`
`William D. Belanger, Reg. No. 40,509
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`belangerw@pepperlaw.com
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`MICROSOFT CORPORATION, SAMSUNG ELECTRONICS CO. LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC. AND ZTE (USA), INC.,
`Petitioners
`
`v.
`
`IXI IP, LLC,
`Patent Owner
`
`___________________
`
`Case No. IPR2017-00898
`U.S. Patent 7,552,124
`___________________
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`PURSUANT TO 37 C.F.R. § 42.107
`
`
`
`
`
`
`
`
`
`Case No. IPR2017-00898
`Patent 7,552,124
`
`
`TABLE OF CONTENTS
`
`Page(s)
`
`Table of Authorities .................................................................................................. ii
`Table of Exhibits ...................................................................................................... iii
`I.
`INTRODUCTION .......................................................................................... 1
`RELATED INTER PARTES REVIEW IPR2016-01669 ................................ 2
`II.
`III. THE 898 PETITION SHOULD BE DENIED BECAUSE
`SUBSTANTIALLY THE SAME PRIOR ART OR ARGUMENTS
`ARE BEFORE THE OFFICE IN THE 1669 IPR .......................................... 6
`IV. CONCLUSION ............................................................................................. 11
`
`
`i
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`Case No. IPR2017-00898
`Patent 7,552,124
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`
`TABLE OF AUTHORITIES
`
`
`CASES
`Blackboard, Inc. v. Desire2Learn Inc., 574 F.3d 1371 (Fed. Cir. 2009) .................. 5
`
`Page(s)
`
`Blackberry Corp. v. MobileMedia Ideas, LLC, IPR2013-00036, Paper 65
`(PTAB Mar. 7, 2014) ............................................................................................ 5
`
`Conopco, Inc. v. Procter & Gamble Co., IPR2014-00506, Paper 25
`(PTAB Dec. 10, 2014) .......................................................................................... 9
`
`Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., IPR2014-00436,
`Paper 17 (PTAB June 19, 2014) ......................................................................... 10
`
`Samsung Elecs. Co. v. Rembrandt Wireless Technologies, LP,
`IPR2015-00555, Paper 20 (PTAB June 19, 2015) ......................................... 2, 10
`
`Travelocity.com LP v. Cronos Techs., LLC, CBM2015-00047, Paper 7
`(PTAB June 15, 2015) ........................................................................................ 10
`
`STATUTES
`
`35 U.S.C. § 112 ...................................................................................................... 3, 9
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 325 ................................................................................................ 2, 9, 10
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.1 ....................................................................................................... 10
`
`37 C.F.R. § 42.107 ..................................................................................................... 1
`
`77 Fed. Reg. 48,680 (Aug. 14, 2012) ........................................................................ 9
`
`81 Fed. Reg. 18,750 (Apr. 1, 2016) ........................................................................... 9
`
`H.R. Rep. No. 112-98 (2011) ..................................................................................... 9
`
`
`
`ii
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`Case No. IPR2017-00898
`Patent 7,552,124
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`PATENT OWNER’S TABLE OF EXHIBITS
`
`Exhibit Description
`
`Exhibit No.
`
`2001
`
`Institution Decision dated March 8, 2017 in IPR2016-01669 (Paper
`9).
`
`
`
`iii
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`Case No. IPR2017-00898
`Patent 7,552,124
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`Pursuant to 37 C.F.R. § 42.107, the Patent Owner, IXI IP, LLC (“Patent
`
`Owner”) hereby submits the following Preliminary Response to the Petition (“the
`
`898 Petition”) seeking inter partes review of U.S. Patent No. 7,552,124 (“the ’124
`
`Patent”). This filing is timely under 35 U.S.C. § 313 and 37 C.F.R. § 42.107, as it
`
`is being filed within three months of the mailing date of the Notice of Filing Date
`
`Accorded to the Petition (Paper 10), mailed March 14, 2017.
`
`I.
`
`INTRODUCTION
`
`The 898 Petition challenges claims 1-10 of the ’124 Patent on the
`following grounds:
`
`1.
`
`2.
`
`Claims 1-10 are allegedly obvious over U.S. Patent No.
`7,003,463 of Maes et al. (Ex. 1005, “Maes”) in view of U.S.
`Patent No. 5,937,383 of Ittycheriah et al. (Ex. 1010, “Maes II”)1
`and U.S. Pub. No. 2003/0046061 of Preston et al. (Ex. 1006,
`“Preston”); and
`
`Claims 1-10 are allegedly obvious over U.S. Patent No.
`7,027,975 of Pazandak et al. (Ex. 1007, “Pazandak”) in view of
`U.S. Pub. No. 2002/0072918 of White et al. (Ex. 1008,
`“White”) and U.S. Patent No. 7,085,708 of Manson (Ex. 1009,
`“Manson”).
`
`
`1 Though Abraham Ittycheriah is the first named inventor of U.S. Patent No.
`
`5,937,383, Patent Owner refers to Exhibit 1010 throughout this paper as “Maes II”
`
`to maintain consistency with Petitioners’ designation. See 898 Petition at viii.
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`1
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`Patent Owner respectfully requests that the Patent Trial and Appeal Board
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`exercise its discretion to deny institution of inter partes review as to all grounds set
`
`forth in the 898 Petition under 35 U.S.C. § 325(d). Microsoft Corporation,
`
`Samsung Electronics Co. Ltd., Samsung Electronics America, Inc., and ZTE
`
`(USA), Inc. (“the 898 Petitioners”) have presented substantially the same prior art
`
`or arguments in the 898 Petition that were presented to the Office in an earlier-filed
`
`petition, which was filed by a different petitioner and which remains pending.
`
`II. RELATED INTER PARTES REVIEW IPR2016-01669
`The 898 Petition is the second petition for inter partes review challenging all
`
`claims of the ’124 Patent.
`
`The first petition (“the 1669 Petition”) was filed by Google, Inc. (hereafter
`
`“Google”) on August 25, 2016, and was assigned inter partes review number
`
`IPR2016-01669 (“the 1669 IPR”).2 In the 1669 Petition, Google challenged claims
`
`1-10 as being obvious on the basis of two grounds: i) obvious over Maes in view of
`
`Preston; and ii) obvious over Pazandak in view of White and Manson.3 In the
`
`2 The 898 Petitioners submitted the 1669 Petition as Exhibit 1011.
`
`3 The only difference between the grounds asserted in the 1669 Petition and the
`
`898 Petition is further reliance by the 898 Petitioners on Maes II in the
`
`combination based on Maes and Preston. Compare Ex. 1011 at 8/81 with 898
`
`Petition at 4.
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`2
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`1669 Petition, Google presented constructions for the term “operative language,”
`
`and alleged that various terms in claim 6 are means-plus-function (MPF) elements
`
`pursuant to 35 U.S.C. § 112, ¶ 6. See Ex. 1011 at 13/81-19/81. With respect to the
`
`phrase “means for receiving a high-level code. . .,” Google identified a purported
`
`function and corresponding structure. Id. at 16/81-17/81. With respect to the
`
`remaining purported MPF elements,4 Google alleged that “each of these elements
`
`recites function without sufficient structure for performing the function. However,
`
`for purposes of this proceeding, the structure should be software running on a
`
`processor configured to perform the identified functions or equivalents thereof.”
`
`Id. at 15/81.
`
`
`4 The remaining MPF elements in claim 6 are “means for parsing the high-level
`
`code for the keywords to recognize the operative language associated with
`
`controlling one or more operations of the mobile communication device”; “means
`
`for determining at least one operation associated with the operative language”;
`
`“means for determining whether high-level code comprises keywords defining one
`
`or more relationships and conditions corresponding to the operative language”;
`
`“means for producing an executable code”; “means for determining level of
`
`complexity and implementation of the high-level code”; and “means for
`
`designation an application software to process the high-level code.”
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`3
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`On December 9, 2016, Patent Owner submitted a Preliminary Response in
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`the 1669 IPR, and argued that Petitioner failed to demonstrate, for each ground,
`
`that the respective combinations disclose or suggest all material limitations recited
`
`in independent claims 1 and 6. See Ex. 1012 at 18/48, 29/48. Further with respect
`
`to the ground based on Pazandak, White, and Manson, Patent Owner argued that
`
`Google failed to demonstrate that a POSITA would have been motivated to
`
`combine the relied-upon references as alleged. See id. at 23. Patent Owner did not
`
`dispute Google’s proposed constructions, including for the MPF elements of
`
`independent claim 6. See id. at 13/48.
`
`On March 8, 2017 (subsequent to the filing of this 898 Petition), the Board
`
`instituted the 1669 IPR with respect to claims 1-5 on both grounds asserted by
`
`Google, finding that the 1669 Petition demonstrated a reasonable likelihood that
`
`these claims were obvious over the combination of Maes and Preston and the
`
`combination of Pazandak, White, and Manson, as each combination discloses each
`
`of the claim limitations and that Google had articulated sufficient reasons for
`
`combining the references. See e.g., Ex. 2001 at 14, 24, 29, and 40. Institution was
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`denied with respect to claims 6-10, however, because the ’124 Patent failed to
`
`sufficiently describe corresponding structure for the MPF elements that Google
`
`asserted should be construed as “software running on a processor configured to
`
`perform the identified functions or equivalents thereof.” Id. at 7-9. For example,
`
`4
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`with respect to the claim term “means for parsing the high-level code for the
`
`keywords to recognize the operative language associated with controlling one or
`
`more operations of the mobile communication device,” the Board indicated that
`
`“the Specification does not explain sufficiently how the application software
`
`recognizes the keywords. . . . Such ‘black box’ disclosures of software can be too
`
`generic to provide corresponding structure for computer-implemented means-plus-
`
`function limitations.” Id. at 8-9 (citing Blackboard, Inc. v. Desire2Learn Inc., 574
`
`F.3d 1371, 1383 (Fed. Cir. 2009)). As a result, the Institution Decision concluded
`
`as follows with respect to claims 6-10:
`
`Thus, Petitioner has not shown sufficiently that the Specification
`discloses an algorithm for the function of parsing a keyword or any
`other structure to enable us to determine if the asserted prior art
`teaches such structure. Thus, Petitioner fails to demonstrate a
`reasonable likelihood of prevailing in its challenge to claims 6-10, and
`the Petition as to those claims is denied. See Blackberry Corp. v.
`MobileMedia Ideas, LLC, IPR2013-00036, Paper No. 65 (Mar. 7,
`inter partes
`2014)
`(terminating
`review proceeding because
`specification did not disclose specific algorithm to perform recited
`function of a computer-implemented means-plus-function term).
`
`Ex. 2001 at 9.
`
`5
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`III. THE 898 PETITION SHOULD BE DENIED BECAUSE
`SUBSTANTIALLY THE SAME PRIOR ART OR ARGUMENTS ARE
`BEFORE THE OFFICE IN THE 1669 IPR
`
`As discussed above, this is the second petition seeking to invalidate claims
`
`of the ’124 Patent. Filed by the 898 Petitioners prior to the Institution Decision in
`
`the 1669 IPR, the 898 Petition relies on substantially the same art or arguments that
`
`were relied upon the 1669 Petition in the grounds for which trial was instituted.
`
`Other than several responsive arguments by the 898 Petitioners against Patent
`
`Owner’s positions in its preliminary response in the 1669 IPR and further reliance
`
`on Maes II in the obviousness ground based on Maes and Preston, there is
`
`essentially no substantive difference between the issues raised by the two petitions.
`
`In fact—as acknowledged by the 898 Petitioners—even the “new” reference raised
`
`by the 898 Petitioners (i.e., Maes II) was incorporated by reference by Maes, and is
`
`relied upon in this “new” ground “to the extent Maes II is not considered a part of
`
`Maes”:
`
`To the extent that IXI argues that “parsing . . . for keywords” means
`“keyword spotting,” Ex. 1012 at 23, this is disclosed by Maes in
`combination with Maes II. Maes incorporates Maes II by reference,
`Ex. 1005, 12:39-50, and suggests “preferably” using the methods of
`Maes II, id., 12:39-55. Thus, to the extent Maes II is not considered a
`part of Maes, a POSITA would be motivated to combine the teachings
`of Maes II with Maes. Ex. 1002, ¶98. Maes II discloses a cache of
`“keywords, i.e., names, commands, or sentences” Ex. 1010, 2:58-60
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`6
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`(emphasis added), and that “whenever an input speech segment is
`uttered, the keywords of the cache are checked first before the
`segment is subjected to a classical speech recognition engine.” Id.,
`2:67-3:2. Ex. 1002, ¶¶96-97. Thus in this step the parser “selectively
`and individually identifies particular items in the input sequence (i.e.,
`the keywords), but ignores items in the input that are not keywords,”
`which Patent Owner IXI has argued meets this limitation. Ex. 1012 at
`23; Ex. 1002, ¶¶96-97. Thus, the combination of Maes and Maes II
`teaches parsing for keywords to recognize operative language
`(“commands”) in the user input. Ex. 1002, ¶¶96-98; see also id., ¶¶99-
`103.
`
`898 Petition at 18-19 (underlining added).
`
`Though the 898 Petition provides some analysis with respect to the meaning
`
`of the terms “operative language,” “high-level code,” and the “parsing and
`
`determining steps,” there does not appear to be any substantive difference between
`
`the 898 Petitioners’ proffered constructions and the interpretation applied by
`
`Google and the Board in the 1669 IPR. See Petition at 8-9. For example, with
`
`respect to the “parsing and determining steps,” Google did not provide an
`
`affirmative construction but discussed the scope of these terms in footnotes 11 and
`
`12 in the 1669 Petition. See Ex. 1011 at 43/81 and 45/81. The 898 Petitioners
`
`refer to Google’s interpretation, note that Patent Owner did not dispute this
`
`interpretation in its preliminary response in the 1669 IPR, and conclude that this
`
`interpretation is similarly adopted by the 898 Petitioners.
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`7
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`Similarly, there is essentially no difference between the 898 Petitioners’
`
`MPF analysis and that in the 1669 Petition with respect to claims 6-10. In
`
`particular, Google stated that various of the MPF elements “recite[] function
`
`without sufficient structure for performing the function” but nonetheless alleged
`
`that the structure should be “software running on a processor configured to
`
`perform the identified functions or equivalents thereof.” Ex. 1011 at 15/81. The
`
`898 Petition likewise indicates that “[e]ach of these elements recites function
`
`without sufficient structure for performing the function. However, for purposes of
`
`this proceeding, the structure should be ‘application software executing on one or
`
`more processors to perform the identified functions or equivalents thereof.’” 898
`
`Petition at 11. Thus, except for the 898 Petitioners’ indication that the software
`
`could be running on “one or more processors” (instead of “a processor”), the 898
`
`Petition and the 1669 Petition present identical arguments with respect to the
`
`meaning of claims 6-10, for which institution was denied because the Board was
`
`unable to determine sufficient structure from the specification of the ’124 Patent
`
`“to enable us to determine if the asserted prior art teaches such structure.” Ex.
`
`2001 at 9.
`
`In enacting the Leahy-Smith America Invents Act, Congress intended for
`
`post-grant proceedings to represent a just, speedy, and inexpensive alternative to
`
`litigation. Congress made clear that post-grant review proceedings are “not to be
`
`8
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`Case No. IPR2017-00898
`Patent 7,552,124
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`used as tools for harassment . . . through repeated litigation and administrative
`
`attacks on the validity of a patent.” H.R. Rep. No. 112-98 at 48 (2011). Indeed,
`
`Congress recognized that “[d]oing so would frustrate the purpose of the section as
`
`providing quick and cost effective alternatives to litigation.” Id. Section 314(a)
`
`gives the Board broad discretion to deny institution of an IPR even when other
`
`statutory conditions are met. See Conopco, Inc. v. Procter & Gamble Co.,
`
`IPR2014-00506, Paper 25 at 4 (PTAB Dec. 10, 2014) (designated informative). In
`
`particular, to reduce inefficiencies and avoid unnecessary expenses on the part of
`
`the parties and the USPTO, Congress provided the Board with a discretionary
`
`mechanism to deny institution of repetitive, serial petitions:
`
`In determining whether to institute or order a proceeding under this
`chapter, chapter 30, or chapter 31, the Director may take into account
`whether, and reject the petition or request because, the same or
`substantially the same prior art or arguments previously were
`presented to the Office.
`
`35 U.S.C. § 325(d) (entitled “Multiple Proceedings”); see also 77 Fed. Reg. 48,680
`
`at 48,702 (Aug. 14, 2012) (“The Office . . . will exercise its authority under 35
`
`U.S.C. 325(d), where appropriate, to deny petitions that submit the same or
`
`substantially the same prior art or arguments previously presented to the Office.”);
`
`see also 81 Fed. Reg. 18,750 at 18,759 (Apr. 1, 2016) (§ 325(d) provides
`
`9
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`Case No. IPR2017-00898
`Patent 7,552,124
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`protection “for patent owners to guard against potential harassment through the
`
`filing of multiple petitions.”).
`
`The Board exercises its discretion to deny review under § 325(d) on a case-
`
`by-case basis. Travelocity.com LP v. Cronos Techs., LLC, CBM2015-00047,
`
`Paper 7 at 2, 10 (PTAB June 15, 2015); see also Medtronic, Inc. v. Robert Bosch
`
`Healthcare Systems, Inc., IPR2014-00436, Paper 17 at 11-12 (PTAB June 19,
`
`2014). In exercising that discretion, the Board should be “mindful of the guidance
`
`provided in” 37 C.F.R. 42.1(b), which provides that the regulations regarding post-
`
`grant proceedings are to be “construed to secure the just, speedy, and inexpensive
`
`resolution of every proceeding.” Samsung Elecs. Co. v. Rembrandt Wireless
`
`Technologies, LP, IPR2015-00555, Paper 20 at 7 (PTAB June 19, 2015) (quoting
`
`37 C.F.R. § 42.1(b)).
`
`Because the 898 Petition’s challenges are grounded on substantially the
`
`same references and arguments upon which the Board has already instituted trial in
`
`the 1669 IPR (with the 898 Petitioners merely laying the groundwork for Google’s
`
`potential arguments in reply), Patent Owner respectfully requests that the Board
`
`exercise its discretion to deny institution under § 325(d) as to all grounds set forth
`
`in the 898 Petition.
`
`10
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`Case No. IPR2017-00898
`Patent 7,552,124
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`IV. CONCLUSION
`A trial should therefore not be instituted in this matter at least because the
`
`898 Petition is based on substantially the same grounds and arguments as those
`
`previously presented in the 1669 IPR.
`
`Dated: June 14, 2017
`
`
`
`
`
`Respectfully submitted,
`By: /William D. Belanger/
`William D. Belanger, Reg. No. 40,509
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`belangerw@pepperlaw.com
`
`11
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`
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`CERTIFICATE OF SERVICE
`
`Case No. IPR2017-00898
`Patent 7,552,124
`
`I hereby certify that on June 14, 2017, a true and accurate copy of this paper,
`PATENT OWNER’S PRELIMINARY RESPONSE, was served on counsel for Petitioner
`(Andrew M. Mason, Joseph T. Jakubek, and J. Christopher Carraway) via email
`pursuant to Petitioner’s consent to electronic service:
`
`
`Dated: June 14, 2017
`
`
`
`andrew.mason@klarquist.com
`joseph.jakubek@klarquist.com
`chris.carraway@klarquist.com
`
`Respectfully submitted,
`By: /William D. Belanger/
`William D. Belanger, Reg. No. 40,509
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`belangerw@pepperlaw.com
`
`
`
`
`
`Case No. IPR2017-00898
`Patent 7,552,124
`CERTIFICATION UNDER 37 C.F.R. § 42.24(d)
`
`Under the provisions of 37 CFR § 42.24(d), the undersigned hereby certifies that
`the word count for the foregoing Patent Owner’s Preliminary Response totals
`2,308, which is less than the 14,000 allowed under 37 C.F.R. § 42.24(a)(1), (b)(1).
`
`
`
`Respectfully submitted,
`By: /William D. Belanger/
`William D. Belanger, Reg. No. 40,509
`Pepper Hamilton LLP
`125 High Street
`19th Floor, High Street Tower
`Boston, MA 02110
`(617) 204-5100 (telephone)
`(617) 204-5150 (facsimile)
`belangerw@pepperlaw.com
`
`Dated: June 14, 2017
`
`
`
`
`
`
`
`