UNITED STATES PATENT AND TRADEMARK OFFICE
`
`------------------------
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`------------------------
`
`Department of Justice,
`Petitioner,
`v.
`
`EnvisionIT, LLC,
`Patent Owner
`------------------------
`
`Trial No.: IPR2017-00160
`Patent 8,438,221
`Filed: February 7, 2017
`------------------------
`
`PATENT OWNER’S PRELIMINARY RESPONSE TO PETITION FOR
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,438,221
`
`IBM EX. 1022
`
`1 of 55
`
`
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`I.
`II.
`
`C.
`D.
`
`2.
`
`
`U.S. Patent No. 8,438,221 ...............................................................................1
`The Petition should be rejected for failure to name a Real Party in Interest
`(RPI). ................................................................................................................3
`A.
`Background ...........................................................................................5
`B.
`IBM could have exercised control over Petitioner’s
`participation in this proceeding. ............................................................6
`Petitioner admitted that IBM was involved. .........................................9
`IBM has an interest in the outcome of this proceeding because
`of its relationship with Petitioner. .......................................................10
`The Petition should be denied because IBM is an RPI. ......................10
`E.
`III. Claim Construction ........................................................................................11
`A.
`Legal Framework ................................................................................12
`B.
`Petitioner Has Not Properly Construed “Broadcast.” .........................13
`1.
`The claim language and the specification support Patent
`
`Owner’s proposed construction and refute Petitioner’s............14
`Petitioner’s proposed inclusion of examples is confusing
`and unnecessary. .......................................................................16
`Petitioner’s construction is indefinite and inaccurate...............17
`3.
`
`IV. The Board should not institute on Grounds I through IV, because Petitioner
`has failed to establish that the two central references are prior art. ..............18
`A.
`Petitioner bears the burden of showing that alleged prior art was
`authentic and publically accessible. ....................................................19
`Petitioner has not authenticated Gundlegård or established that
`it was publicly accessible in order to constitute prior art. ...................19
`Petitioner has failed to authenticate 3GPP and to establish that
`it was publically accessible. ................................................................26
`There is no reasonable likelihood that Petitioner will prevail on Ground I. . 28
`A.
`The combination does not disclose, suggest, or teach the
`limitation of claim 19[c]. .....................................................................30
`
`B.
`
`C.
`
`V.
`
`i
`
`2 of 55
`
`
`
`

`

`B.
`
`Petitioner has not provided any rational underpinning for
`combining Gundlegård, Zimmers, and Rieger. ...................................36
`VI. There is no reasonable likelihood that Petitioner will prevail on Ground III.39
`A.
`The Petition fails to provide a basis for the specific combination
`of five references. ................................................................................40
`B. Mani cannot render the ’221 patent claims obvious because
`Mani presents exactly the problem that the ’221 patent solves –
`in prior art systems, overhead scales with the number of
`recipients of an alert. ...........................................................................41
`C. Mani cannot be combined with 3GPP, because cell broadcast is
`incompatible with the per-recipient customization of Mani ...............42
`VII. Conclusion .....................................................................................................43
`
`ii
`
`3 of 55
`
`
`
`

`

`TABLE OF AUTHORITIES
`
`Cases
`In re Abbott Diabetes Care, Inc.,
`696 F.3d 1142 (Fed. Cir. 2012) ..............................................................12, 13, 15
`
`Page(s)
`
`ACTV, Inc. v. Walt Disney Co.,
`346 F.3d 1082 (Fed. Cir. 2003) ..........................................................................13
`
`In re Am. Acad. of Sci. Tech. Ctr.,
`367 F.3d 1359 (Fed. Cir. 2004) ..........................................................................12
`
`In re Bond,
`910 F.2d 831 (Fed. Cir. 1990) ............................................................................12
`
`Cheese Sys. Inc. v. Tetra Pak Cheese and Powder Sys., Inc.,
`725 F.3d 1341 (Fed. Cir. 2013) ....................................................................40, 43
`
`Cisco Systems, Inc. v. C-Cation Techs., LLC,
`Case IPR2014-00454 (PTAB Aug. 29, 2014) (Paper 12) ..................................20
`
`Cordis Corp. v. Boston Scientific Corp.,
`561 F.3d 1319 (Fed. Cir. 2009) ..........................................................................19
`
`In re Cronyn,
`890 F.2d 1158 (Fed. Cir. 1989) ..........................................................................19
`
`Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131 (2016) ........................................................................................12
`
`EMC Corp. v. Personalweb Techs., LLC,
`Case IPR2013-00084, slip op. (PTAB May 15, 2014) ................................. 21, 27
`
`First Data Corp. v. Cardsoft (Assignment for the Benefit of
`Creditors), LLC,
`Case IPR2014-00715 (PTAB October 17, 2014) (Paper 9) ................................. 8
`
`Gonzalez v. Banco Central Corp.,
`27 F.3d 751 (1st Cir. 1994) ...................................................................................6
`
`In re Gorman,
`933 F.2d 982 (Fed. Cir. 1991) ............................................................................43
`
`iii
`
`4 of 55
`
`
`
`

`

`Grain Processing Corp. v. American-Maize Prods. Co.,
`840 F.2d 902 (Fed. Cir. 1988) ............................................................................39
`
`Groupon, Inc. v. Blue Calypso, LLC,
`Case CBM2013-00033, (PTAB Dec. 17, 2014) (Paper 51) ...............................22
`
`Hockerson-Halberstadt, Inc. v. Converse Inc.,
`183 F.3d 1369 (Fed. Cir. 1999) ..........................................................................13
`
`Ideavillage Products, Corp., v. Choon’s Design, LLC,
`Case IPR2015-01143 (PTAB Nov. 9, 2015) (Paper 6) ......................................28
`
`In re Slominski, Inter Partes Reexamination No. 95/001,852,
`Dismissal of Reexam Petition Decision at 4 (January 23, 2013) .........................9
`
`Interactive Gift Express, Inc. v. Compuserve, Inc.,
`256 F.3d 1323 (Fed. Cir. 2001) ..........................................................................13
`
`In re Kahn,
`441 F.3d 977 (Fed. Cir. 2006) ................................................................29, 36, 40
`
`KSR International Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................29
`
`In re Lister,
`583 F.3d 1307 (Fed. Cir. 2009) ..........................................................................28
`
`Microsoft Corp. v. Proxyconn, Inc.,
`Case No. IPR2012-00026 (PTAB Dec. 21, 2012) (Paper 17) ............................29
`
`Novak v. Tucows, Inc.,
`No. 06-CV-1909 (JFB) (ARL), 2007 WL 922306 (E.D.N.Y. Mar.
`26, 2007), aff’d, 330 F. App’x 204 (2d Cir. 2009) .......................................21, 27
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ..........................................................13
`
`Servicenow, Inc., v. Hewlett-Packard Co.,
`Case IPR2015-00716 (PTAB Aug. 26, 2015) (Paper 13) ................18, 19, 27, 28
`
`Shenzhen Huiding Technology Co., Ltd. v. Synaptics Inc.,
`Case IPR2015-01741, (PTAB Aug. 7, 2015) (Paper 8) .....................................20
`
`iv
`
`5 of 55
`
`
`
`

`

`Specht v. Google Inc.,
`758 F.Supp.2d 570 (N.D. Ill. 2010) ....................................................................21
`
`Square, Inc. v. Cooper,
`Case IPR2014-00158 (PTAB May 15, 2014) (Paper 10) ...................................37
`
`Standard Innovation Corp. v. Lelo, Inc.,
`Case IPR2014-00148 (PTAB Apr. 23, 2015) (Paper 41) .......................19, 27, 28
`
`In re Suitco Surface, Inc.,
`603 F.3d 1255 (Fed. Cir. 2010) ..............................................................12, 15, 16
`
`Taylor v. Sturgell,
`553 U.S. 880 (2008) ..............................................................................................4
`
`Vitronics Corp. v. Conceptronic, Inc.,
`90 F.3d 1576 (Fed. Cir. 1996) ............................................................................17
`
`ZOLL Lifecor Corp. v. Philips Electronics North America Corp.,
`Case IPR2013-00606 (PTAB March 20, 2014) (Paper 13) ................................11
`
`Statutes
`
`35 U.S.C. § 312(a) ...................................................................................................11
`
`Regulations
`
`37 C.F.R. § 42.6(a)(3) ..............................................................................................20
`
`37 C.F.R. § 42.22 .....................................................................................................20
`
`37 C.F.R. § 42.100 ...................................................................................................12
`
`37 C.F.R. § 42.104 ...................................................................................................29
`
`37 C.F.R. § 42.107 .....................................................................................................1
`
`Federal Acquisition Regulation (FAR) Clause 52.227-3 (APR 1984),
`48 C.F.R. § 52.227-3 .........................................................................................5, 7
`
`Office Patent Trial Practice Guide (“Trial Guide”),
`77 Fed. Reg. 48,756 (2012) ....................................................................4, 6, 9, 10
`
`v
`
`6 of 55
`
`
`
`

`

`LISTING OF EXHIBITS
`
`Exhibit
`
`Description
`
`Ex. 2001
`
`Complaint, Docket No. 1 in CellCast Technologies, LLC, et al. v.
`United States, C.A. No. 1:15-cv-1307-VJW (C.F.C.)
`
`Ex. 2002 Motion to Notice Third Party filed by United States (with Exhibits),
`Docket No. 10 in CellCast Technologies, LLC, et al. v. United States,
`C.A. No. 1:15-cv-1307-VJW (C.F.C.)
`
`Ex. 2003
`
`Ex. 2004
`
`Answer of International Business Machines Corp., Docket No. 21 in
`CellCast Technologies, LLC, et al. v. United States, C.A. No. 1:15-cv-
`1307-VJW (C.F.C.)
`
`Joint Motion to Stay Proceedings filed by IBM (without Exhibits),
`Docket No. 39 in CellCast Technologies, LLC, et al. v. United States,
`C.A. No. 1:15-cv-1307-VJW (C.F.C.)
`
`Ex. 2005
`
`U.S. Provisional Patent Application No. 60/544,739
`
`Ex. 2006 MICROSOFT COMPUTER DICTIONARY, 5th Ed. (Microsoft 2002) -
`Definition of “broadcast”
`
`vi
`
`7 of 55
`
`
`
`

`

`LISTING OF CLAIMS
`
`CLAIM 19:
`
`19[pre]
`
`A method of public service broadcast messaging to a broadcast target
`area, the method comprising:
`
`19[a]
`
`19[b]
`
`19[c]
`
`19[d]
`
`receiving over an input interface a broadcast request including a
`broadcast agent identification, a geographically defined broadcast
`target area, and a broadcast message from one of a plurality of
`coupled broadcast agent message origination systems;
`
`storing a geographically defined broadcast message jurisdiction for a
`broadcasting agent;
`
`verifying an authority of the broadcast agent identification including
`an authority of the originating broadcast agent to send the broadcast
`message to the broadcast target area by comparing the stored
`geographically defined broadcast message jurisdiction for the
`originating broadcast agent with the broadcast target area associated
`with the broadcast message in the broadcast request; and
`
`transmitting the broadcast message over an output interface to one or
`more coupled broadcast message networks providing broadcast
`message alerting service to at least a portion of the broadcast target
`area.
`
`vii
`
`8 of 55
`
`
`
`

`

`Pursuant to 37 C.F.R. § 42.107, Patent Owner EnvisionIT, LLC (“Patent
`
`Owner”) submits this Preliminary Response to the above-captioned Petition for
`
`inter partes review of U.S. Patent No. 8,438,221 (“Pet.” or “Petition,” Paper 1).
`
`I.
`
`U.S. Patent No. 8,438,221
`
`U.S. Patent No. 8,438,221 (“the ’221 Patent”) discloses a system and
`
`method of admission control for authorizing transmission of a broadcast message
`
`to a broadcast target area. Ex. 1001 at Abstract. Public service warning systems in
`
`existence at the time of the ’221 Patent application filing were “antiquated and
`
`provide[d] only limited access to the public who may be in need of knowing of
`
`potential emergencies or danger.” Ex. 1001 at 1:29–31. Those systems did not
`
`“provide for location-based notification or broadcasting messages.” Ex. 1001 at
`
`1:31–33. Attempted solutions to those problems, which focused on the use of SMS
`
`technology, suffered from their own technical drawbacks, including delays in
`
`delivery, congestion of networks, and overloading of
`
`telecommunications
`
`infrastructure. Ex. 1001 at 1:36–67.
`
`The ’221 Patent describes a method and system for broadcast messaging to a
`
`broadcast
`
`target area which overcomes
`
`the above-mentioned drawbacks.
`
`According
`
`to
`
`the ’221 Patent, “[l]ocation-based message broadcasting
`
`is
`
`transmitted from [a] predefined cell in a downlink only mode and therefore, unlike
`
`current SMS services, does not require functionality or network resources from the
`
`1
`
`9 of 55
`
`
`
`

`

`mobile services provider or from any portion of the mobile service provider's
`
`mobility management resources.” Ex. 1001 at 5:50–55. This technique allows for
`
`“the simultaneous sending of public service messages to millions of subscribers
`
`with less impact on the supporting networks than a single SMS-message.” Ex.
`
`1001 at 4:56–59. That characteristic and advantage of the ’221 patent’s invention
`
`is critical and is fundamentally different from systems that identify specific
`
`recipients for messages.
`
`The location-based message broadcasting described in the ’221 Patent relies
`
`on the “broadcast target area” which is received as part of a broadcast message
`
`record. Ex. 1001 at Fig. 5 (element 502), 5:1–3, claim 19. This broadcast target
`
`area is utilized by the public service message location broadcasting system (PLBS)
`
`to provide “a message or alert to a single cell geographic location, a neighborhood,
`
`a city, or an entire nation with minimal impact to the hosting telecommunication
`
`networks.” Ex. 1001 at 6:23–27. The ’221 Patent further explains that “[u]nlike
`
`other emergency messaging services that require the recipient's identity, a
`
`predetermined fixed delivery location, and usually the payment of a service fee, the
`
`[PLBS] uses broadcast messaging technology to reach an unlimited number of
`
`people in real time, with no pre-event recipient action required.” Ex. 1001 at 6:17–
`
`22.
`
`2
`
`10 of 55
`
`
`
`

`

`The ’221 Patent also describes the verification of Broadcast Agents to
`
`transmit messages to a particular target area. Ex. 1001 at 4:37–40. “[T]he [PLBS]
`
`and methods described herein provide the functions and steps necessary to ensure
`
`that the Broadcast Agents are authorized to send the requested broadcast messages
`
`to the defined broadcast target area.” Ex. 1001 at 6:36–40. The PLBS “provides
`
`internal controls for insuring that the network and components are secure and that
`
`messages are authorized prior to transmittal” to the target area. Ex. 1001 at 6:39–
`
`44, claim 19. A geographically defined broadcast message jurisdiction is stored
`
`for a broadcast agent and is used to verify an authority of an originating broadcast
`
`agent to send a broadcast message to a broadcast target area. Ex. 1001 at claim 19.
`
`After validation is complete, the broadcast message record is transmitted to
`
`an output interface for ultimate broadcast to at least a portion of the broadcast
`
`target area. Ex. 1001 at claim 19.
`
`II.
`
`The Petition should be rejected for failure to name a Real Party in
`Interest (RPI).
`
`Petitioner acknowledges that International Business Machines Corporation
`
`(IBM) has voluntarily joined in the co-pending Court of Federal Claims action
`
`pursuant to Court of Federal Claims Rule 14 but argues that IBM is not an RPI for
`
`the purpose of this Petition. Pet. at 1–4.
`
`The determination of “whether a party who is not a named participant in a
`
`given proceeding nonetheless constitutes a ‘real party-in-interest’ or ‘privy’ to that
`
`3
`
`11 of 55
`
`
`
`

`

`proceeding is a highly fact-dependent question.” See Office Patent Trial Practice
`
`Guide (“Trial Guide”), 77 Fed. Reg. 48,756, 48,759 (2012) (citing Taylor v.
`
`Sturgell, 553 U.S. 880, 893–895, 893 n.6 (2008)).
`
`The factors for determining whether a non-party should be an RPI include:
`
`(i) the non-party's relationship with the Petitioner; (ii) the non-party's relationship
`
`to the petition itself, including the nature and/or degree of involvement in the
`
`filing; and (iii) whether the non-party exercised or could have exercised control
`
`over a party's participation in the proceeding. See Trial Guide, 77 Fed. Reg. at
`
`48,760.
`
`The facts in this case demonstrate that IBM is an RPI. In particular:
`
`(cid:120) The indemnification agreement between IBM and the Petitioner states
`that IBM could have exercised control over
`the Petitioner’s
`participation in this proceeding.
`
`(cid:120) Petitioner admits that IBM collaborated with it in connection with the
`preparation of the Petition.
`
`(cid:120) IBM has an interest in the outcome of this proceeding, because of the
`relationship between IBM and Petitioner.
`
`The authority cited by the Petitioner in arguing that IBM is not an RPI is not
`
`pertinent to the facts surrounding this Petition. Pet. at 1–4.
`
`4
`
`12 of 55
`
`
`
`

`

`A.
`
`Background
`
`On November 2, 2015, Patent Owner and exclusive licensee CellCast
`
`Technologies, LLC, filed a Complaint against the Petitioner in the United States
`
`Court of Federal Claims (the “Co-Pending Action”), alleging that Petitioner’s
`
`“Integrated Public Alert Warning System (‘IPAWS’)” infringes certain claims of
`
`the ’221 Patent (and other patents). Complaint, Ex. 2001.
`
`In the Co-Pending Action, Petitioner filed an Unopposed Motion to Notice
`
`Third Party International Business Machines Corporation on March 4, 2016.
`
`Motion to Notice Third Party (“Motion”), Ex. 2002. In the Motion, Petitioner
`
`stated that “aspects of [IPAWS] were developed in work performed by IBM under
`
`a multi-part contracting vehicle” and that “upon information and belief, the
`
`Department of Homeland Security (DHS) awarded an umbrella contract referred to
`
`as the EAGLE contract for Information Technology Support Services.” Ex. 2002 at
`
`2. This EAGLE contract was assigned EAGLE Contract No. HSHQDC-06-D-
`
`00019. Id. The Motion explained that EAGLE Contract No. HSHQDC-06-D-
`
`00019 “incorporated by reference, among others, Federal Acquisition Regulation
`
`(FAR) Clause 52.227-3 (APR 1984).” Ex. 2002 at 3. Clause 52.227-3 provides
`
`that a “Contractor shall indemnify the Government and its officers, agents, and
`
`employees against liability, including costs, for infringement of any United States
`
`patent…” See 48 C.F.R. § 52.227-3(a). Petitioner then concluded that “pursuant
`
`5
`
`13 of 55
`
`
`
`

`

`to the patent indemnity clause in Contract No. HSHQDC-06-D-00019, IBM may
`
`have an interest in the subject matter of this suit within the meaning of [the Rules
`
`of the United States Court of Federal Claims] 14(b).” Ex. 2002 at 3.
`
`After IBM was noticed, IBM then intervened in the Co-Pending Action,
`
`even though the only remedy in the Court of Federal Claims can be against the
`
`government (Petitioner) alone. See Answer of International Business Machines
`
`Corporation, Ex. 2003. IBM and Petitioner subsequently filed a Joint Motion to
`
`Stay Proceedings in light of the instant petition for inter partes review. See Motion
`
`to Stay Proceedings, Ex. 2004.
`
`B.
`
`IBM could have exercised control over Petitioner’s participation
`in this proceeding.
`
`Control by a party means “the availability of a significant degree of effective
`
`control in the prosecution or defense of the case.” Gonzalez v. Banco Central
`
`Corp., 27 F.3d 751, 758 (1st Cir. 1994). A non-party is considered to have control
`
`when it has “the power – whether exercised or not – to call the shots.” Id. “The
`
`concept of control generally means that it should be enough that the nonparty has
`
`the actual measure of control or opportunity to control that might reasonably be
`
`expected between two formal co-parties.” Trial Guide, 77 Fed. Reg. at 48,760
`
`(emphasis added).
`
`The indemnification clause grants IBM at least the ability to exercise control
`
`over Petitioner’s participation in this inter partes review proceeding. Indeed,
`
`6
`
`14 of 55
`
`
`
`

`

`Petitioner sought to delay the Co-Pending Action in order to provide IBM the
`
`opportunity to intervene in the case, which it did. The provision states, in part:
`
`This indemnity shall not apply unless the Contractor shall have been
`informed as soon as practicable by the Government of the suit or
`action alleging such infringement and shall have been given such
`opportunity as is afforded by applicable laws, rules, or regulations to
`participate in its defense.
`
`48 C.F.R. § 52.227-3(b).
`
`Thus, the indemnification agreement between Petitioner and IBM provides
`
`an opportunity for IBM, as the Contractor, to participate in the defense of any
`
`patent infringement action. Petitioner filed this Petition for inter partes review as
`
`part of the defense strategy in the Co-Pending Action, and these proceedings are
`
`“afforded by applicable laws, rules or regulations.” As support, the Board need
`
`only understand that IBM and Petitioner jointly filed the Motion to Stay
`
`Proceedings in the Co-Pending Action in light of the instant petition for inter
`
`partes review. Ex. 2004. All of this indicates that, even if IBM did not directly
`
`participate in this proceeding, IBM could have exercised control over the
`
`Petitioner’s participation in this proceeding pursuant to the terms of the contract.
`
`Petitioner cites to a number of previous PTAB decisions and argues that “the
`
`mere existence of an indemnification agreement does not establish that the
`
`indemnitor has the opportunity to control an inter partes review.” Pet. at 2
`
`7
`
`15 of 55
`
`
`
`

`

`(emphasis added, internal citations omitted). While that may be true, none of the
`
`cases cited by the Petitioner address the situation in which the terms of the
`
`indemnification agreement allow a non-named party to exercise control over a
`
`petitioner in a proceeding. The relevant issue is not merely the existence of an
`
`indemnification agreement, but whether the terms of the indemnification
`
`agreement allow IBM to exercise control over the Petitioner’s participation in this
`
`proceeding.
`
`The PTAB addressed an indemnification agreement that allowed a non-party
`
`to exercise control over a Petitioner in First Data Corp. v. Cardsoft (Assignment
`
`for the Benefit of Creditors), LLC, Case IPR2014-00715, slip op. at 7–10 (PTAB
`
`October 17, 2014) (Paper 9). The agreement in that case provided that the
`
`indemnitor “shall have the right at its expense to employ counsel… to defend
`
`against Claims that [the indemnitor] is responsible for… and to compromise, settle
`
`and otherwise dispose of such claims.” Id. at 7. The indemnitor in First Data even
`
`attempted to disclaim its rights pursuant to the indemnification agreement before
`
`the petition for inter partes review. Id. at 9. The Board was not persuaded by this
`
`disclaimer and found that the indemnitor “controlled, and/or had the opportunity to
`
`control the filing of the Petition in material respects and [was] a real party-in-
`
`interest to [the] proceeding.” Id.
`
`8
`
`16 of 55
`
`
`
`

`

`Just as in First Data, the indemnification agreement between IBM and the
`
`Petitioner grants IBM the opportunity to participate in the defense of any patent
`
`infringement suit resulting from their contract with Petitioner, and consequently, to
`
`control Petitioner’s participation in this proceeding.
`
`C.
`
`Petitioner admitted that IBM was involved.
`
`The Trial Practice Guide explains that the non-party’s relationship to the
`
`petition itself, “including the nature and/or degree of involvement in the filing” is a
`
`factor that should be considered when making a determination regarding RPI. See
`
`Trial Guide, 77 Fed. Reg. at 48,760. Here, Petitioner vaguely admitted that IBM
`
`had some involvement in the Petition:
`
`Beyond an arm’s length exchange of prior art, IBM and the
`government have not collaborated in any way on the preparation of
`this petition.
`
`Pet. at 4. As Petitioner states, IBM participated in some way in the Petition.
`
`In the related context of inter partes reexamination, the Board has
`
`previously stated that:
`
`To be required to be named as a real party in interest, a party must
`participate in some manner in the request for reexamination….
`Evidence that the activities were conducted with an intent to file an
`inter partes reexamination request is required….
`
`In re Slominski, Inter Partes Reexamination No. 95/001,852, Dismissal of Reexam
`
`Petition Decision at 4 (January 23, 2013) (emphasis changed). Thus, the intent of
`
`9
`
`17 of 55
`
`
`
`

`

`the non-named party is critical in determining whether the non-named party’s
`
`activities necessitate its identification as an RPI. Here, the Petitioner did not state
`
`that IBM provided prior art to the Petitioner for use in the co-pending litigation as
`
`part of the litigation defense. To the contrary, Petitioner was clear that IBM
`
`provided prior art to Petitioner with intent to file a petition for inter partes review.
`
`D.
`
`IBM has an interest in the outcome of this proceeding because of
`its relationship with Petitioner.
`
`Another factor in whether a non-party should be named as an RPI is the non-
`
`party’s relationship with the petitioner. Trial Guide, 77 Fed. Reg. at 48,760.
`
`In this case, the record of the Co-Pending Action indicates that IBM had
`
`entered into a contract with Petitioner to develop aspects of the Integrated Public
`
`Alert Warning System, which is the subject of the infringement claim in the Co-
`
`Pending Action. Ex. 2002 at 2. Additionally, IBM may be responsible for
`
`damages arising out of infringement of the ’221 Patent pursuant to the terms of the
`
`indemnification agreement. Id. IBM has also joined in the co-pending action
`
`voluntarily. Ex. 2003. Per the Petition, IBM also appears to have provided
`
`(alleged) prior art for use in the Petition. All of these factors support a finding that
`
`IBM is an RPI.
`
`E.
`
`The Petition should be denied because IBM is an RPI.
`
`Petitioner attempts to refute the combined evidence described above by
`
`arguing against each aspect in isolation. E.g., Pet. at 2–3. However, the evidence
`
`10
`
`18 of 55
`
`
`
`

`

`for IBM’s status as an RPI does not involve merely the existence of an
`
`indemnification agreement, or only IBM’s status as a codefendant. Whether an
`
`unnamed party is an RPI is based on the totality of the circumstances and not on
`
`isolated facts. ZOLL Lifecor Corp. v. Philips Electronics North America Corp.,
`
`Case IPR2013-00606, slip op. at 6 (PTAB March 20, 2014) (Paper 13). “The non-
`
`party’s participation may be overt or covert, and the evidence may be direct or
`
`circumstantial....” Id. Here, the totality of the circumstances indicates that IBM is
`
`an RPI to this proceeding.
`
`Because IBM is an unnamed RPI and 35 U.S.C. § 312(a) requires an IPR
`
`petition to name all real parties-in-interest, this Petition should be denied.
`
`III. Claim Construction
`
`Petitioner’s proposed construction of “broadcast” is divorced from the
`
`context of the claims and the entirety of the contextual guidance of the ’221 patent,
`
`is inaccurate, and vague.1 Accordingly, Patent Owner urges the Board to reject
`
`Petitioner’s proposed construction and to adopt Patent Owner’s proposed
`
`construction below.
`
`
`1 Patent Owner submits preliminary constructions for the purpose of this
`Preliminary Response and reserves the right to modify its constructions should the
`Board institute review.
`
`11
`
`19 of 55
`
`
`
`

`

`A.
`
`Legal Framework
`
`The Patent Trial and Appeal Board (“PTAB” or “Board”) will interpret
`
`claims of an unexpired patent using the broadest reasonable construction in light of
`
`the specification of the patent. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
`
`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016); In re Abbott Diabetes Care, Inc.,
`
`696 F.3d 1142, 1148 (Fed. Cir. 2012). Under the broadest reasonable construction
`
`standard, claims are to be given their broadest reasonable interpretation consistent
`
`with the specification, and the claim language should be read in light of the
`
`specification as it would be interpreted by a person having ordinary skill in the art.
`
`In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The
`
`broadest reasonable interpretation, however, does not allow constructions that
`
`ignore “the specification and teachings in the underlying patent” or that “interpret
`
`claims to embrace anything remotely related to the claimed invention.”
`
`In re
`
`Suitco Surface, Inc., 603 F.3d 1255, 1259–60 (Fed. Cir. 2010).
`
`The requirement that claims be interpreted in a way that is “consistent with
`
`the specification” is important because it prevents the construction from becoming
`
`unreasonably broad. See, e.g., Suitco, 603 F.3d at 1260 (construction must be
`
`“consistent with the specification…and that claim language should be read in light
`
`of the specification as it would be interpreted by one of ordinary skill in the art.”)
`
`(quoting In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)). “Even when guidance is
`
`12
`
`20 of 55
`
`
`
`

`

`not provided in explicit definitional format, the specification may define claim
`
`terms by implication such that the meaning may be found in or ascertained by a
`
`reading of the patent documents.” Abbott, 696 F.3d at 1150 (internal quotations
`
`omitted).
`
`Claim construction starts with the claims, Phillips v. AWH Corp., 415 F.3d
`
`1303, 1312 (Fed. Cir. 2005) (en banc), and remains centered on the words of the
`
`claims throughout. Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d
`
`1323, 1331 (Fed. Cir. 2001). Claim terms are not interpreted in a vacuum, devoid
`
`of the context of the claim as a whole, but that is what Petitioner proposes. See
`
`Hockerson-Halberstadt, Inc. v. Converse Inc., 183 F.3d 1369, 1374 (Fed. Cir.
`
`1999) (“proper claim construction…demands interpretation of the entire claim in
`
`context, not a single element in isolation”); ACTV, Inc. v. Walt Disney Co., 346
`
`F.3d 1082, 1088 (Fed. Cir. 2003) (“While certain terms may be at the center of the
`
`claim construction debate, the context of the surrounding words of the claim also
`
`must be considered….”).
`
`B.
`
`Petitioner Has Not Properly Construed “Broadcast.”
`
`The term “broadcast” is used throughout the claims but most often as an
`
`adjective in the context of a “broadcast message.” “Broadcast message” is the key
`
`term for construction, although “broadcast” also could be construed, provided that
`
`it is construed properly and consistently with the claims and specification.
`
`13
`
`21 of 55
`
`
`
`

`

`The proper construction of “broadcast message” in the context of this patent
`
`is: a message that is intended for transmission to all recipients in a target area and
`
`not to an identified recipient. To the extent the Board elects to construe
`
`“broadcast” instead, the proper construction of “broadcast” is: pertaining to
`
`transmission to all recipients in a target area and not to an identified recipient.2
`
`In contrast, Petitioner erroneously proposes that “broadcast” be construed to
`
`mean “to transmit data for purposes of wide dissemination over a communications
`
`network including, but not limited to, cellular carriers, digital private radio
`
`systems, private radio systems, internet, wireline telecommunications, satellite, and
`
`CATV systems.” Pet. at 9. Petitioner’s proposed construction is erroneous for a
`
`number of reasons, discussed in detail below.
`
`1.
`
`The claim language and the specification support Patent
`Owner’s proposed construction and refute Petitioner’s.
`
`The plain language of the claims themselves—giving effect to all terms—
`
`provides that the broadcast message is associated with transmission to all available
`
`recipients in a target area as an element of