ............................ 30
`
`1.
`
`2.
`
`Construction of the Term “Maintenance Advice” (Claims
`4 and 14) .................................................................................... 30
`
`As Properly Construed, “Maintenance Advice” is not
`Disclosed or Suggested by the References of Ground 2 ........... 34
`
`CONCLUSION .............................................................................................. 36
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`V.
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`TABLE OF AUTHORITIES
`
`Cases
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`Case IPR 2015-01341
`Patent Owner Response
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`Page
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`Bey v. Kollonitsch,
`806 F.2d 1024 (Fed. Cir. 1986) .................................................................... 18, 19
`
`Bicon, Inc. v. Straumann Co.,
`441 F.3d 945 (Fed.Cir. 2006) ............................................................................. 26
`
`Brown v. Barbacid,
`276 F.3d 1327 (Fed. Cir. 2002) .......................................................................... 14
`
`Cont'l Can Co. USA v. Monsanto Co.,
`948 F.2d 1264 (Fed. Cir. 1991) ......................................................................... 11
`
`Cooper v. Goldfarb,
`154 F.3d 1321 (Fed. Cir. 1998) .............................................................. 14, 15, 17
`
`Crown Operations Int'l, Ltd. v. Solutia Inc.,
`289 F.3d 1367 (Fed. Cir. 2002) .................................................................... 11, 12
`
`In re Cuozzo Speed Techs., LLC,
`793 F.3d 1268 (Fed. Cir. 2015), cert granted, 84 U.S.L.W. 3562
`(U.S. Jan. 15, 2016 .............................................................................................. 30
`
`Ericsson v. Intellectual Ventures
`IPR2014-00919, December 7, 2015 ................................................................... 33
`
`In re Gulack,
`703 F.2d 1381 (Fed. Cir. 1983) .................................................................. 7, 8, 11
`
`KSR International, Co. v. Teleflex, Inc.,
`550 U.S. 398 (2007) ................................................................................ 23, 24, 25
`
`King Pharms., Inc. v. Eon Labs, Inc.,
`616 F.3d 1267 (Fed. Cir. 2010) .......................................................................... 11
`
`Loral Fairchild Corp. v. Matsushita Elec.,
`266 F.3d 1358 (Fed. Cir. 2001) .......................................................................... 14
`
`In re Lowry,
`32 F.3d 1579 (Fed. Cir. 1994) .......................................................................... 7, 8
`
`Mahurkar v. C.R. Bard, Inc.,
`79 F.3d 1572 (Fed. Cir. 1996) ...................................................................... 14, 15
`
`Microsoft Corp. v. Proxyconn, Inc.,
`789 F.3d 1292 (Fed. Cir. 2015) .................................................................... 30, 33
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`In re Mulder
`716 F.2d 1542 (Fed. Cir. 1983) .......................................................................... 19
`
`Ex Parte Nehl,
`88 U.S.P.Q. 2d 1883, 2008 WL 258370 (BPAI 2008) ......................................... 7
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) .................................................................... 30, 31
`
`Price v. Symsek,
`988 F.2d 1187 (Fed.Cir. 1993) ........................................................................... 15
`
`Rieser v. Williams,
`255 F.2d 419 (CCPA 1958) .......................................................................... 20, 21
`
`Taurus IP, LLC v. DaimlerChrysler Corp.,
`726 F.3d 1306 (Fed. Cir. 2013) .......................................................................... 14
`
`Townsend v. Smith,
`36 F.2d 292 (C.C.P.A. 1929) .............................................................................. 15
`
`In re Translogic Tech., Inc.,
`504 F.3d 1249 (Fed. Cir. 2007) .......................................................................... 30
`
`Ex Parte United States of America Patent Owner, Appellant,
`2015 WL 2354023, Appeal 2014-09367 (PTAB May 13, 2015) ................. 19, 20
`
`In re Wilson,
`57 C.C.P.A. 1029, 424 F.2d 1382 (C.C.P.A.1970) ...................................... 26, 27
`
`Statutes
`
`35 U.S.C. § 102(e)(2) ......................................................................................... 14, 21
`
`35 U.S.C. § 102(g) ................................................................................................... 14
`
`35 U.S.C. § 311 .......................................................................................................... 1
`
`35 U.S.C. § 337 .......................................................................................................... 1
`
`37 C.F.R. 1.131(b) ................................................................................................... 19
`
`37 C.F.R. § 42.100 ..................................................................................................... 1
`
`37 C.F.R. § 42.100(b) .............................................................................................. 30
`
`37 C.F.R. § 42.104(b)(4) .......................................................................................... 25
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`37 C.F.R. § 42.120 ..................................................................................................... 1
`
`M.P.E.P. § 2111.05 .................................................................................................... 7
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`Levine
`Exhibit
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`LIST OF EXHIBITS
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`Description
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`Case IPR 2015-01341
`Patent Owner Response
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`Joint Claim Construction and Prehearing Statement , Seymour Lev-
`ine v. The Boeing Company, No. 14-cv-1991 (W.D. Wash.)
`
`Handwritten notes of inventor Seymour Levine
`
`Draft invention disclosures prepared by Seymour Levine, dated
`October 9, 1996.
`
`Draft invention disclosures prepared by Seymour Levine, dated
`October 23, 1996.
`
`Letter from Patent Attorney Norton R. Townsley requesting pa-
`tentability search.
`
`Letter from Patent Attorney Norton R. Townsley reporting results
`of patentability search.
`
`Patent Preparation Contract between Norton R. Townsley and
`Seymour Levine
`
`Transmittal letter from Norton R. Townsley to Seymour Levine
`
`Declaration of Seymour Levine
`
`Declaration of Norton R. Townsley
`
`Declaration of John F. Grabowsky
`
`Curriculum Vitae of John F. Grabowsky
`
`2001
`
`2002
`
`2003
`
`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`2010
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`2011
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`2012
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`
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`Case IPR 2015-01341
`Patent Owner Response
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`Patent Owner Seymour Levine (“Levine” “Patent Owner”), pursuant to 37
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`C.F.R. § 42.120, hereby submits this response to the Petition filed by Petitioner
`
`The Boeing Company (“Boeing” or “Petitioner”), which seeks inter partes review
`
`of certain claims of U.S. Reissued Patent No. RE39,618 (“the ’618 patent”). As
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`discussed in detail below, Petitioner has failed to meet its burden of proving by a
`
`preponderance of the evidence that any of the challenged claims are unpatentable.
`
`Accordingly, Patent Owner respectfully requests that the Patent Trial and Appeal
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`Board (“Board”) issue a final written decision in favor of Patent Owner on each of
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`the instituted grounds.
`
`I.
`
`INTRODUCTION
`
`A.
`
`Procedural Background
`
`On June 4, 2015, Boeing filed a petition under 35 U.S.C. § 311 and 37
`
`C.F.R. § 42.100, seeking inter partes review of claims 4, 5, 8, 9, 10, 14 and 16 of
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`the ’618 patent. Paper 1 (“Petition”).
`
`On September 23, 2015, Patent Owner filed a preliminary response to the
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`Petition pursuant to 37 C.F.R. § 42.107, presenting various arguments as to why
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`none of the proposed grounds raised in the Petition rendered any of the challenged
`
`claims unpatentable, and requesting that inter partes review not be instituted. Paper
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`7 (“Prelim. Resp.”). On October 7, 2015, Boeing filed a second Petition seeking
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`inter partes review of the same claims based on the same prior art, but adding
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`additional testimony from its expert in an effort to remedy deficiencies in its first
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`petition identified by Patent Owner in its Preliminary Response. IPR2016-0023,
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`Paper 1. On December 21, 2015, the Board issued an initial decision granting the
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`Petition and instituting inter partes review on all challenged claims on all grounds.
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`Paper 10 (“Decision”) at 36.
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`B.
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`Summary of Argument
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`The ’618 Patent discloses and claims an aircraft maintenance system that al-
`
`lows aircraft operators to anticipate aircraft maintenance needs before an aircraft
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`lands. The ’618 patent specification summarizes the invention as follows:
`
`SUMMARY OF THE INVENTION
`
`The present invention is a remotely located, aircraft,
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`flight data recorder and advisory system. These functions
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`are achieved by continuously monitoring aircraft sensors
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`such as aircraft position, altitude, speed, control surface
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`settings, engine revolutions per minute, temperatures,
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`stress, and fuel. Then by rf world wide transmission, such
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`as via satellite communication links, these parameters are
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`communicated, along with cockpit audio data, video data,
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`aircraft identification and configuration, to a central
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`ground based monitoring station where
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`they are
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`continually and safely recorded
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`Ex. 1001 (’618 Patent) at 2:58-67. The downloaded data parameters are analyzed
`
`on the ground and if this analysis indicates that some maintenance is necessary,
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`maintenance advisories are generated while the aircraft is still in flight. Id. at 2:58-
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`3:6, 4:19-24, 5:13-20, 7:66-8:48, 12:5-8.
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`Because the claimed system had never been contemplated, much less im-
`
`plemented before, Petitioner has been forced to combine no fewer than three sepa-
`
`rate references for each ground in order to argue that all of the challenged claims
`
`are obvious. Two of the cited references, Monroe and Farmakis, were of record in
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`the reissue prosecution and Patent Owner can swear behind one of those, Monroe,
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`which is common to three of the five grounds.
`
`For each of Grounds 1, 2 and 3, Petitioner relies on the combination of at
`
`least two references to meet the limitations of independent claims 4 and 14 and de-
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`pendent claims 5 and 16: Ward (Ex. 1015) and ARINC 624-1 (Ex. 1014) for
`
`Ground 1; Chetail (Ex. 1018) and Dyson (Ex. 1019) for Ground 2; and Dowling
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`(Ex. 1013) and ARINC 624-1 for Ground 3. In each of these Grounds, however,
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`Petitioner relies on Monroe (Ex. 1017) for dependent claims 8, 9 and 10, which re-
`
`quire downloading position data, including GPS data (claim 9) and INS data (claim
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`10). For Grounds 4 and 5, Petitioner starts with its Ground 1 combination of Ward
`
`and ARINC 624-1, but cites different references for claims 8, 9 and 10: FAA In-
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`creased FDR Parameters and ARINC 702-6 for Ground 4 and FAA Increased
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`FDR Parameters and Farmakis for Ground 5.
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`Patent Owner can swear behind Monroe, which predates the filing date of
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`the ’618 patent by only a few months, before which none of Petitioner’s references
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`disclose or even suggest downloading position data from an aircraft to the ground
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`while the aircraft is in flight as part of an aircraft maintenance system. Petitioner’s
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`attempt to fill this gap in Grounds 4 and 5 relies on references showing only that
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`position data was recorded on the aircraft and that position data was used for air
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`traffic control. None of the references cited in Grounds 4 and 5 disclose actually
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`communicating position data to the ground while the aircraft is in flight as part of
`
`an aircraft maintenance system and none of those references suggest that doing so
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`would have been obvious at the time of the claimed invention.
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`Each of the challenged claims also requires that the transmitter used to
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`transmit the data from the aircraft to the ground be “portable” [claim 4] or “posi-
`
`tionable” [claim 14]. Petitioner has not cited to any reference disclosing such a
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`transmitter and Petitioner’s declarant has offered no opinion on this required fea-
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`ture of the claimed transmitter.
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`Each of the challenged claims also requires that the central station/ground
`
`based station be configured to generate “maintenance advice.” As properly con-
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`strued, the term “maintenance advice” requires more than simply providing alerts
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`or other information gleaned directly from the data collected from the aircraft, as
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`argued by Petitioner. Rather, it requires actual advice, i.e., some recommendation
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`as to what maintenance action should be taken. None of the references relied on
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`for at least Ground 2 disclose the generation of such maintenance advice.
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`Finally, as the Board has already found, all of the limitations of the chal-
`
`lenged claims are entitled to patentable weight. For all these reasons, the Petition
`
`does not prove by a preponderance of the evidence that the challenged claims
`
`would have been obvious to one of ordinary skill in the art. Accordingly, Patent
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`Owner requests that the Board issue a final written decision confirming the patent-
`
`ability of each of the challenged claims.
`
`II. THE ’618 PATENT AND RELATED TECHNOLOGY
`
`At the time of the invention in 1996, commercial aircraft were required to
`
`monitor various aircraft parameters and record them on a flight data recorder
`
`(FDR) or “black box.” The FDR was designed to withstand an aircraft crash so
`
`that crash investigators could use the stored data to hopefully understand what had
`
`caused the crash. The data stored in the FDR was not typically retained or other-
`
`wise analyzed for any purpose other than crash investigations. ’618 patent at 1:20-
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`40.
`
`Moreover, the data needed to investigate a crash always needed to be recov-
`
`ered from the crash wreckage, which was not always possible. The ’618 patent
`
`discloses the idea of taking this data that was stored in the FDR and sending it to
`
`the ground while the aircraft is in flight together with aircraft identification, a con-
`
`figuration label and aircraft position data. In this way accident investigations could
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`begin immediately and the data indicating the aircraft’s position would make locat-
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`ing the wreckage easier.
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`In addition to essentially providing for a ground-based “black box,” the ’618
`
`patent also discloses taking advantage of the transmitted data to assess the condi-
`
`tion of the aircraft so as to anticipate maintenance needs before the aircraft lands at
`
`its destination. In this way maintenance crews could obtain necessary parts and be
`
`prepared to make necessary repairs to minimize schedule interruptions. Id. at Ab-
`
`stract, 2:24-38, 4:18-24.
`
`Because none of the cited references disclose a system in which aircraft pa-
`
`rameters and location data, as described and claimed in the patent, are sent from an
`
`aircraft during flight and which generates maintenance advice while the aircraft is
`
`still in flight, none of these references suggest, let alone disclose, what is described
`
`and claimed in the ’618 Patent.
`
`III. All Limitations of the Challenged Claims Are Entitled to Patentable
`Weight
`
`A. Each Claim Limitation is Comprised Of Functional Descriptive
`Material and Should Therefore Be Afforded Patentable Weight
`
`As the Board has already found, Petitioner’s attack on the claims as
`
`including non-functional descriptive material lacking patentable weight is without
`
`merit. Decision at 10-11. Petitioner’s attack conjures the law related to descriptive
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`material or printed matter,1 which is afforded patentable weight when the printed
`
`matter and associated product share a functional relationship that is new and
`
`unobvious. In re Gulack, 703 F.2d 1381, 1386 (Fed. Cir. 1983). A functional
`
`relationship exists “where the printed matter performs some function with respect
`
`to the product to which it is associated,” or “where the product performs some
`
`function with respect to the printed matter to which it is associated.” M.P.E.P. §
`
`2111.05. The Federal Circuit has explained that the printed matter must merely
`
`“perform a function” (emphasis added); the case law “requires no more.” In re
`
`Lowry, 32 F.3d 1579, 1584 (Fed. Cir. 1994). The Federal Circuit has also made
`
`explicit that “[t]he burden of establishing the absence of a novel, nonobvious
`
`functional relationship rests with the PTO.” Id. at 1584 (internal citations omitted).
`
`
`1 The Manuel of Patent Examining Procedure and the cases on which Petitioner
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`relies analyze the patentability of functional descriptive material as an issue of
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`“printed matter.” See e.g., M.P.E.P. § 2111.05 (titled “Functional and
`
`Nonfunctional Descriptive Material” and stating “USPTO personnel need not give
`
`patentable weight to printed matter absent a new and unobvious functional
`
`relationship between the printed matter and substrate.”) See also Ex Parte Nehl,
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`88 U.S.P.Q.2d 1883, 2008 WL 258370 (BPAI 2008) (“The distinction between
`
`functional and nonfunctional descriptive material arose in the context of printed
`
`matter limitations.”)
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`Perhaps unsurprisingly, these Federal Circuit cases counsel against “a liberal use of
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`‘printed matter’ rejections,” Id. at 1583, because “‘printed matter rejection[s]’
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`under § 103 stand[] on questionable legal and logical footing.” In re Gulack, 703
`
`F.3d at 1385 n.8.
`
`Despite the Federal Circuit’s warnings to the contrary, Petitioner now seeks
`
`to discount the patentable weight of a number of limitations from the challenged
`
`claims on the grounds that they constitute non-functional descriptive material.
`
`However, as is evident from the ’618 patent’s specification and claims, a new and
`
`unobvious functional relationship exists between the allegedly printed matter—the
`
`data collected and transmitted to the ground—and the product with which it is
`
`associated, the maintenance advice produced by the aircraft maintenance system.
`
`The patent’s specification expressly describes how various flight parameters
`
`are transmitted and subsequently “analyzed in conjunction with [various data] to
`
`allow identification of maintenance problems, on-ground safety advisories and in-
`
`flight safety advisories,” including “maintenance actions.” ’618 Patent at 2:30-38.
`
`See also, Claim 1, which identifies a “processing means” for “generating said
`
`maintenance advisory based upon said configuration label.” The various
`
`parameters and data are therefore collected for the explicit purpose of generating
`
`advisories, such as maintenance advice. Collectively, the specification makes clear
`
`that the collected and transmitted data (the alleged printed matter) performs some
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`function with respect to the advisories generated by the aircraft’s maintenance
`
`system (the product with which the printed matter is associated).
`
`The functional relationship is equally apparent from the challenged claims.
`
`For example, Claim 4 recites an “aircraft maintenance system” consisting of “a
`
`central station” that is “configured to receive and analyze said digital aircraft
`
`performance data to generate maintenance advice for said aircraft while said
`
`aircraft is in flight.” Similarly, the “aircraft maintenance system” claimed in Claim
`
`14 is comprised of a “ground based station” that is “configured to receive and
`
`analyze said transmission of data, while said aircraft is in flight, to generate
`
`maintenance advice for said aircraft.” Each of these claims thus demonstrates the
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`functional relationship between the collected data and the maintenance advisories
`
`generated by the ground-based central station.
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`Despite this clear language to the contrary, Petitioner nevertheless contends
`
`that a functional relationship is wanting because “neither the specification nor the
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`challenged claims anywhere describe the use of configuration information or
`
`aircraft position information to generate maintenance advice.” Pet. at 18. As
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`noted above, this assertion is plainly incorrect. Similarly, in distinguishing
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`Levine’s invention from the prior art, the specification provides that no prior
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`systems “combin[e] information from aircraft with global position data” to deliver
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`“real-time feedback in the form of real-time ground and in-flight advisories to the
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`aircraft.” ’618 patent at 2:19-23. Claim 8, which depends from Claim 4, recites
`
`“[t]he aircraft maintenance system of claim 4 wherein said digital aircraft
`
`performance data includes aircraft position data;” the “aircraft maintenance
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`system” identified in Claim 4 is “configured to receive and analyze said digital
`
`aircraft performance data to generate maintenance advice.” Accordingly, on its
`
`face, the patent specifically describes the use of both configuration and aircraft
`
`position information in generating maintenance advice.2
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`Petitioner asks the Board to excise the alleged printed matter and evaluate
`
`the claims without it. This is precisely what the Federal Circuit said should not be
`
`
`2 In addition, Petitioner’s proposed claim constructions further evidence the role of
`
`configuration information and aircraft position information in the generation of
`
`maintenance advice. For example, Claim 4 recites an “aircraft maintenance
`
`system” comprising “digital aircraft performance data” received and analyzed by a
`
`“central station” “to generate maintenance advice.” Petitioner’s proposed
`
`construction for the term “digital aircraft performance data” is “digital information
`
`about aircraft operation, identity, and configuration,” which “would encompass,
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`among other things, position [data].” Pet. at 9. Petitioner’s proposed construction
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`of “digital aircraft performance data” therefore undermines its argument that the
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`challenged claims fail to describe the use of configuration information or aircraft
`
`position information to generate maintenance advice.
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`done: “‘[T]he board cannot dissect a claim, excise the printed matter from it, and
`
`declare the remaining portion of the mutilated claim to be unpatentable. The claim
`
`must be read as a whole.’” King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
`
`1279 (Fed. Cir. 2010), quoting In re Gulack, 703 F.3d at 1385.
`
`In addition to being functionally related, for all the reasons discussed below,
`
`these functional relationships between the collected data and the generation of
`
`maintenance advice claimed in the challenged claims are sufficiently new and
`
`unobvious over the prior art.
`
`In summary, Petitioner has not demonstrated the absence of a novel,
`
`nonobvious functional relationship between the data collected and transmitted and
`
`the aircraft maintenance system of the challenged claims. As the Board has
`
`already found, the claim limitations relating to this functional relationship must,
`
`therefore, be accorded patentable weight. This conclusion not only comports with
`
`the patent’s specification and claims, but is also consistent with Federal Circuit
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`precedent disfavoring printed matter rejections under § 103.
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`B. None of the Limitations of the Challenged Claims Are Directed to
`Intended Uses of Prior Art Systems
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`That a prior art reference discloses the “same structure as claimed by a
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`patent” does not imply that the prior art also discloses “the resulting property.”
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`Crown Operations Int’l, Ltd. v. Solutia Inc., 289 F.3d 1367, 1377 (Fed. Cir. 2002);
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`see also Cont’l Can Co. USA v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir.
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`1991) (“Inherency [] may not be established by probabilities or possibilities. The
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`mere fact that a certain thing may result from a given set of circumstances is not
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`sufficient.”) Petitioner bears the heavy burden of proving that the identified
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`limitations of the challenged claims are inherently disclosed by prior art, a burden,
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`as the Board has recognized, it has not and cannot satisfy. Decision at 11-12; See
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`3 Annotated Patent Digest (Matthews) § 17:71.
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`Petitioner argues that prior art “need only disclose a system with the same
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`structures as those described in the claims.” Pet. at 20. In other words, and in
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`complete disregard of Crown Operations, Petitioner contends that if prior art
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`discloses the structures claimed in the ’618 patent, the prior art also inherently
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`discloses the resulting property of these structures. Misguided by this logic,
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`Petitioner alleges that the identified limitations of the challenged claims are not
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`entitled to any patentable weight simply because “a structure for transmitting and
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`receiving data . . . was already known.” Pet. at 21. However, such a conclusion
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`“is not in accordance with [Federal Circuit] cases on inherency.” Crown
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`Operations, 289 F.3d at 1377.
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`For example, Petitioner contends that because “the structure or configuration
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`of an RF receiver does not depend on the data received,” the type of data received
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`by the central or ground stations is not entitled to patentable weight. Pet. at 20.
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`But the central or ground station is more than an RF receiver and Petitioner does
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`not explain how a generic RF receiver would have the structure necessary to
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`generate maintenance advice from the received data as required by the challenged
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`claims.
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`A ground station’s ability to both receive performance data and analyze such
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`data to generate maintenance advice is simply not inherent to the structure of a
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`generic RF receiver that would be only one part of the claimed central or ground
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`station. Accordingly, Boeing cannot satisfy its heavy burden of proving inherency,
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`and the identified limitations of the challenged claims are thus entitled to
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`patentable weight.
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`IV. PETITIONER HAS NOT ESTABLISHED THAT THE CHAL-
`LENGED CLAIMS ARE UNPATENTABLE.
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`A.
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`Petitioner Has Not Established that Dependent Claim 8, 9 and 10
`are Unpatentable
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`1. Grounds 1-3: Patent Owner Can Swear Behind Monroe
`Without Which Petitioner Cannot Demonstrate that
`Claims 8-10 are Obvious in Grounds 1-3
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`For Grounds 1-3, Petitioner relies exclusively on U.S. Patent 5,798,458
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`(“Monroe”) (Ex. 1017) to satisfy the limitations of Claims 8-10, which claim the
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`inclusion of position data in the data downloaded from the aircraft to the ground,
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`including data based on GPS and inertial navigation. Pet. at 31-32, 36-37, 41, 44-
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`45, 49 and 53. Monroe, which was of record in the prosecution of the ’618 patent,
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`has an effective filing date no earlier than October 11, 1996, just a few months
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`earlier than the effective filing date of the ’618 Patent, which is December 17,
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`1996. Ex. 1017 at 1; ’618 Patent at 1. Monroe is not prior art to the ’618 patent
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`because it was not filed “before the invention by the applicant for patent.” 35
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`U.S.C. § 102(e)(2). See, Loral Fairchild Corp. v. Matsushita Elec., 266 F.3d 1358,
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`1362 (Fed. Cir. 2001); Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1577 (Fed. Cir.
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`1996). Priority of invention goes to the first party to reduce the invention to
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`practice unless the other party can show that it was the first to conceive the
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`invention and that it exercised reasonable diligence in later reducing that invention
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`to practice. Brown v. Barbacid, 276 F.3d 1327, 1337 (Fed. Cir. 2002); Cooper v.
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`Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998); Mahurkar, 79 F.3d at 1577.
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`“Where a party is first to conceive but second to reduce to practice, that party must
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`demonstrate reasonable diligence toward reduction to practice from a date just
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`prior to the other party’s conception to its reduction to practice.” Id. at 1578. 35
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`U.S.C. § 102(g). Here, the “other party’s conception” is Monroe’s filing date. See
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`Taurus IP, LLC v. DaimlerChrysler Corp., 726 F.3d 1306, 1323 (Fed. Cir. 2013).
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`(a)
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`Levine Has Established an Earlier Date of Conception
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`Mr. Levine testifies here that he conceived of the claimed invention at least
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`as early as May, 1996. Declaration of Seymour Levine (Ex. 2009) (“Levine
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`Decl.”) ¶ 2. Levine’s testimony is corroborated by his contemporaneous
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`handwritten notes and draft invention disclosures, both of which detail the key
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`features of the challenged claims; as well as the testimony of his patent attorney,
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`Norton Townsley. “In assessing corroboration of oral testimony, courts apply a
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`rule of reason analysis. Price [v. Symsek], 988 F.2d [ 1187,] 1195 [Fed.Cir. 1993)].
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`Under a rule of reason analysis, ‘[a]n evaluation of all pertinent evidence must be
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`mad