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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________
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`TV MANAGEMENT INC., D/B/A GPS NORTH AMERICA
`Petitioner,
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`v.
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`PERDIEM CO., LLC.
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`Patent Owner
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`_________________
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`Case IPR2016-01278
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`U.S. Patent 9,071,931
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`
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`_________________
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`PETITIONER’S SUR SUR REPLY
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`i
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`Mr. Diem’s Declaration (Ex. 2009, “Declaration”) lacks evidence of prior
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`conception of every limitation of the ’931 patent claims, including, for example,
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`claim elements relating to first and second levels of administrative privileges. The
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`words “privilege,” “administrative privileges, or “level of administrative
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`privileges” appear nowhere in the Declaration. Patent Owner uses its Sur Reply to
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`argue for the first time that levels of administrative privileges mean “access
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`codes.” By waiting to raise this claim construction argument until now, Patent
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`Owner has waived it. (See Scheduling Order, p.3). Even if the argument is
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`considered, the specification differentiates between “various levels of
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`administrator privileges” and “access privileges.” (Ex. 1001, 5:39-42 and 5:51-
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`57). “Access codes,” (such as a passcode, id., 7:61-64) are even further removed
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`from “administrative privileges.” Mr. Diem also fails to show how a server
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`“defines” and “checks” administrative privileges; something Patent Owner
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`likewise fails to explain.
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`
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`Neither does the Declaration establish that Mr. Diem conceived of the
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`claimed comparison occurring at the server. Patent Owners admits the deficiency
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`by asking the Board to make a “logical inference.” First, it is telling that Patent
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`Owner produced source code allegedly showing a server that stores information
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`without source code showing a server performing the claimed calculations. The
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`Declaration demonstrates that Patent Owner has access to numerous source code
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`1
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`files, and still this pertinent source code was not produced. Second, the “logical
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`inference” that Patent Owner asks of the Board equally applies to Mr. Diem’s PDA
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`performing the required calculation. Ex D of the Declaration shows how a PDA
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`includes all the information (e.g., zone, location, user ID, etc.) and application
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`software to make the comparison. Mr. Diem’s PDA software even has a “contact
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`list” for sending location links. (Ex. 2009, Ex. D, p.2). Third, Patent Owner
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`cannot establish prior conception using Mr. Diem’s uncorroborated testimony in
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`2017 about what his servers allegedly did circa 2005. (Institution Dec. at p.19
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`(“Proof of conception cannot turn on the inventor’s own testimony.”)).
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`The Declaration also fails to establish the claim elements relating to a
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`“group.” Although Mr. Diem identifies a “group” variable in his source code,
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`nothing of record shows that a server is configured to “receive a request to set” a
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`“zone”, an “event”, and an “alert” “for the group,” as required by claim 1
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`(Elements H, I and J of claim 1). When arguing patentability, Patent Owner stated
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`that “[t]he ‘group’ recited by claim 1 of the ’931 Patent must be associated with a
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`single unified event and a single unified alert.” (POR, paper 20, p.12). Applying
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`that logic here, nothing in Ex A of the Declaration shows a data structure or code
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`that unifies an event and an alert under a group. Rather, Ex A merely writes
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`several variables that may or may not be related. The group variable alone does
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`not show a server that organizes an event and alert under the group. Also, setting a
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`2
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`zone/event for a device in a group is not the same as setting a zone/event for the
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`actual group.
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`Patent Owner’s Sur Reply for the first time alleges diligence and reduction
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`to practice. Accordingly, Patent Owner waived these arguments. Even if
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`considered, Mr. Diem said he “continued to work to implement and commercialize
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`[his] system throughout 2005.” (Ex. 2009, ¶13). But this testimony is sufficiently
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`ambiguous and cannot sustain diligence and reduction to practice. It could refer to
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`any one of 11 patents sharing the same specification as the ’931 Patent; or even be
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`limited to unclaimed aspects of the system.
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`Patent Owner asks the Board to consider file names as evidence of reduction
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`to practice. Patent Owner apparently has these files but chose to conceal them
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`from Petitioner and the Board. Their contents could be incomplete or inaccurately
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`reflect their title. The file names could have been renamed without affecting the
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`file’s metadata. Accordingly, these file names should be given no weight. Even if
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`they are considered, the file “grouptrack.asap” dated September 2005 suggests that
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`Mr. Diem was not in possession of the “group” feature in May 2005. Lastly,
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`Patent Owner falsely stated that Mr. Diem “testified that he diligently worked on
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`‘his system.’” (Sur Reply, p.3). Mr. Diem never said he was diligent. Based on
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`file names only, it is unclear what aspects of “his system” he was developing, as it
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`may not even relate to the claims.
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`3
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`Respectfully submitted,
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`Date: August 7, 2017
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`/Vivek Ganti/
`
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`Vivek Ganti (Reg. No. 71,368)
`Lead Counsel for Petitioner
`HILL, KERTSCHER & WHARTON, LLP
`3350 Riverwood Pkwy, Suite 800
`Atlanta, GA 30339
`vg@hkw-law.com
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`4
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`CERTIFICATION OF SERVICE
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`
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`The undersigned hereby certifies that the foregoing paper and supporting
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`materials were served via electronic mail on August 7, 2017, as agreed to by the
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`parties pursuant to 37 C.F.R. § 42.105, in its entirety on the following:
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`Alan Whitehurst AlanWhitehurst@quinnemanuel.com
`Marissa Ducca marissaducca@quinnemanuel.com
`Quinn-PerDiem@quinnemanuel.com
`Quinn Emanuel Urquhart & Sullivan, LLP
`777 6th Street NW 11th floor
`Washington, D.C. 20001-3706
`
`Robert Babayi robert@vectoriplaw.com
`Vector IP
`3208 Q St. NW
`Washington D.C. 2007
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`Respectfully submitted,
`HILL, KERTSCHER & WHARTON, LLP
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`
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`
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`/Vivek Ganti/
`Vivek Ganti
`Lead Counsel for Petitioner
`3350 Riverwood Pkwy, Suite 800 Registration No. 71,368
`Atlanta, GA 30339
`(770) 953-0995
`
`
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`Date: August 7, 2017
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`
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`5
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