PATENT OWNER CONTINGENT MOTION TO AMEND
`
`CASE NO: IPR2016-01550
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`
`
`Paper No.______
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`PARROT S.A., PARROT DRONES S.A.S., and PARROT INC.,
`Petitioners
`
`v.
`
`QFO LABS, INC.,
`Patent Owner
`____________
`
`Case IPR2016-01550
`Patent 7,931,239
`
`
`
`
`
`PATENT OWNER CONTINGENT MOTION TO AMEND
`UNDER 37 C.F.R. §42.120
`
`
`
`Mail Stop: PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`

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`PATENT OWNER CONTINGENT MOTION TO AMEND
`
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` CASE NO: IPR 2016-01550
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`TABLE OF AUTHORITIES ...................................................................................33
`
`TABLE OF CONTENTS
`
`I. INTRODUCTION AND RELIEF REQUESTED ..............................................55
`
`II. ALL REQUIREMENTS ARE MET FOR THE SUBSTITUTE CLAIM .........66
`
`A.
`
`The Requirements of 37 C.F.R. §42.121(a) ........................................................................................ 66
`
`1.
`
`Responds to a Ground of Unpatentability ..................................................................................... 66
`
`2. Does Not Enlarge the Scope of the Claim....................................................................................... 77
`
`3.
`
`Presents a Reasonable Number of Substitute Claims .................................................................... 88
`
`B.
`
`The Requirements of 37 C.F.R. §42.121(b) ........................................................................................ 99
`
`1.
`
`Support in the Original Disclosure .................................................................................................. 99
`
`2.
`
`Support in the Earlier-Filed, Priority Disclosure ......................................................................... 1111
`
`C. Burden of Proof ................................................................................................................................ 1414
`
`III. ANALYSIS ...................................................................................................1515
`
`A. Person of Ordinary Skill .................................................................................................................... 1515
`
`B. Claim Construction ........................................................................................................................... 1515
`
`C. Patentability of the Proposed Substitute Claim ............................................................................... 1616
`
`1.
`
`The Prior Art of Record Was Considered in the '580 Patent ...................................................... 1717
`
`2.
`
`The New Prior Art in Petitioners’ IPR Petition and Amended Complaint for the '580 patent .... 2020
`
`Title–“Input Apparatus” ...................................................................................................................... 2121
`
`Replaces Thomas in all grounds ......................................................................................................... 2121
`
`Title–“Input Apparatus” ...................................................................................................................... 2121
`
`Title–“Airborne Drone Formation Control System” ............................................................................ 2121
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`1
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`PATENT OWNER CONTINGENT MOTION TO AMEND
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` CASE NO: IPR 2016-01550
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`Cited for claim limitations directed to limits on range of craft from controller ................................. 2121
`
`Title–“Micro Structure For Vertical Displacement Detection and Fabricating Method Thereof” ....... 2121
`
`Title–“Spatial Input Apparatus”.......................................................................................................... 2222
`
`Similar to Thomas and Sato ................................................................................................................ 2222
`
`CONCLUSION ....................................................................................................2525
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`2
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`PATENT OWNER CONTINGENT MOTION TO AMEND
`
`
` CASE NO: IPR 2016-01550
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` TABLE OF AUTHORITIES
`
`Cases
`
`Apple, Inc. v. Achates Reference Publ., Inc., IPR2013-00081 (PTAB June 3, 2013)
`
`(Paper No. 21)......................................................................................................... 8
`
`Belden Inc. v. Berk- Tek LLC, 805 F.3d 1064 (Fed. Cir. 2015) ................................ 9
`
`Circuit Check Inc. v. QXQ Inc. 795 F.3d 1331 (Fed. Cir. 2015) .............................39
`
`Cisco Systems, Inc. v. C-Cation Techs., LLC, IPR2014-00454 (PTAB Aug. 29,
`
`2014) (Paper 12) .................................................................................................... 7
`
`Coalition for Affordable Drugs IV LLC v. Pharmacyclics, Inc., IPR2015-01076
`
`(PTAB Oct. 19, 2015) (Paper 33) ........................................................................... 7
`
`Cuozzo Speed Technologies, LLC v. Lee., 579 U.S. _____, 136 S.Ct. 2131 (2016)
`
` ..............................................................................................................................12
`
`Fin Control Sys. Pty, Ltd. v. OAM, Inc., 265 F.3d 1311 (Fed. Cir. 2001) ...............15
`
`Genzyme Therapeutic Prods. Ltd. v. Biomarin Pharm. Inc., 825 F.3d 1360
`
`(Fed.Cir. 2016) ....................................................................................................... 8
`
`In re Translogic Tech., Inc., 504 F.3d 1249 (Fed. Cir. 2007) .................................12
`
`In re NuVasive, Inc., Appeal No. 2015-1672-73 (Fed. Cir., Nov. 9, 2016) ............. 8
`
`Neochord, Inc., v. University of Maryland, Baltimore et al., IPR2016-00208
`
`(PTAB May 24, 2016) (Paper 6) ..........................................................................18
`
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) ..12
`
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`3
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`PATENT OWNER CONTINGENT MOTION TO AMEND
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` CASE NO: IPR 2016-01550
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`Statutes
`
`35 U.S.C. §103 .........................................................................................................11
`
`35 U.S.C. §312(a)(3) .............................................................................................8, 9
`
`35 U.S.C. §314(a) ...................................................................................................... 1
`
`Regulations and Manuals
`
`37 C.F.R. § 11.18(b) ...............................................................................................55
`
`37 C.F.R. § 42.11 ....................................................................................................55
`
`37 C.F.R. § 42.24 ....................................................................................................21
`
`37 C.F.R. §42.100(b) ........................................................................................ 12, 15
`
`37 C.F.R. §42.104(b) ..................................................................................... 8, 9, 21
`
`MPEP §2141.02(II). .................................................................................................17
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`
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`4
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`PATENT OWNER CONTINGENT MOTION TO AMEND
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` CASE NO: IPR 2016-01550
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`I. INTRODUCTION AND RELIEF REQUESTED
`
`QFO Labs, Inc. (“Patentee”) moves under 35 U.S.C. §316(d) and 37 C.F.R.
`
`§42.121 to amend claim 10 of U.S. Patent No. 7,931,239 (“the '239 patent”)
`
`contingent upon the outcome the trial in this proceeding. If the Board finds original
`
`claim 10 unpatentable, Patentee respectfully requests the Board to grant this
`
`Contingent Motion to Amend the '239 patent to include the corresponding
`
`substitute claim presented herein.
`
`In this proceeding, trial was instituted on a single ground that independent
`
`method claim 10 was obvious under pre-AIA Section 103 over Louvel1 in view of
`
`Thomas,2 and further in view of Jimenez.3 In the Decision, the Board did not adopt
`
`Patentee’s proposed construction of the term “orientation.” (Decision, p.11).
`
`Accordingly, the Board found that the arguments Patentee made that the references
`
`did not teach dynamically determining a gravitational reference were “not
`
`persuasive because claim 10 does not require in express terms dynamically
`
`determining a gravitational reference.” (Decision, p.25, emphasis added).
`
`This Contingent Motion to Amend includes additional limitations that clarify
`
`the intended construction of “orientation” as argued by Patentee. The same claim
`
`
`1 U.S. Patent Publication No. 2002/0104921, filed April 5, 2001 (Ex.1004).
`
`2 U.S. Patent No. 5,128,671, issued July 7, 1992 (Ex.1006).
`
`3 U.S. Patent Publication No. 2002/0106966, filed February 8, 2001 (Ex.1007).
`
`
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`5
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`PATENT OWNER CONTINGENT MOTION TO AMEND
`
`
` CASE NO: IPR 2016-01550
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`limitations proposed to be added by this contingent Motion to Amend have already
`
`been subject to examination in a co-pending Fast Track application that is a
`
`continuing application of the '239 patent, and that issued as U.S. Patent No.
`
`9,645,580 on May 9, 2017 (“the '580 patent”).4 The claims of the '580 patent with
`
`this added clarifying claim language were found patentable over all the IPR filings
`
`by Petitioners, as well as the Decision. As the allowance of the '580 patent
`
`confirms, the Contingent Motion to Amend can meet each of the requirements in
`
`the statute, regulations and precedential decisions that govern such motions.
`
`II. ALL REQUIREMENTS ARE MET FOR THE SUBSTITUTE CLAIM
`
`A. The Requirements of 37 C.F.R. §42.121(a)
`
`1.
`
`Responds to a Ground of Unpatentability
`
`The proposed substitute independent method claim 11 further distinguishes
`
`original claim 10 over the prior art at issue in the single instituted ground of
`
`unpatentability under pre-AIA Section 103 at issue in this proceeding. See 37
`
`C.F.R. § 42.121(a)(2)(i). The very same prior art (Louvel, Thomas and Jimenez)
`
`and the Decision were all of record and were expressly considered and
`
`distinguished in the Notice of Allowance for the '580 patent, as follows:
`
`
`4 U.S. Application No. 15/272,414, filed on September 21, 2016 (Ex.2011), was
`
`issued as U.S. Patent No. 9,645,580 on May 9, 2017. (Ex.2012).
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`6
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`PATENT OWNER CONTINGENT MOTION TO AMEND
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` CASE NO: IPR 2016-01550
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`
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`
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`Ex.2011, p.6-7.
`
`2.
`
`
`
`Does Not Enlarge the Scope of the Claim
`
`As shown in the attached claims appendix, proposed substitute independent
`
`method claim 11 retains all features of the original independent method claim 10,
`
`with no claim language deleted. The only claim limitations added are clarifying
`
`limitations that, under a broadest reasonable interpretation (BRI) construction, only
`
`
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`7
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`PATENT OWNER CONTINGENT MOTION TO AMEND
`
`
` CASE NO: IPR 2016-01550
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`narrow the claim scope. The correction of “RC control” to “RC controller” fixes an
`
`obvious typographical error. The “sensed orientation of said handheld structure” in
`
`claim 10 has been clarified to expressly recite that the sensed orientation is sensed
`
`“by dynamically sensing a gravitational reference and a relative tilt of said
`
`handheld structure with respect to said gravitational reference in response to a user
`
`remote from said flying structure selectively orienting said handheld structure.” A
`
`whereby clause has been added to clarify the intended operation of the claimed
`
`method “whereby on a moment-to-moment basis said actual orientation of said
`
`flying hovercraft mimics said sensed orientation of said handheld structure of said
`
`RC controller.” None of these added limitations enlarge the scope of the substitute
`
`claim. See 37 C.F.R. §42.121(a)(2)(ii); 35 U.S.C. §316(d)(3).
`
`3.
`
`
`
`Presents a Reasonable Number of Substitute Claims
`
`For each original claim, Patentee proposes only one substitute claim. The
`
`proposed substitute claim therefore fits the “presumption . . . that only one
`
`substitute claim would be needed to replace each challenged claim,” and thus
`
`present a reasonable number of substitute claims. See 37 C.F.R. §42.121(a)(3); 35
`
`U.S.C. §316(d)(1)(B). See also, Corning Optical Communication RF, LLC v. PPC
`
`Broadband, Inc., IPR2014-00441, Representative Order on Motion to Amend
`
`Claims, Paper 19 (PTAB Oct. 30, 2014).
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`
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`8
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`PATENT OWNER CONTINGENT MOTION TO AMEND
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` CASE NO: IPR 2016-01550
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`B. The Requirements of 37 C.F.R. §42.121(b)
`
`1.
`
`Support in the Original Disclosure
`
`
`
`The originally filed disclosure for nonprovisional Application No.
`
`11/838,040 (Ex. 1002, p.414-473) (“the '040 application”) provides Section 112
`
`support for the proposed substitute claim. See, Nichia Corp. v. Emcore Corp.,
`
`IPR2012-00005, Representative Order on Written Description Support for
`
`Substituted Claims, Paper 27 (June 3, 2013). Based on the disclosure of the '040
`
`application as originally filed, one of ordinary skill in the art would have
`
`understood that the inventors possessed the method of the substitute claim at the
`
`time of the application. (Ex.2013, ¶50.)
`
`Specifically, the originally filed disclosure for the '040 application provides
`
`support for the “dynamically sensing” and the “whereby” limitations added in
`
`substitute claim 11. With respect to the “dynamically sensing a gravitational
`
`reference” limitation for the claimed RC controller, support is found, for example,
`
`at page 18 of the '040 application which discloses:
`
` A homeostatic control system IS [sic] positioned within the body to
`
`sense a desired orientation of the RC controller by a user selectively
`
`positioning an orientation of the RC controller. The homeostatic
`
`control system includes an XYZ sensor arrangement and associated
`
`control circuitry as previously described that dynamically determines
`
`an inertial gravitational reference for use in sensing the desired
`
`orientation.
`
`
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`9
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`PATENT OWNER CONTINGENT MOTION TO AMEND
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` CASE NO: IPR 2016-01550
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`(Ex.1002, p.431)
`
`With respect to the added “whereby” limitation that tracks the language from
`
`the whereby clause in claim 21 of the '532 patent and is similar to the such that
`
`clauses in claims 7 and 15 of the '580 patent, support is found, for example, at page
`
`12 of the '040 application as originally filed which discloses:
`
`The unique and intuitive one-handed bee controller also includes an
`
`XY sensor arrangement and associated control circuitry that allows
`
`the craft to mimic the position of the controller in terms of yaw, pitch,
`
`roll and lateral flight maneuvers.
`
`(Ex.1002, p.425.)
`
`The table below provides various examples of support in the originally filed
`
`'040 application (Ex.1002, p.414-473), passages from which are identified by page
`
`and line numbers in the application as originally filed for each of the claim
`
`limitations for substitute claim 11:
`
`Substitute Claim
`11. A method for operating a radio controlled
`(RC) homeostatic flying hovercraft having at least
`four battery powered generally downwardly directed
`thrusters using an RC controller separate and remote
`from said flying hovercraft, said method comprising:
`providing as part of said RC controller a handheld
`structure housing a sensor system;
`using said sensor system in said RC controller to
`sense at least a two dimensional, two-axis
`sensed orientation of said handheld structure
`by dynamically sensing a gravitational
`reference and a relative tilt of said handheld
`structure with respect to said gravitational
`
`
`
`10
`
`Figure
`3, 22A,
`22B
`
`Page, Line
`p.17:7-16
`p.17:28-p.18:1
`
`3, 22A,
`22B
`
`
`p.17:28-
`p.18:1-5
`p.18:1-5
`p.12:8-9
`p.17:7-16
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`
`

`

`PATENT OWNER CONTINGENT MOTION TO AMEND
`
`
` CASE NO: IPR 2016-01550
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`reference in response to a user remote from
`said flying structure selectively orienting said
`handheld structure;
`communicating a desired orientation by radio
`frequency (RF) communication information to
`said flying hovercraft, said desired orientation
`including information based on said sensed
`orientation of said handheld structure;
`using a sensor system in said flying hovercraft to
`dynamically determine an actual orientation of
`said flying hovercraft, said sensor system
`including at least a three-dimensional, three-
`axis sensor;
`using control circuitry in said flying hovercraft to
`automatically and dynamically control a thrust
`produced by each of said thrusters to achieve
`and homeostatically maintain said actual
`orientation of said flying hovercraft in
`response to said desired orientation
`communicated to said flying hovercraft and
`said actual orientation determined by said
`sensor system in said flying hovercraft without
`additional control information communicated
`to said flying hovercraft,
`whereby on a moment-to-moment basis said
`actual orientation of said flying hovercraft
`mimics said sensed orientation of said
`handheld structure of said RC controller.
`
`3
`
`p.18:6-8
`
`4b, 7, 8,
`11, 28,
`31
`
`8, 13
`
`p.18:9-16
`
`p.19:6-19
`p.24:17-27
`
`
`
`
`
`p.22:24-26
`p.12:9-11
`p.10:20-22
`
`3
`
`p.10:20-27
`
`
`
`Confirmation of Section 112 support of the clarifying limitations added to
`
`substitute claim 11 is further evidenced in the prosecution history of the '580
`
`patent. (see Ex.2011, p.186).
`
`2.
`
`Support in the Earlier-Filed, Priority Disclosure
`
`
`
`
`
`The '040 application claims priority as a divisional to an earlier filed non-
`
`11
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`

`

`PATENT OWNER CONTINGENT MOTION TO AMEND
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`
` CASE NO: IPR 2016-01550
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`provisional application, Application No. 10/526,153, filed January 16, 2006, which
`
`is a national stage entry application of an earlier filed PCT application, PCT
`
`Application No. PCT/US03/27415, filed September 2, 2003 (the “PCT priority
`
`application”). (Ex.2001).5 The originally filed disclosure for the PCT priority
`
`application for which priority is claimed provides Section 112 support for the
`
`proposed substitute claim. See, Nichia Corp. v. Emcore Corp., IPR2012-00005,
`
`Representative Order on Written Description Support for Substituted Claims,
`
`Paper 27 (June 3, 2013).
`
`The table below provides various examples of support in the originally filed
`
`PCT priority application (Ex.2001), passages from which are identified by page
`
`and line numbers in the PCT priority application as originally filed for each of the
`
`claim limitations for substitute claim 11:
`
`
`5 The PCT priority application claims priority to a U.S. provisional application,
`
`Application No. 60/407/444, filed August 30, 2002. For purposes of this
`
`Contingent Motion to Amend, Patentee does not rely upon a claim of priority to
`
`this provisional application, although Patentee expressly reserves the right to
`
`establish priority to the provisional application and/or an earlier date of invention
`
`for any claimed invention.
`
`
`
`12
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`

`

`PATENT OWNER CONTINGENT MOTION TO AMEND
`
`
` CASE NO: IPR 2016-01550
`
`Substitute Claim
`11. A method for operating a radio controlled
`(RC) homeostatic flying hovercraft having at
`least four battery powered generally downwardly
`directed thrusters using an RC controller separate
`and remote from said flying hovercraft, said
`method comprising:
`providing as part of said RC controller a
`handheld structure housing a sensor
`system;
`using said sensor system in said RC controller
`to sense at least a two dimensional, two-
`axis sensed orientation of said handheld
`structure by dynamically sensing a
`gravitational reference and a relative tilt of
`said handheld structure with respect to said
`gravitational reference in response to a user
`remote from said flying structure
`selectively orienting said handheld
`structure;
`communicating a desired orientation by radio
`frequency (RF) communication information
`to said flying hovercraft, said desired
`orientation including information based on
`said sensed orientation of said handheld
`structure;
`using a sensor system in said flying hovercraft
`to dynamically determine an actual
`orientation of said flying hovercraft, said
`sensor system including at least a three-
`dimensional, three-axis sensor;
`using control circuitry in said flying hovercraft
`to automatically and dynamically control a
`thrust produced by each of said thrusters to
`achieve and homeostatically maintain said
`actual orientation of said flying hovercraft
`in response to said desired orientation
`communicated to said flying hovercraft and
`said actual orientation determined by said
`sensor system in said flying hovercraft
`
`
`
`13
`
`Page, Line
`Figure
`3, 22A, 22B p.13:17-24
`p.14:6-9
`
`3, 22A, 22B p.14:9-14
`
`
`
`p.14:9-13
`p.9:26-29
`p.13:18-25
`
`
`3
`
`p.14:11-17
`
`4b, 7, 8, 11,
`28, 31
`
`p.14:17-24
`
`8, 13
`
`p.16:10-21
`p.19:28-32,
`p.20:1-6
`
`
`
`
`p.18:14-16
`p.9:26-28
`
`

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`PATENT OWNER CONTINGENT MOTION TO AMEND
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` CASE NO: IPR 2016-01550
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`without additional control information
`communicated to said flying hovercraft,
`whereby on a moment-to-moment basis said
`actual orientation of said flying hovercraft
`mimics said sensed orientation of said
`handheld structure of said RC controller.
`
`
`
`p.8:13-15
`
`3
`
`p.8:13-20
`
`C. Burden of Proof
`
`The Board has explained the burden of proof associated with a motion to
`
`amend under 35 U.S.C. §316(d) as follows:6
`
`As the moving party, Patent Owner has the burden to establish it is
`
`entitled to the requested relief of substituting the proposed claims. 37
`
`C.F.R. § 42.20(c); MasterImage 3D, Inc. v. RealD Inc., Case
`
`IPR2015-00040, slip op. at 4 (PTAB July 15, 2015) (Paper 42)
`
`(precedential) (indicating a patent owner, as movant, bears “[t]he
`
`ultimate burden of persuasion . . . to demonstrate the patentability of
`
`the amended claims”); see Microsoft Corp. v. Proxyconn, Inc., 789
`
`F.3d 1292, 1306 (Fed. Cir. 2015) (indicating 37 C.F.R. § 42.20(c) is
`
`“plainly applicable to motions to amend filed during [inter partes
`
`reviews]”); but see In re Aqua Products, 833 F.3d 1335, 1335– 36
`
`(Fed. Cir. 2016) (order granting rehearing en banc to address burdens
`
`of persuasion and production regarding motions to amend under 35
`
`U.S.C. § 316(d) and vacating In re Aqua Products, 823 F.3d 1369
`
`
`6 Although Patentee believes that the present motion carries this burden, Patentee
`
`reserves the right to challenge whether the allocation of this burden to Patentee is
`
`appropriate in view of, inter alia, the statutory provisions of 35 U.S.C. §316(e).
`
`
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`14
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`PATENT OWNER CONTINGENT MOTION TO AMEND
`
`
` CASE NO: IPR 2016-01550
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`(Fed. Cir. 2016)).
`
`Global Tel-Link Corp. v. Securus Technologies, Inc., IPR2015-01225,
`
`Paper 45 at 3-4 (PTAB Dec. 14, 2016).
`
`III. ANALYSIS
`
`A. Person of Ordinary Skill
`
`Patentee agrees with Petitioners that the art to which the '239 patent pertains
`
`is remote control aircraft. (Petition, p.14). Patentee generally agrees with
`
`Petitioners that a person of ordinary skill in this field of art at the time of the
`
`invention would possess a Bachelor's of Science degree in aeronautical or electrical
`
`engineering with at least two years of practical experience in the design and
`
`development of remote control aircraft. (Petition, p.14; Ex.2005, ¶13).
`
`B. Claim Construction
`
`In the Decision, the Board determined that no interpretation was required for
`
`any claim terms. (Decision, p.11). For purposes of the proposed substitute claim
`
`11, Patentee does not propose any further constructions of the added claim
`
`limitations. Patentee asserts that the claim recites terms generally known to those
`
`having ordinary skill in the art, and that the plain and ordinary meaning of the
`
`claim terms is discernible in context when read in light of the '040 application.
`
`With respect to the new terms used in the added language for proposed
`
`substitute claim 11, the plain and ordinary meaning of these terms is as follows:
`
`
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`15
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`PATENT OWNER CONTINGENT MOTION TO AMEND
`
`
` CASE NO: IPR 2016-01550
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`• “Gravitational reference” refers to the use of the gravity vector as a
`
`component of a reference frame. To a lay person, the term would be
`
`understood as the downward direction. (Ex.2013, ¶51).
`
`• “Relative tilt” when used in conjunction with the term “gravitational
`
`reference” refers to an orientation of an object relative to gravity or the
`
`downward direction. (Ex.2013, ¶52).
`
`• “Moment-to-moment basis” refers to a generally dynamic process that is
`
`neither completely instantaneous nor completely continuous. (Ex.2013, ¶53).
`
`• “Mimic” refers to generally corresponding some aspect of the behavior of
`
`one thing relative to another. (Ex.2013, ¶54).
`
`Accordingly, the claim terms in proposed substitute claim 11 should be
`
`given their plain and ordinary meaning. See Global Tel-Link, Paper 45 at 15-16.
`
`
`
`
`
`C. Patentability of the Proposed Substitute Claim
`
`In Master Image, the Board clarified the nature of the “prior art of record”
`
`over which the patentability of any proposed substitute claim would be evaluated
`
`as referring to:
`
`1. any material art in the prosecution history of the patent;
`2. any material art of record in the current proceeding, including art
`
`asserted in grounds on which the Board did not institute review;
`
`and
`
`
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`16
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`

`

`PATENT OWNER CONTINGENT MOTION TO AMEND
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` CASE NO: IPR 2016-01550
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`3. any material art of record in any other proceeding before the Office
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`involving the patent.
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`Master Image, Paper 42 at 2.
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`The Board in Global Tel-Link compared this understanding of the prior art
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`of record with the obligations incumbent on the patent owner arising from the duty
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`of candor as follows:
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`“In addition to addressing prior art of record, Patent Owner’s “duty of
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`candor and good faith to the Office” (37 C.F.R. § 42.11) requires that
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`it identify any material prior art known to it. Cf. Nike, Inc. v. Adidas
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`AG, 812 F.3d 1326, 1350–51 (Fed. Cir. 2016) (concluding that, absent
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`an allegation of conduct violating the duty of candor, the Board erred
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`in finding facially inadequate a patent owner’s statement that the
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`proposed claims are patentable over prior art known to the patent
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`owner); MasterImage, IPR2015-00040, Paper 42, 2 (indicating “prior
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`art known to the patent owner … should be understood as no more
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`than the material prior art that [p]atent [o]wner makes of record …
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`pursuant to its duty of candor and good faith to the Office under 37
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`C.F.R. § 42.11”).”
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`Global Tel-Link, Paper 45 at 16.
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`1.
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`The Prior Art of Record Was Considered in the '580 Patent
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`All of the material prior art known at the time to Patentee was presented as
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`prior art of record in the prosecution of the '580 patent pursuant to Patentee’s duty
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`of candor. This included all of the material art in the prosecution history of the '239
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`patent, and all material art of record in the current IPR proceeding (IPR2016-
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`
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`17
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`PATENT OWNER CONTINGENT MOTION TO AMEND
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` CASE NO: IPR 2016-01550
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`01550) and the companion IPR proceeding (IPR2016-01559) for the '532 patent,
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`including the Decisions in both proceedings, as well as the entirety of the two
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`additional IPR petitions filed by Petitioners on March 15, 2017 against the '239
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`patent (IPR2017-01089) and '532 patent (IPR2017-01900)7
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`Given the careful consideration afforded by the Examiner to a review of all
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`of this material prior art of record in the prosecution of the '580 patent, it is
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`respectfully submitted that the prosecution history of the '580 patent confirms
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`Patentee’s position that the added claim limitations of proposed substitute claim 11
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`are patentable over the prior art of record. In addition to the reasons already cited
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`from the Notice of Allowance in the '580 patent, the Examiner specifically
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`addressed the prior art references Louvel and Thomas that are the basis for the
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`ground for which trial was instituted as follows:
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`7 As with the current IPR petition, Louvel is the primary reference and both
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`Thomas and Jimenez are the secondary references used in the grounds presented in
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`each of these petitions. In an apparent effort to cure the deficiencies of the grounds
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`not instituted in the initial IPR proceedings, these second-bite petitions added a
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`further secondary reference (Kroo) for each ground. However, Kroo is not a new
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`reference as it is merely additional documentation related to the Mars mesocopter
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`project discussed in the Background Section of the '239 patent. (Ex.1001, 4:27-37).
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`18
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`PATENT OWNER CONTINGENT MOTION TO AMEND
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` CASE NO: IPR 2016-01550
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`(Ex.2011, p.7-8) (emphasis in original)
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`Accordingly, it is respectfully submitted that the Reasons for Allowance in
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`the '580 patent should be more than sufficient for Patentee to meet its burden of
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`production for the burden of proof with respect to the proposed substitute claim
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`being patentable over the prior art of record
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`19
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`PATENT OWNER CONTINGENT MOTION TO AMEND
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` CASE NO: IPR 2016-01550
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`2.
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`
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`The New Prior Art in Petitioners’ IPR Petition and Amended
`Complaint for the '580 patent
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`After the '580 patent issued, Petitioners filed a new IPR petition on May 10,
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`2017. (IPR2017-01400, Ex.2014). This new IPR petition represents the fifth IPR
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`petition Petitioners have filed with respect to the '239 patent family. Like the
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`previous IPR petitions, the new IPR petition uses Louvel as the primary reference
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`for each of the grounds in the petition. Petitioners have also prepared an
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`amendment to the declaratory judgment complaint in the co-pending Delaware
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`litigation, including a listing of prior art references that may be relevant to the
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`allegations relating to the '580 patent as potential additional secondary references
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`to be combined with Louvel.8
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`Based on an initial review of both the new IPR petition and the paragraphs
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`in the amended complaint relating to the '580 patent, Patentee believes that the
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`following table of new references represents the additional references presented in
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`these most recent filings by Petitioners that may qualify as potential prior art
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`relative to the '239 patent family and that were not specifically submitted as part of
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`the IDS submissions made with respect to the '580 patent. Pursuant to Patentee’s
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`8 No amendments appear to have been made with respect to the allegations in the
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`declaratory judgment complaint with respect to the invalidity of either the '239
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`patent or the '532 patent, and all of the references cited in those paragraphs of the
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`complaint are already prior art of record.
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`20
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`PATENT OWNER CONTINGENT MOTION TO AMEND
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` CASE NO: IPR 2016-01550
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`duty of candor in the IPR proceedings, these additional references in the table have
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`been submitted as Exhibits in this proceeding.
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`Additional Prior Art References
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`U.S. Patent No. 5,453,758
`(“Sato”)
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`U.S. Patent No. 5,453,758
`(“Sato”)
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`U.S. Patent Application No.
`2002/0193914 (“Talbert”)
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`U.S. Patent No. 5,521,817
`(“Burdoin”)
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`U.S. Patent No. 6,739,189
`(“Lee”)
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`IPR2017-01400
`Exhibit/Ground
`Ex. 1005
`Grounds 1-5
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`Ex. 1005
`Grounds 1-5
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`Ex. 1007
`Grounds 1-5
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`Ex. 1009
`Grounds 3 and
`5 - dependent
`claims 3, 9, and
`16
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`Ex. 1010
`Ground 4 –
`dependent
`claims 5, 11,
`and 15
`
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`Kayton, Myron and Walter R.
`Field, Avionics Navigation
`Systems (1997)
`
`
`Ex. 1031
`Not Used in
`Any Grounds
`
`
`Comments
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`Title–“Input Apparatus”
`Replaces Thomas in all
`grounds
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`Title–“Input Apparatus”
`Replaces Thomas in all
`grounds
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`Title–“Remote Control
`Powered Parafoil Aircraft”
`Replaces Jimenez in all
`grounds
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`Title–“Airborne Drone
`Formation Control System”
`Cited for claim limitations
`directed to limits on range
`of craft from controller
`
`Title–“Micro Structure For
`Vertical Displacement
`Detection and Fabricating
`Method Thereof”
`Cited for claim limitations
`directed to accelerometer
`and gyroscope
`configurations
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`Only cited in expert report
`as general background
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`21
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`PATENT OWNER CONTINGENT MOTION TO AMEND
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` CASE NO: IPR 2016-01550
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`U.S. Patent No. 4,839,838
`(“LaBiche”)
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`U.S. Patent No. 4,818,990
`(“Fernandez”)
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`
`Not an Exhibit
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`
`Not an Exhibit
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`Title–“Spatial Input
`Apparatus”
`Similar to Thomas and Sato
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`Title–“Monitoring system
`for power lines and right-of-
`way using remotely piloted
`drone”
`Similar to Jimenez and
`Talbert
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`
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`It is assumed that Petitioners new IPR petition represents the expl