IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________________
`
`FREEBIT AS,
`Petitioner,
`
`v.
`
`BOSE CORPORATION,
`Patent Owner.
`
`__________________
`
`Case IPR2017-01309
`
`Patent 9,036,853
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`__________________
`
`PETITIONER REPLY TO
`PATENT OWNER PRELIMINARY RESPONSE
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`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________
`
`FREEBIT AS,
`Petitioner,
`
`v.
`
`BOSE CORPORATION,
`Patent Owner.
`
`__________________
`
`Case IPR2017-01309
`
`Patent 9,036,853
`
`__________________
`
`PETITIONER REPLY TO
`PATENT OWNER PRELIMINARY RESPONSE
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`I.
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`
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`The Documents on Which Inventor Annunziato Relies Lack
`Corroboration
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`Corroboration is a requirement seldom considered in IPRs but frequently
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`considered in interferences. See generally Gholz and Harrison, Antedating Prior
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`Art in PTAB Patentability Trials, 90 PTCJ 2571 (July 10, 2015). Accordingly,
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`Petitioner invites the panel’s attention to Nickles v. Montgomery, 78 USPQ2d
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`1410, 1413 (B.P.A.I. 2005):
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`The cited pages of Hawthorne’s notebook have not been witnessed by
`any non-inventor and whatever activity is reflected by the entries lacks
`independent corroboration. It is well established that an inventor’s own
`testimony [and documents authored by an inventor] requires independent
`corroboration. See e.g., Cooper v. Goldfarb, 154 F.3d 1321, 1329, 47
`USPQ2d 1896, 1903 (Fed. Cir. 1998).
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`Since the documents on which Mr. Annunziato relies (Exhibits A-G) lack
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`independent corroboration, and Mr. Annunziato has not even been subject to cross-
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`examination, Mr. Annunziato’s declaration, Ex. 2001, is insufficient to establish an
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`actual reduction to practice (“ARP”).
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`II.
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`Petitioner Has Not Had an Opportunity to Cross-Examine Patent
`Owner’s Sole Declarant
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`The panel in Corning Inc. v. DSM IP Assets B.V. (IPR2013-00053, paper 66)
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`concluded that Rule 131 practice does not control an antedating effort in an inter
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`partes review, at least in part, because “in examination and reexamination (both ex
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`1
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`parte and inter partes), no discovery is allowed.” Due to the lack of discovery in
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`examination and reexamination, the Corning panel explained that it was prudent to
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`require testimony from all inventors under Rule 131 practice in order to safeguard
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`against, for example, a single inventor’s inaccurate memory.
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`Here, prior to institution and the opportunity to conduct discovery, it would
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`be premature to conclude that Patent Owner has met its burden of production. That
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`is, absent a complete record including the safeguards of cross-examination, this
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`panel is unable to determine the sufficiency of Patent Owner’s antedating effort.
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`III. The Annunziato Declaration Fails to Show a Physical Embodiment
`Which Responded to All of the Claim Limitations at Issue
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`The challenged claims are directed to an earphone comprising, among other
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`things, a housing containing an acoustic driver and an ear interface comprising a
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`body and a retaining member. It is well settled that “[t]here cannot be a reduction
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`to practice of the invention . . . without a physical embodiment which includes all
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`limitations of the claim.” UMC Elecs. Co. v. United States, 816 F.2d 647, 652
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`(Fed. Cir. 1987) (emphasis added). “It is equally well established that every
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`limitation of the [claim] must exist in the embodiment and be shown to have
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`performed as intended.” Newkirk v. Lulejian, 825 F.2d 1581, 1582 (Fed. Cir. 1987)
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`(emphasis added). Moreover, an equivalent of a physical embodiment does not
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`satisfy the first requirement of an ARP. Eaton v. Evans, 204 F.3d 1094, 1097-98
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`2
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`(Fed. Cir. 2000) (holding that a party cannot obviate the first requirement of
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`constructing a physical embodiment through evidence of testing an equivalent).
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`Notably, the claim chart attached to Exhibit 2001 substantially relies upon a
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`combination of a “non-working” prototype, CAD drawings, and a “working”
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`prototype in a failed effort to establish that Patent Owner had a physical
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`embodiment that includes all of the challenged claims’ limitations at issue.
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`IV.
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`If Patent Owner Had an ARP in March 2009, It Forfeited Its Right
`to Rely On that ARP
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`If the panel rules that Patent Owner had an ARP as early as March 2009 as
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`
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`asserted on page 18 of the Patent Owner Preliminary Response,1 then Patent
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`Owner forfeited its right to rely on that ARP by waiting over seventeen months to
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`file its patent application. See generally Paulik v. Rizkalla, 760 F.2d 1270, 1275,
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`226 USPQ 224, 228 (Fed. Cir. 1985) (in banc) (“Paulik I”):
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`We affirm the long-standing rule that too long a delay [in filing a patent
`application] may bar the first inventor from reliance on an early reduction
`to practice in a priority contest.
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`1 Other passages of the Preliminary Response indicate that the claims of the ‘853
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`patent were reduced to practice no later than May 26, 2009. See e.g., page 2, line
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`5.
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`3
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`
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`While Paulik I was an interference, it was based the 35 USC § 102(g) language
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`concerning “suppression or concealment” of an invention, which is of course
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`equally applicable to this IPR. Similarly, although Paulik II, 796 F.2d 456, 230
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`USPQ 434 (Fed. Cir. 1986), makes it clear that if, after a party such as Patent
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`Owner temporarily suppresses or conceals the invention, it later resumes work on
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`the invention, it can rely on the work that it did after its resumption of work on the
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`invention, Patent Owner offered no evidence of resumed work on the invention.
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`Moreover, Mr. Annunziato’s testimony (¶ 6) that his team put in hundreds
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`(if not thousands) of hours trying out and testing different designs for ear interfaces
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`is not credible. As pointed out in the petition (pages 20-21), aside from the
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`earphone having some type of retaining member used for stabilizing the earphone
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`in a user’s outer ear, which was well-known in the art at the time of filing of the
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`’853 patent, the earphone disclosed in Patent Owner’s prior art reference,
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`Sapiejewski, is nearly identical to that disclosed in the ’853 patent. (See Ex. 1005,
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`1006; Ex. 1003, ¶¶ 63-64, 73).
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`Dated: September 1, 2017
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`Customer Number
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`22850
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`Tel. (703) 413-3000
`Fax (703) 413-2220
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`Respectfully submitted,
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`/W. Todd Baker/
`W. Todd Baker
`Reg. No. 45,265
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`John F. Presper
`Reg. No. 53,483
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`4
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies service of
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`Petitioner’s Reply to Patent Owner’s Preliminary Response on the counsel of
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`record for the Petitioner by filing this document through the Patent Trial and
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`Appeal Board E2E System as well as delivering a copy via electronic mail to the
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`following addresses:
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`Respectfully submitted,
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`/W. Todd Baker/
`W. Todd Baker
`Reg. No. 45,265
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`W. Karl Renner
`David Holt
`Andrew R. Kopsidas
`Fish & Richardson P.C.
`IPR02103-1038IP1@fr.com
`PTABInbound@fr.com
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`Dated: September 1, 2017
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