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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ONE WORLD TECHNOLOGIES, INC.
`D/B/A TECHTRONIC INDUSTRIES POWER EQUIPMENT,
`Petitioner
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`v.
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`THE CHAMBERLAIN GROUP, INC.
`Patent Owner
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`Case No. IPR2017-00214
`Patent No. 7,196,611
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`PATENT OWNER’S LIST OF NEW ARGUMENTS PRESENTED IN
`PETITIONER’S REPLY
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`Case IPR2017-00214
`Attorney Docket No: 39907-0011IP2
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`Pursuant to the Board’s authorization on December 11, 2017, Patent Owner
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`submits this list of the locations and concise descriptions of the portions of
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`Petitioners’ Reply (Paper 17, hereinafter “Reply”) that constitute improper new
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`argument:
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` New Argument 1 – Petitioner alleges Patent Owner was “[e]xposed for
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`patenting the exact same technology that they disclosed to the public over
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`sixteen years earlier in their Schindler patent[.]”
`o Location: Reply, p. 1, ¶ 1.
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` New Argument 2 – “Because Schindler’s controller makes this decision, the
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`controller necessarily identifies both of these multiple activities.”
`o Location: Reply, p. 10-13 (entirety of § III.A.2.b.1 except first sentence
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`beginning “As stated…”) (citing Lipoff Supp. Dec. (Ex. 1011), ¶¶ 30-
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`34).
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` New Argument 3 – “Schindler’s Identification of Multiple Activities is The
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`Same as That Described in the ’611 Patent.”
`o Location: Reply, pp. 13-14 (entirety of § III.A.2.b.2) (citing Lipoff
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`Supp. Dec., ¶¶ 35-36).
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` New Argument 4 – “Claim 18 Does Not Require Identifying Multiple
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`Activities at the Same Time.”
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`Case IPR2017-00214
`Attorney Docket No: 39907-0011IP2
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`o Location: Reply, p. 14-17 (entirety of § III.A.2.b.3) (citing Lipoff Supp.
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`Dec., ¶¶ 37-40).
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` New Argument 5 – “A User Completes Many Individual Activities While
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`Setting Each Limit Position.”
`o Location: Reply, pp. 17-20 (citing Lipoff Supp. Dec., ¶¶ 41-46).
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` New Argument 6 – “In view of these teachings, a person of skill in the art
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`would have readily appreciated that execution of Schindler’s assembly source
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`code necessarily loops around at some point, which is all that Baer’s flowchart
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`shows.”
`o Location: Reply, pp. 24-25 (entirety of § III.A.2.b.4) (citing Lipoff
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`Supp. Dec., ¶¶ 54-55).
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` New Argument 7 – “[T]imer-based interrupts … cause the looping behavior
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`represented in Mr. Baer’s flowchart.”
`o Location: Reply, pp. 25-26 (entirety of § III.B.2.c) (citing Lipoff Supp.
`Dec., ¶¶ 56-621).
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` The Reply cites to “Ex. 1001” with paragraph numbers multiple times. See, e.g,
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`Reply, p. 26. Patent Owner interprets this as a typographical error, as Ex. 1001 is
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`2
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` New Argument 8 – “Additional Mechanisms Disclosed in Schindler Support
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`Case IPR2017-00214
`Attorney Docket No: 39907-0011IP2
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`the Looping Behavior Represented in Baer’s Flowchart.”
`o Location: Reply, pp. 26-27 (entirety of § III.B.2.d) (citing Lipoff Supp.
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`Dec., ¶¶ 64-672).
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`Dated: 12/15/2017
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`(Trial No. IPR2017-00214)
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`Respectfully submitted,
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`/Dan Smith/
`W. Karl Renner, Reg. No. 41,265
`Lead Counsel
`Joshua Griswold, Reg. No. 46,310
`Back-up Counsel
`Dan Smith, Reg. No. 71,278
`Back-up Counsel
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`Fish & Richardson P.C.
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`Attorneys for Patent Owner
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`the ’611 patent and does not include paragraph numbers. Patent Owner assumes
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`these citations were intended to reference Ex. 1011 (Mr. Lipoff’s Supplemental
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`Declaration).
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`3
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`Case IPR2017-00214
`Attorney Docket No: 39907-0011IP2
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on December
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`15, 2017, a complete and entire copy of this paper was provided via email to the
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`Petitioner by serving the email correspondence address of record as follows:
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`Dion Bregman
`Jason White
`Ahren Hsu-Hoffman
`Athena Johns
`Morgan, Lewis & Bokius LLP
`1400 Page Mill Road
`Palo Alto, CA 94304
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`Email: TechtronicIPRs@morganlewis.com
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`/Edward G. Faeth/
`Edward G. Faeth
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(202) 626-6420
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