trials@uspto.gov
`571-272-7822
`
`IPR2015-01341, Paper No. 45
`December 8, 2016
`
`
`
`RECORD OF ORAL HEARING
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`THE BOEING COMPANY,
`Petitioner,
`vs.
`SEYMOUR LEVINE,
`Patent Owner.
`- - - - - -
`Case IPR2015-01341
`Patent RE39,618
`Technology Center 3600
`Oral Hearing Held: Wednesday, September 14, 2016
`
`BEFORE: MICHAEL W. KIM; TRENTON A. WARD; and
`DANIEL N. FISHMAN (via video link), Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Wednesday,
`September 14, 2016, at 1:30 p.m., Hearing Room B, taken at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`REPORTED BY: RAYMOND G. BRYNTESON, RMR,
`
`CRR, RDR
`
`
`571-272-7822
`
`IPR2015-01341, Paper No. 45
`December 8, 2016
`
`
`
`RECORD OF ORAL HEARING
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`THE BOEING COMPANY,
`Petitioner,
`vs.
`SEYMOUR LEVINE,
`Patent Owner.
`- - - - - -
`Case IPR2015-01341
`Patent RE39,618
`Technology Center 3600
`Oral Hearing Held: Wednesday, September 14, 2016
`
`BEFORE: MICHAEL W. KIM; TRENTON A. WARD; and
`DANIEL N. FISHMAN (via video link), Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Wednesday,
`September 14, 2016, at 1:30 p.m., Hearing Room B, taken at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`REPORTED BY: RAYMOND G. BRYNTESON, RMR,
`
`CRR, RDR
`
`
`
`APPEARANCES:
`
`ON BEHALF OF PETITIONER:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`RYAN J. McBRAYER, ESQ.
`Perkins Coie
`Suite 4900
`1201 Third Avenue,
`Seattle, Washington 98101-3099
`206-359-3073
`
`TED DANE, ESQ.
`PETER E. GRATZINGER, ESQ.
`Munger Tolles & Olson LLP
`355 South Grand Avenue,
`Los Angeles, California 90071
`213-683-9100
`
`35th Floor
`
`2
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`
`
`
`
`
`
`BRUCE R. ZISSER, ESQ.
`FREDERICK A. LORIG, ESQ.
`Quinn Emanuel Urquhart & Sullivan, LLP
`865 South Figueroa Street, 10th Floor
`Los Angeles, California 90017
`213-443-3000
`
`3
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2015-01341
`Patent RE39,618
`
`
`P R O C E E D I N G S.
`(1:30 p.m.)
`
`
`
`
`
`
`
`JUDGE WARD: Good afternoon. We are here this
`afternoon for oral arguments in Inter Partes Review matter
`number IPR2015-01341. The case in which Boeing Company
`is the Petitioner and Seymour Levine is the Patent Owner.
`The Panel for the hearing today is my colleague,
`Judge Kim, sitting here to my right; myself, Judge Ward; and
`Judge Fishman joining us on screen here from our regional
`office in Denver, Colorado.
`Good afternoon, Judge Fishman. Can you hear us
`and see as well?
`JUDGE FISHMAN: I can.
`JUDGE WARD: Thank you. So I would like to
`start by getting appearances of counsel. And, counsel, if you
`would, when you enter your appearance, if you could step to
`the microphone for us and do that, starting with the Petitioner.
`MR. McBRAYER: Good morning, Your Honor.
`Ryan McBrayer, lead counsel for The Boeing Company, the
`Petitioner.
`And with me today are Ted Dane and Peter
`Gratzinger of Munger Tolles, who are both admitted pro hac
`vice, and, with the permission of the Panel, Mr. Dane will be
`presenting our argument today.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`4
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-01341
`Patent RE39,618
`
`
`JUDGE WARD: Thank you, Mr. McBrayer.
`Thank you, Mr. Dane. And counsel for Patent Owner?
`MR. ZISSER: Your Honor, good afternoon. Bruce
`Zisser, lead counsel for Seymour Levine, the Patent Owner.
`And with me today is Frederick Lorig, who was
`admitted yesterday pro hac vice and, with the Panel's
`permission, will be presenting argument today.
`JUDGE WARD: Thank you, Mr. Zisser, Mr. Lorig.
`So I have got a few administrative details I want to go over
`before we get started on the hearing, primarily just to talk
`about the format.
`As was mentioned in the scheduling order for this
`case, each side will have 45 minutes to argue. Petitioner, you
`may reserve time for rebuttal if you wish to do so. Just
`inform me how much time you want to reserve when you
`begin.
`
`Also, I want to make sure that counsel are aware,
`our colleague, Judge Fishman, in Denver, isn't able to see the
`screen that we have here in the courtroom. Keep that in mind
`when you are referring to a demonstrative. Just make sure
`you mention that slide number so that Judge Fishman can
`follow along.
`Counsel for Petitioner, do you have any questions?
`MR. DANE: No, Your Honor.
`JUDGE WARD: Patent Owner, any questions?
`
`
`
`5
`
`
`
`Case IPR2015-01341
`Patent RE39,618
`
`
`MR. LORIG: No, Your Honor.
`JUDGE WARD: Petitioner, when you are ready
`you may begin.
`MR. DANE: Thank you, Your Honor. First let me
`thank the Board for allowing me the opportunity to argue in
`front of the Board.
`JUDGE WARD: Remind me of your name again,
`
`counsel.
`
`MR. DANE: Ted Dane, D-a-n-e.
`JUDGE WARD: Thank you, Mr. Dane.
`MR. DANE: By this stage of the proceeding there
`is not very much in dispute. The purported invention of the
`'618 patent was a maintenance system in which aircraft
`equipment is monitored onboard the aircraft while it is in
`flight, collected and gathered at an onboard transmitter, sent
`through a wireless communication downlink to a central
`ground- based station where it is analyzed and maintenance
`advice is generated through that analysis.
`And there is no dispute at this stage that what I
`have just described was not new as of the time that the '618
`application was filed. Onboard monitoring systems used to
`generate maintenance information for aircraft were in
`existence and were being used at the time of the filing of the
`application.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`6
`
`
`
`Case IPR2015-01341
`Patent RE39,618
`
`
`In fact, there was a standard, the ARINC 618- 1
`standard, that described these onboard maintenance systems.
`And many airlines were, in fact, implementing these systems.
`I've put on the screen what is slide 2, and it shows
`figure 7 from Ward Exhibit 1015. And I just put this up as
`one example, but we can see similar disclosures in the
`Dowling reference and in the Dyson reference, which are
`major pieces of prior art, and for the Ward reference which is
`a reference upon which we rely for ground 1 and 4.
`We see here that there is an ACMS system, which
`is an Aircraft Condition Monitoring System, which gathers
`equipment information onboard the aircraft, produces periodic
`reports that it sends via data link to a ground-based software,
`man-based system, where analysis is performed, including
`analysis of the engine, and out of that comes maintenance
`information in the form of trends, alert messages and
`information regarding corrective action.
`And the Ward reference, to put this in the framing
`of what was happening in the real world, this is a Rolls-Royce
`employee who wrote this reference and he described this as a
`system that was being implemented at the time by British
`Airways, Lufthansa, Cathay Pacific, and Cyprus Airlines.
`Chetail, one of our other references, describes the
`system that is described in the Dyson reference which was
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`7
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-01341
`Patent RE39,618
`
`created by GE and called the GEM System, as being
`implemented at the time by Air France.
`And Dowling describes the same type of system
`being used by United States airlines, by TWA, by United and
`by Delta. So this was pervasive. This basic idea of this
`invention was nothing new.
`We have an onboard transmitter. We have data
`being sent relating to aircraft equipment to the ground, a
`ground station that analyzes this information, and creates
`maintenance alerts and corrective actions.
`So what remains in dispute? With regard to the
`independent claims, claims 4 and 14, the only limitation that
`the Patent Owner has disputed being present when our prior
`art references were disclosed is the portable positional
`limitation, portable for claim 4, positional for claim 14. And
`I will address those briefly.
`It is not clear based upon the demonstratives that
`we received from the Patent Owner whether he is still even
`maintaining this argument. He did not introduce any
`evidence. Once we provided the supplemental declaration of
`Dr. Helfrick and cited to testimony showing that this
`limitation was disclosed by ACARS transmitters, there was no
`response from the Patent Owner. So it may be that this is no
`longer a dispute, but I will address it briefly because I
`recognize we have the burden.
`
`
`
`8
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-01341
`Patent RE39,618
`
`
`Most of the briefing has concerned instead the
`position data claims, the dependent claims, claims 8 to 10.
`And there are several reasons why those claims are also
`invalid.
`
`There is a claim construction issue that affects
`which grounds apply to determine the unpatentability of those
`claims, and I will get to that in my discussion, but before I get
`to that there is one ground, or actually two grounds for which
`there is no claim construction issue and for which the claims
`are invalid under either our construction of the claims or the
`Patent Owner's construction of the claims.
`And those are grounds, we say here grounds 1 to 3.
`To be fair to the Patent Owner, the Patent Owner has argued a
`separate issue about what maintenance advice means for
`ground 2, so that really should say grounds 1 and 3, and here I
`am, I'm sorry, Judge Fishman, I am here referring to slide 3,
`our overview slide.
`And for grounds 1 and 3 the Patent Owner's only
`argument for how the claims can survive the grounds that we
`have asserted is that he can swear behind Monroe and show
`that Monroe does not qualify as prior art.
`And as I will show, the Patent Owner does not
`come anywhere close to being able to swear behind the
`Monroe reference. So for that reason alone, regardless of the
`claim construction issue, those claims are also invalid.
`
`
`
`9
`
`
`
`Case IPR2015-01341
`Patent RE39,618
`
`
`The claim construction issue, which I will address
`subsequently, involves the question of whether this aircraft
`position data actually needs to be used in order to generate the
`maintenance advice. That is the position the Patent Owner
`has asserted. Our position is, looking at the way the claims
`are worded and looking at the support in the specification,
`that is not required.
`All that is required is that the position data be
`among the various categories of digital aircraft performance
`data that are collected on the plane and sent to the ground,
`some of which is used to generate maintenance advice, but
`there is neither a requirement in the claims that the location
`data be used to generate maintenance advice nor, importantly,
`because this is a claim construction issue, is there any
`disclosure in the specification of the use of location data for
`the purpose of generating maintenance advice.
`And if the Board accepts our claim construction,
`there are two additional grounds upon which these limitations
`are invalid. The first is the Printed Matter Doctrine, under
`which informational limitations that are not functionally
`related to the physical substrate, here to the maintenance
`advice that is produced by this claimed maintenance system,
`lack patentable weight and, therefore, do not distinguish an
`invention from prior art.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`10
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-01341
`Patent RE39,618
`
`
`And separately, in particular ground 4, which is
`based upon the disclosure of the ARINC standard for flight
`maintenance computers, that discloses the transmission over
`the same ACARS system which transmits maintenance
`information down to the ground for use in onboard
`maintenance systems, as disclosed in Ward and Dowling and
`Dyson. It discloses that same system being used to also
`transmit location data to the ground.
`JUDGE KIM: Counsel, if I can go back to what
`you said before about the specification doesn't have -- is not
`using the data to actually generate the information, and that
`seems to implicate a possible written description issue.
`But since that is outside our purview, how are we
`supposed to evaluate that? I mean, the claim says what it
`says, so how much relevance does the fact that the
`specification may be vague about it really inform the claim
`construction of the claim term itself?
`MR. DANE: Judge Kim, I think if -- I think you
`are correct that if your conclusion is that the claim
`unambiguously says that this data is being analyzed, including
`the location data, I would agree that I think then this turns
`into a written description issue.
`Our view, and as I will argue, we think the claim
`terms are ambiguous and could be interpreted either to require
`that or simply to require that the information be sent to the
`
`
`
`11
`
`
`
`Case IPR2015-01341
`Patent RE39,618
`
`ground. And if the Board agrees that there is some ambiguity
`there, then it is proper to look at the specification for
`purposes of claim construction, not for purposes of
`determining whether claims that would read as the Patent
`Owner submits that they do are supported. We understand
`that that is not for the Board to determine.
`JUDGE KIM: Thank you.
`MR. DANE: And on that point, if the Board were
`to conclude that the Patent Owner's interpretation is correct
`that this location data must be used in order to generate
`maintenance advice, that provides yet an additional ground in
`addition to the others that I will review for why the Patent
`Owner cannot antedate the Monroe reference because, as we
`will see, the Patent Owner points to nothing in the October 9
`disclosure upon which he bases his conception argument that
`shows use of location data for the purpose of maintenance
`advice.
`
`The only disclosure he identifies is precisely what
`is disclosed in ARINC 702- 6, which is location data being
`sent to a transmitter onboard the plane and sent down to the
`ground. And so there is no evidence of conception of the
`claims as interpreted by the Patent Owner.
`So quickly with regard to the portable/positional
`limitation. It is important for the Board to appreciate that
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`12
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-01341
`Patent RE39,618
`
`these are not terms that appear anywhere in the specification.
`They were added during the reissue process.
`And the only support in the specification for the
`notion of some positionability or portability is at column 4.
`And, I'm sorry, Judge Fishman, I've turned to slide 4.
`In the patent at column 4, lines 57 through 60,
`there is a reference to SMART, which the patent describes as
`the transmitter for the inventive system, as being a line
`replaceable unit.
`Consistent with that being the only disclosure for
`portable or positionability, in the concurrent litigation the
`Patent Owner has accused the Boeing system of meeting this
`limitation because Boeing uses ACARS transmitters, either
`VHF, HF, or satellite transceivers, and the Patent Owner's
`position is that each of these transceivers is portable in the
`sense that it is a modular line replaceable unit.
`So everyone recognizes that this notion of
`portability or positionability is the notion of
`replaceability/removability.
`JUDGE WARD: Does the petition have a position
`as to what one of ordinary skill in the art would have
`understood an LRU, Line Replaceable Unit, to have been at
`the time of the invention?
`MR. DANE: Well, our understanding, Your
`Honor, is that line replaceable units typically, as they are
`
`
`
`13
`
`
`
`Case IPR2015-01341
`Patent RE39,618
`
`understood -- and I'm not sure if this is in the papers, I'm
`giving my own understanding -- is that line replaceable units
`tend to be modular systems.
`There are usually racks into which they are
`installed. There are places for them onboard the aircraft and
`they can easily be pulled out. There are connectors to which
`they can connect.
`And that's the idea. They are modular in the sense
`that, when they fail, when you need to replace them, it is easy
`to take them out. You don't have to tear apart the fuselage or
`do any major drilling or any type of engineering to get them
`out. They are very easy to take out.
`JUDGE WARD: And if the Panel were going to
`look to the record to try and find support for that
`understanding, where would we find it?
`MR. DANE: I believe, Your Honor, that our
`expert, Dr. Helfrick, did refer to the notion of line replaceable
`units in his declaration. And as I will show shortly, there is a
`specific reference in one of the standards for one of these
`types of transceivers, the satellite transceiver, which
`specifically says it is a line replaceable unit.
`So if we are equating line replaceable unit with
`replaceability/removability, it is in the record in regard to the
`standard for satellite data communication units.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`14
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-01341
`Patent RE39,618
`
`
`And here we can clearly see that every one of our
`primary references discloses the use of an ACARS transmitter,
`an ACARS system. And, Judge Fishman, I'm now referring to
`slide 5. And in slide 5 we see in the lower right corner the
`reference to Ward Exhibit 1015 at 7 talks about the use of
`ACARS, data links using ACARS.
`Up above that the Dowling reference, Exhibit 1013
`at figure 1, shows the data link from the aircraft to the ground
`by an ACARS station. To the left of that, in the upper left,
`the Dyson reference, Exhibit 1019, also has a figure which
`shows that the reports are sent via ACARS from the plane
`down to the ground.
`And, lastly, ARINC 624-1, which is the reference
`for the onboard maintenance system, also specifically shows
`that the data link can be an ACARS system.
`JUDGE WARD: Mr. Dane, how do you respond to
`the Patent Owner's argument that none of these references that
`you have shown us here on slide 5 provide any express
`disclosure as to the physical configuration of their
`transmitter?
`MR. DANE: Well, Your Honor, I will get to that
`right now. So the Board granted our motion to supplement the
`record to specifically address this issue. And in the
`declaration provided by Dr. Helfrick he addressed this issue,
`the Helfrick declaration at paragraph 25.
`
`
`
`15
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-01341
`Patent RE39,618
`
`
`And specifically with regard to the disclosure of
`an ACARS system, that is, ARINC 618- 1 is the standard for
`that system, it tells you what an ACARS system consists of.
`And there are three parts of it. There is airborne system
`equipment, there is the communication network down to the
`ground, and there is a ground station.
`So here we're focused on the transmitter, the
`airborne system, and the ACARS specification standard itself
`says, just consistent with the Patent Owner's own infringement
`contentions in the concurrent litigation, there are three types.
`There is VHF, HF and satellite air/ground to network
`transmitters.
`And each of those involve a transceiver. And it
`references the specific standards that describe these particular
`types of transceivers.
`Dr. Helfrick testified in his declaration, that was
`provided following the Board's ruling allowing us to
`supplement the record, that he had never heard of a
`non- removable transmitter, and that the applicable industry
`standards make it clear that transmitters used in conjunction
`with ACARS are removable and frequently they are LRUs.
`And he testified that one of skill in the art would
`understand that the ACARS data links would necessarily
`include a transmitter that was portable or positional on an
`aircraft.
`
`
`
`16
`
`
`
`Case IPR2015-01341
`Patent RE39,618
`
`
`Now, one point that is important here is, when the
`court permitted us the opportunity to provide this declaration
`for Dr. Helfrick, it indicated that the Patent Owner would
`have every opportunity to respond to that testimony, that they
`would have the opportunity to cross-examine Dr. Helfrick, put
`in their own evidence.
`They did nothing. They did not put in a response
`to this evidence. They did not depose Dr. Helfrick. They did
`not depose a contrary -- they did not submit a contrary
`opinion from their own expert. So there is no contradictory
`evidence on this point. And, Judge Fishman, I was referring
`to slide 7 there with regard to the Helfrick testimony which is
`Helfrick supplemental declaration at paragraphs 4 and 5 which
`is Exhibit 1042.
`JUDGE FISHMAN: I'm reading the quote for
`paragraph 4: Second, the applicable industry standards make
`clear. Is he referring to standards that are of record?
`MR. DANE: Yes, Your Honor.
`JUDGE FISHMAN: Thank you.
`MR. DANE: And here is the standard that
`specifically is referring to the use of an LRU. This is the
`standard that is referenced in the general ACARS standard. It
`is listed at the very end of references that one could refer to
`to understand how to use these transceivers.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`17
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-01341
`Patent RE39,618
`
`
`And the standard for the satellite version of the
`transceiver specifically says that there are a bunch of
`different subsystems. The first uses an SDU, which is a
`Satellite Data Unit, that's the satellite transceiver, and the
`RFU, the Radio Frequency Unit.
`And it then says that the subsystems that are used
`in the satellite system constitute multiple line replaceable
`units. So there is an express disclosure of line replaceable
`units.
`
`The next two references, and this is slide 9, and in
`slide 9 we cite to Exhibit 1042 which is ACARS
`Characteristic 753, which is the standard for HF transceivers,
`as well as Exhibit 1042, Exhibit C, at Sections 1.4.2, which is
`the standard for VHF communication transceivers, which is
`ACARS Characteristic 716 -9.
`And both of these refer to the requirement that, for
`the HF transceiver and the VHF transceiver, they must be
`interchangeable, and, it says, regardless of manufacturing
`source, meaning that you have to be able to take them out and
`replace them. When you want to substitute, you find a better
`deal, you get a manufacturer you like better, you can pull
`them out, put them in, and, if there is an improvement in the
`technology, you are able to replace them.
`And, as I said, there has been no contrary evidence
`by the Patent Owner on this point. We put in all of this
`
`
`
`18
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-01341
`Patent RE39,618
`
`evidence showing that these are removable, that they are
`necessarily removable. There is really no dispute about this.
`And the Patent Owner neither put in an expert
`opinion to say that that is not right, he did not cross-examine
`our expert on this point, or put in any contrary evidence.
`So unless there are further questions on this point,
`I will move to the dependent claims.
`And I should have mentioned at the beginning, I'm
`hoping to get through this as quickly as I can. I would like to
`reserve 10 minutes for rebuttal, if I can. So I'm hoping to be
`done in 35 minutes.
`JUDGE WARD: Noted.
`MR. DANE: With regard to the dependent claims,
`claims 8 through 10, as I mentioned, these each specify that
`the digital aircraft performance data includes locational data.
`8 generally says aircraft position data, and 9 and 10 specify
`either GPS data or information provided by an inertial
`navigation system, and that's shown in slide 10.
`If we look to slide 11, as I said, there is one
`argument with regard to these claims that does not depend
`upon claim construction, and that is the Patent Owner's
`inability to swear behind the Monroe reference.
`The Patent Owner's only argument for why the
`claims 8 through 10 can survive grounds 1 and 3, other than
`the portable/positional argument, if he is still alleging that, is
`
`
`
`19
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-01341
`Patent RE39,618
`
`that he can show that Monroe is not prior art by antedating the
`Monroe reference. And the evidence clearly establishes that
`he has not been able to do so.
`There are three documents upon which the Patent
`Owner relies in order to show prior conception. Actually
`there are two. There are May 18th notebook pages. That is
`Exhibit 2002. And, Judge Fishman, I'm now looking at the
`time line on slide 11.
`There is the October 9 invention disclosure,
`Exhibit 2003. That is really the document upon which he
`bases his entire claim that he can show that there is prior
`conception of the invention.
`And there is an October 23rd disclosure, Exhibit
`2004, which the Patent Owner does not discuss and which is
`substantively identical to the October 9 disclosure. There are
`really no differences. So I'm going to focus on the October 9
`disclosure.
`But what is important is that all three suffer from
`the same defect. And that defect is that there is no
`independent corroboration of any of these documents.
`JUDGE WARD: Counsel, you say there is no
`independent corroboration, yet there is testimony from the
`patent attorney, Mr. Townsley, that he received and, indeed,
`reviewed this invention disclosure prior to the October 11th
`date of Monroe. Is that correct?
`
`
`
`20
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-01341
`Patent RE39,618
`
`
`MR. DANE: He testified that he reviewed an
`invention disclosure. He does not testify that he reviewed
`either the October 9 or the October 23rd invention disclosure.
`And I will address why Mr. Townsley's testimony does not
`provide corroboration.
`If I can, I would very quickly like to just review.
`The Patent Owner has raised, in response to our motion to
`exclude these documents as uncorroborated, he has made the
`argument that he needs no corroboration because they are
`documents and we don't need to corroborate documents. And
`we believe that is a misreading, a misapplication of the law.
`So there is no dispute that the May 18 notebook
`pages, the October 9 disclosure, and the October 23
`disclosure, none of them are witnessed. And we have no
`independent witness who testifies that they saw any of those
`documents around the time that they were prepared and claim
`to be prepared.
`And we have cited a number of cases that hold that
`that is not adequate proof of conception, that you cannot rely
`simply on the inventor's own self-serving testimony or
`documents to show conception.
`Now, the Patent Owner in his response to our
`motion has attempted to reform his conception proof by now
`characterizing it as consisting entirely of these invention
`disclosures and no testimony whatsoever. But he can't do
`
`
`
`21
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-01341
`Patent RE39,618
`
`that. And that's not actually the proof that he has submitted
`in this case.
`His invention disclosure is not a public document.
`It is not self-authenticating. It has no significance or meaning
`unless it is attached to his own testimony that I created this
`document, this document reflects my conception of the
`invention, and it was created on such and such a date.
`Necessarily, you must have inventor testimony coupled to the
`document in order to show conception.
`So the Patent Owner's attempt to distinguish this
`case from the myriad line of cases where this Board and the
`Federal Circuit has held that unwitnessed notebook pages like
`this cannot constitute proof of conception, even under the rule
`of reason analysis with other evidence, he is unable to
`distinguish those cases and his argument that they don't apply
`is incorrect.
`And I would refer to Exhibit 2009, and this is the
`Patent Owner's own declaration that he submitted in this case
`of record.
`There he stated: On or before May 18, 1996, I
`conceived in the United States of the inventions disclosed and
`claimed in U.S. Patent RE39,618. I recorded the details of my
`invention in contemporaneous handwritten notes, true and
`correct copies of which are contained in Exhibit 2002. These
`notes were recorded by me at or near the time I conceived of
`
`
`
`22
`
`
`
`Case IPR2015-01341
`Patent RE39,618
`
`my invention during the month of May 1996, and my signature
`appears on the first page of Exhibit 2002, above my printed
`name, and the first date on which the notes were recorded. As
`is my practice, each page of my notes is individually initialed
`by me and dated on the date the notes on that page were
`recorded.
`
`So this conception case clearly is based upon
`inventor testimony. It has to be. Every conception case is.
`That is the inventor testimony that was submitted here. And
`so all of the cases that we cited apply.
`We have the Neste case where the Board held that
`the rule requiring independent corroboration is to avoid the
`sort of circular situation where the inventor has his testimony
`that says I conceived of this, then says these are my
`documents that I prepared, and the two point to one another
`and are supposedly the corroboration, because, if you just
`think of it, makes perfect sense why that is inadequate.
`It's just as easy for an inventor -- frankly, it's
`easier for an inventor to fabricate a document that is
`supposedly an invention disclosure than it is to testify subject
`to cross-examination about conception. You could simply
`write the specification or change things from the
`specification, backdate it, and say that it was prepared earlier.
`That is why you need independent corroboration.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`23
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`Case IPR2015-01341
`Patent RE39,618
`
`
`And in the Neste case there were notebook pages
`bearing the inventor's initials, dated 2/20, and the inventor
`testified that he prepared them around February 20th, 2008.
`They were rejected on the ground that there must be
`authentication provided by a witness "other than the
`inventor," citing the Horton v. Stevens case.
`JUDGE WARD: Mr. Dane, can we talk about the
`testimony, or can we talk about Mr. Townsley's testimony? I
`want to ask you specifically about the statements that he has
`made where he tells us that: Mr. Levine provided me with the
`preliminary invention disclosure, which was similar in format
`and content to that contained in Exhibit 2003. I read Mr.
`Levine's preliminary invention disclosure and understood its
`contents.
`
`Do you have a case that you provided to this Panel
`in which a court found it insufficient for the corroborating
`evidence to have been to a document similar to the one
`submitted as a piece of evidence?
`MR. DANE: Well, let me address that, Your
`Honor. I'm not sure that we have a case that we have cited
`that specifically deals with -- I have reviewed many of the
`cases and I can confidently say, if the Board looks at the
`circumstances of those cases, it will conclude that that is not
`adequate corroboration because it is too vague. This is a
`requirement that has some rigor to it.
`
`
`
`24
`
`
`
`Case IPR2015-01341
`Patent RE39,618
`
`
`And if I can skip ahead to our discussion of Mr.
`Townsley, I will show why this is insufficient evidence.
`In the Patent Owner's response, the Patent Owner
`said that Mr. Townsley made "a summary of an invention
`disclosure in his request for a patentability search, which
`could make it sound as if they are talking about the October 9
`disclosure. But they are not talking about the October 9
`disclosure because this is in a September 27th document.
`And if we look at what exactly did Mr. Townsley
`say on September 27th, 1996, he said the invention boils down
`to replacing current onboard flight data recorders with
`onboard sensors and radio transmitters. He is talking about a
`separate purpose of the invention, which is to have a remote
`flight data recorder instead of the one onboard the aircraft.
`Tha
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
