`
`Paper No. ___
`
`Date Filed: Sep 6, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`ULTRATEC, INC.
`Petitioner
`
`v.
`
`SORENSON IP HOLDINGS, LLC,
`Patent Owner
`________________
`
`Case IPR2017-01394
`________________
`
`Patent No. 9,336,689
`
`
`
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
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`

`

`IPR2017-01394
`U.S. Patent 9,336,689
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`TABLE OF CONTENTS
`
`
`
`I.
`
`INTRODUCTION ......................................................................................... 1
`
`II. THE ’689 PATENT ........................................................................................ 2
`
`III. THE ’801 PATENT FINAL WRITTEN DECISION IS NOT
`DISPOSITIVE OF THE ISSUES PRESENTED IN THIS
`PRELIMINARY RESPONSE. ................................................................... 11
`
`IV. THE SKILLED ARTISAN ......................................................................... 15
`
`V.
`
`CLAIM CONSTRUCTION ........................................................................ 15
`
`B.
`
`C.
`
`D.
`
`3.
`
`VI. PETITIONER FAILS TO SHOW THAT THERE IS A
`REASONABLE LIKELIHOOD THAT CLAIMS 1-12 AND 19 OF
`THE ’689 PATENT ARE OBVIOUS. ........................................................ 16
`A.
`The Standard for Instituting Inter Partes Review on a Given
`Claim ................................................................................................... 16
`The Standard For Determining Obviousness Under 35 U.S.C. §
`103 ....................................................................................................... 18
`Claim 1 Is Patentable Over The Combination of Engelke 2-
`Engelke 1 and Cervantes. .................................................................... 21
`1.
`Detailed Description of Evidence in the Petition ..................... 23
`2.
`The Combination of Engelke 2-Engelke 1 and Cervantes
`Does Not Disclose A “First Processor” that Performs the
`Recited Operations. ................................................................... 28
`The Combination of Engelke 2-Engelke 1 and Cervantes
`Does Not Disclose a “Second Processor” that Performs
`the Recited Operations. ............................................................. 34
`Claims 2-12 are Patentable Over the Combination of Engelke 2-
`Engelke 1 and Cervantes. .................................................................... 38
`Claim 5 is Patentable Over the Combination of Engelke 2-
`Engelke 1 and Cervantes ..................................................................... 39
`Claim 19 is Patentable Over The Prior Art. ........................................ 40
`1.
`Engelke 2-Engelke 1 and Cervantes ......................................... 42
`2.
`Engelke 2-Engelke 1, Cervantes, and The Florida Policy ........ 46
`3.
`Engelke 2-Engelke 1, Cervantes, and Hutchins ........................ 54
`
`E.
`
`F.
`
`VII. CONCLUSION ............................................................................................ 57
`
`
`i
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`IPR2017-01394
`U.S. Patent 9,336,689
`
`Cases
`
`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Apple Inc. v. Contentguard Holdings, Inc.,
`IPR2015-00451, Paper 9 ......................................................................... 13, 27, 56
`
`In re Bigio,
`381 F.3d 1320 (Fed. Cir. 2004) .......................................................................... 46
`
`In re Clay,
`966 F.2d 656 (Fed. Cir. 1992) ...................................................................... 46, 47
`
`In re Deminski,
`796 F.2d 436 (Fed. Cir. 1986) ............................................................................ 46
`
`Dominion Dealer Sol., LLC v. Autoalert, Inc.,
`IPR2013-00225, Paper 15 ....................................................................... 12, 27, 56
`
`Graham v. John Deere Co.,
`383 U.S. 1 (1966) ................................................................................................ 46
`
`Hopkins Mfg. Corp. v. Cequent Performance Products, Inc.,
`IPR2015-00616, Paper 9 .................................... 12, 16, 17, 18, 19, 20, 21, 27, 56
`
`Kingbright Elec. Co. Ltd. v. Cree, Inc.,
`IPR2015-00746, Paper 8 ......................................................................... 13, 28, 56
`
`KSR Int’l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ............................................................................................ 18
`
`Nike, Inc. v. Adidas AG,
`812 F.3d 1326 (Fed. Cir. 2016) .......................................................................... 12
`
`PAR Pharm., Inc. v. TWi Pharms., Inc.,
`773 F.3d 1186 (Fed. Cir. 2014) .......................................................................... 18
`
`Sci. Plastic Prods. v. Biotage AB,
`766 F.3d 1355 (Fed. Cir. 2014) .......................................................................... 47
`
`Verizon Servs. Corp. v. Cox Fibernet Va., Inc.,
`602 F.3d 1325 (Fed. Cir. 2010) .......................................................................... 46
`
`ii
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`

`IPR2017-01394
`U.S. Patent 9,336,689
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`
`
`Wowza Media Sys., LLC v. Adobe Sys. Inc.,
`IPR2013-00054, Paper 12 ....................................................................... 13, 27, 56
`
`Statutes
`
`35 U.S.C. § 103 .................................................................................................. 18, 38
`
`35 U.S.C. § 103(a) ................................................................................................... 18
`
`35 U.S.C. § 313 .......................................................................................................... 1
`
`35 U.S.C. § 314 .......................................................................................................... 1
`
`35 U.S.C. §314(a) .................................................................................................... 16
`
`Other Authorities
`
`37 C.F.R. 42.104(b)(4) ....................................................................................... 28, 56
`
`37 C.F.R. 42.108(c) .................................................................................................. 16
`
`37 C.F.R. § 42.6(a)(ii) .............................................................................................. 59
`
`37 C.F.R. § 42.6(a)(3) .............................................................................................. 24
`
`37 C.F.R. §42.22(a)(2) ..................................................................................................... 28, 56
`
`
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`IPR2017-01394
`U.S. Patent 9,336,689
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`LISTING OF EXHIBITS PURSUANT TO 37 C.F.R. § 42.63(e)
`
`Exhibit
`
`Description
`
`Ex. 2001
`
`Declaration of Benedict J. Occhiogrosso
`
`Ex. 2002
`
`Curriculum Vitae of Benedict J. Occhiogrosso
`
`Ex. 2003
`
`Ex. 2004
`
`The IEEE Standard Dictionary of Electrical and Electronics
`Terms (6th ed. 1996)
`Microsoft Press Computer Dictionary (3rd ed. 1997)
`
`Ex. 2005
`
`NVRA Certifications
`
`
`
`iv
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`IPR2017-01394
`U.S. Patent 9,336,689
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`I.
`
`INTRODUCTION
`
`
`
`
`Pursuant to 35 U.S.C. § 313, Patent Owner Sorenson IP Holdings, LLC
`
`(“Sorenson”) submits this Patent Owner Preliminary Response to the Petition by
`
`Ultratec, Inc. (“Ultratec”) for Inter Partes Review (“IPR”) of U.S. Patent No.
`
`9,336,689 (the “’689 Patent”). The Board should deny Ultratec’s petition with
`
`respect to claims 1-12 and 19 because the petition fails to “show[] that there is a
`
`reasonable likelihood that the petitioner would prevail” in its challenge to the
`
`patentability of these claims. 35 U.S.C. § 314.1
`
`The ’689 Patent generally relates to telecommunication systems and
`
`methods that allow an assisted user (including hearing-impaired and deaf users) to
`
`communicate with a hearing user via telephone. Ex. 1003 at 1:35-45. The hearing
`
`user’s voice is transmitted to both the hearing-impaired user’s device and a relay—
`
`“a telecommunication intermediary service, which is intended to permit a deaf or
`
`hearing-impaired person to utilize a normal telephone network.” Ex. 1003 at 1:27-
`
`29. The relay generates text of the hearing user’s voice, which is then displayed to
`
`the hearing-impaired user on his or her device. Ex. 1003 at 1:46-52.
`
`
`1 Without waiving any arguments regarding the patentability of claims 13-18 and
`
`20, Patent Owner will address only Petitioner’s challenges to claims 1-12 and 19 in
`
`this preliminary response.
`
`1
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`

`

`IPR2017-01394
`U.S. Patent 9,336,689
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`
`
`The ’689 Patent recognizes that errors in the captioning text reduce their
`
`usefulness to the assisted user and specifies certain requirements for addressing
`
`that problem. Ex. 1003 at 1:52-56. In particular, the ’689 Patent identifies the
`
`“need [] to improve text correction of a text captioning system. Specifically, [] a
`
`need for methods of providing text caption correction while providing a user with
`
`context of a correction and without distracting the user or interrupting the
`
`continuity of a conversation between a hearing-impaired user and a hearing user.”
`
`Ex. 1003 at 2:6-11. The ’689 Patent teaches a system of interconnected devices
`
`capable of delivering text caption corrections, while providing context for the
`
`corrections with minimal disturbance to the hearing-impaired user. The claims of
`
`the ’689 Patent recite specific relationships between the devices of the system.
`
`In contrast, the Petition identifies prior art combinations for merely
`
`delivering text caption corrections generally, without any attention to the specific
`
`implementation recited in the claims of the ’689 Patent. Thus, for at least this
`
`reason, the Petition fails to show a reasonable likelihood that claims 1-12 and 19
`
`are unpatentable.
`
`II. THE ’689 PATENT
`
`The ’689 Patent, entitled “Methods and Apparatuses Related to Text Caption
`
`Error Correction,” was filed on October 31, 2014, as U.S. Application No.
`
`14/530,407, and issued on May 10, 2016.
`
`2
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`

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`IPR2017-01394
`U.S. Patent 9,336,689
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`
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`The specification states that the embodiments disclosed in the ’689 Patent
`
`“relate generally to text captioning and more specifically to correction of errors
`
`within a text caption.” Ex. 1003 at 1:16-18. In a conversation between a hearing
`
`user and a hearing-impaired user, the text caption is generated at the “relay.” Ex.
`
`1003 at 1:27-29. Errors occur during the process of generating the text caption,
`
`and sometimes those errors are transmitted to the hearing-impaired user. Ex. 1003
`
`at 1:52-54. Traditionally, subsequent corrections to the text caption can interrupt
`
`the continuity of the conversation or otherwise confuse the hearing-impaired user.
`
`Ex. 1003 at 1:57-66. That is why the specification identifies “a need for methods
`
`of providing text caption correction while providing a user with context of a
`
`correction and without distracting the user or interrupting the continuity of a
`
`conversation between a hearing-impaired user and a hearing user.” Ex. 1003 at
`
`2:7-11.
`
`In the prior art, corrected text captions were provided to the hearing-
`
`impaired user in one of two ways. First, the relay can correct an error by
`
`“backspacing an error in a text caption and displaying corrected text . . . .” Ex.
`
`1003 at 1:58-59. To the hearing-impaired user, this would appear to be the
`
`equivalent of watching someone in a word processor use the backspace key to
`
`delete a portion of a sentence and replace it with corrections. Ex. 2001 at ¶¶ 39-40.
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`3
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`IPR2017-01394
`U.S. Patent 9,336,689
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`Although this first method provides context of where the errors had occurred, it is
`
`distracting. Ex. 1003 at 1:61-66.
`
`Second, the relay can correct an error by “displaying corrected text or
`
`providing a corrected portion (e.g., a word or a sentence) at the end of a previously
`
`provided text caption.” Ex. 1003 at 1:59-61. This method is also disruptive and
`
`deficient because the corrected text is displayed to the hearing-impaired user
`
`without any of the context that would be provided by the surrounding text. See Ex.
`
`1003 at 1:66-2:3.
`
`The captioning systems and methods taught in the ’689 Patent differ from—
`
`and improve upon—the prior art by providing in-line corrections. Figure 3, which
`
`is reproduced below, is an example of a text caption that includes errors (the word
`
`“top” should be “stop” and the word “door” should be “store”):
`
`Ex. 1003, Fig. 3, 2:55.
`
`Figure 4, which is reproduced below, depicts the same text caption, after the
`
`system has inserted in-line corrections (which are denoted as 414 and 416).
`
`
`
`4
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`IPR2017-01394
`U.S. Patent 9,336,689
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`Ex. 1003, Fig. 4, 2:56.
`
`Using the disclosed methods and systems minimizes disruption and
`
`confusion because the corrections are provided in-line. Ex. 1003 at 7:3-18. In
`
`addition, in certain embodiments, the in-line corrections can include a visual
`
`indicator, such as highlighting, as depicted in Figure 5.
`
`
`
`Ex. 1003, Fig. 5, 2:57-59.
`
`The ’689 Patent claims recite a specific system of interconnected devices for
`
`delivering in-line corrections to the hearing-impaired user. For example, claim 1,
`
`which is reproduced below, recites two communication devices.
`
`[1.0]2 A communication system including:
`
`2 For ease of reference, Patent Owner has adopted the same scheme for numbering
`
`claim limitations as the Petition.
`
`5
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`

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`IPR2017-01394
`U.S. Patent 9,336,689
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`
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`[1.1] a first communication device specifically configured for use by a call
`
`assistant of a remote captioning service providing captioning
`
`assistance
`
`for a hearing-impaired user during a
`
`real-time
`
`communication session; and
`
`[1.2] a second communication device specifically configured for use by the
`
`hearing-impaired user to provide captions displayed to the hearing-
`
`impaired user during the real-time communication session;
`
`[1.3] wherein the first communication device comprises: a first memory
`
`device having a speech recognition program stored therein;
`
`[1.4] a first input device configured to receive inputs from the captioning
`
`assistant;
`
`[1.5] a first processor operably coupled with the first memory device and the
`
`first input device,
`
`[1.6] the first processor configured to: receive a voice signal during a real-
`
`time communication session between at least two parties, the voice
`
`signal including at least audio from a far end user for the real-time
`
`communication session;
`
`[1.7] generate a text transcription for the audio for the far-end user from the
`
`voice signal during the real-time communication session using the
`
`speech recognition program;
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`6
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`IPR2017-01394
`U.S. Patent 9,336,689
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`[1.8] transmit a first block of text of the text transcription to the second
`
`communication device for display by the second communication
`
`device during the real-time communication session;
`
`[1.9] receive the inputs from the call assistant as edits to the text
`
`transcription; and
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`[1.10] transmit a replacement block of text with the edits to the second
`
`communication device after transmission of the first block to the
`
`second communication device has already occurred, the replacement
`
`block of text being an inline correction for the first block of text that
`
`was already received and displayed by the second communication
`
`device; and
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`[1.11] wherein the second communication device comprises: second
`
`electronic display; and
`
`[1.12] second processor operably coupled with the second electronic display,
`
`[1.13] the second processor configured to: receive the voice signal and
`
`during the real-time communication session;
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`[1.14] receive the first block of text of the text transcription from the remote
`
`captioning service;
`
`7
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`IPR2017-01394
`U.S. Patent 9,336,689
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`
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`[1.15] cause the first block of text of the text transcription to be displayed by
`
`the second electronic display as captions for the hearing-impaired user
`
`during the real-time communication session;
`
`[1.16] receive the replacement block of text from the remote captioning
`
`service after the first block of text has been received and displayed by
`
`the second electronic display; and
`
`[1.17] cause the replacement block of text to be displayed by the second
`
`electronic as an inline correction for the first block of text previously
`
`displayed by the second communication device.
`
`Ex. 1003 at 7:30-8:21 (emphases added).
`
`Claim 1 recites specific limitations for two communication devices. The
`
`“first communication device” is utilized by the “captioning assistant” at the relay
`
`to generate captions and replacement captions. To do so, claim 1 requires that the
`
`“first communication device” perform a series of operations on a single “first
`
`processor” (claim limitations 1.5-1.10). Similarly, claim 1 requires that the
`
`“second communication device”—which displays captions and replacement
`
`captions to the hearing-impaired user—perform a series of operations on a single
`
`“second processor” (claim limitations 1.12-1.17).
`
`8
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`IPR2017-01394
`U.S. Patent 9,336,689
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`
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`Claim 13, the other independent claim and from which claim 19 depends, is
`
`reproduced below. Claim 13 recites a method comprising three communication
`
`devices.
`
`[13.0] A method of providing error correction
`
`in a caption-based
`
`communication system, the method comprising:
`
`[13.1] receiving, at a first communication device associated with a call
`
`assistant within a captioning service, a voice signal during a real-time
`
`communication session between a second communication device
`
`associated with a hearing-impaired user and a third communication
`
`device;
`
`[13.2] receiving, at a second communication device, the voice signal from
`
`the first communication device within the remote communication
`
`device during the real-time communication session;
`
`[13.3] generating, at the first communication device, a text transcription for
`
`the voice signal during the real-time communication session using a
`
`speech recognition program;
`
`[13.4] transmitting, from the first communication device to the second
`
`communication device, a first block of text of the text transcription;
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`9
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`IPR2017-01394
`U.S. Patent 9,336,689
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`
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`[13.5] receiving, at the second communication device, the first block of text
`
`of the text transcription of the voice signal from the remote captioning
`
`service;
`
`[13.6] displaying the first block of text on a second electronic display of the
`
`second communication device during the real-time communication
`
`session;
`
`[13.7] receiving, through a first input device of the first communication
`
`device, corrections corresponding to an error within at least a portion
`
`of a text transcription after of the text transcription to the second
`
`communication device has already occurred;
`
`[13.8] generating, at the first communication device, a replacement block of
`
`text responsive to the corrections;
`
`[13.9]
`
`transmitting
`
`the replacement block of
`
`text from
`
`the first
`
`communication device to the second communication device as an
`
`inline correction for the error with instructions for the second
`
`communication device to indicate that the block of text is a correction
`
`for the portion of the text transcription to be replaced;
`
`[13.10] receiving, at the second communication device, the replacement
`
`block of text from the remote captioning service after the first block of
`
`10
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`IPR2017-01394
`U.S. Patent 9,336,689
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`
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`text has been received and displayed by the second electronic display;
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`and
`
`[13.11] displaying the replacement block of text on the second electronic
`
`display as an inline correction for the first block of text previously
`
`displayed by the second communication device.
`
`Ex. 1003 at 9:10-10:10 (emphases added).
`
`Claim 13 recites specific operations that must be performed by the first and
`
`second communication devices to provide inline corrections to the hearing-
`
`impaired user. And claim 19 recites a time restriction (of three seconds) within
`
`which “the second communication device” must receive “the replacement block of
`
`text from the remote captioning service . . . .” Id. at 10:31-36.
`
`III. THE ’801 PATENT FINAL WRITTEN DECISION IS NOT
`DISPOSITIVE OF THE ISSUES PRESENTED IN THIS
`PRELIMINARY RESPONSE.
`
`The ’689 Patent claims priority to U.S. Application No. 12/624,973, which
`
`issued as U.S. Patent No. 8,379,801 (the “’801 Patent”). On May 17, 2013,
`
`Petitioner filed a petition for inter partes review of all claims of the ’801 Patent
`
`(IPR2013-00288) (the “’801 Patent IPR”). See Ex. 1012 at 2. The Board instituted
`
`a trial on November 13, 2013, and held an oral hearing on July 10, 2014. See Ex.
`
`1011 at 2. Before the hearing, Patent Owner CaptionCall disclaimed claims 1, 2, 7,
`
`11
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`IPR2017-01394
`U.S. Patent 9,336,689
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`and 9 of the ’801 Patent. See id. The Board issued a final written decision on
`
`October 30, 2014, finding the remaining claims unpatentable. See id. at 28.
`
`Although the ’689 Patent and the ’801 Patent share specification, they differ
`
`markedly in the scope and substance of the claimed invention. The claims
`
`ultimately define the scope of invention, and Petitioner’s burden is to identify
`
`where in the alleged prior art each limitation of the claims is disclosed. See
`
`Hopkins Mfg. Corp. v. Cequent Performance Products, Inc., IPR2015-00616,
`
`Paper 9 at 7 (“The petition . . . must specify where each element of the claim is
`
`found in the prior art patents or printed publications relied upon.”) (citing 37
`
`C.F.R. 42.104(b)(4)); see also Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1333-4 (Fed.
`
`Cir. 2016) (Ҥ 316(e) places the burden of proving unpatentability on the petitioner
`
`as it relates to any patent claim . . . [;] the evidentiary standard set forth in § 316(e)
`
`applies to ‘an inter partes review instituted under this chapter,’ making clear that
`
`the burden of proof is on the petitioner to prove unpatentable those issued claims
`
`that were actually challenged in the petition for review.”) Indeed, “[t]he Board
`
`may exclude or give no weight to the evidence where a party has failed to state its
`
`relevance or to identify specific portions of the evidence that support the
`
`challenge.” Hopkins, IPR2015-00616, Paper 9 at 7; see also Dominion Dealer
`
`Sol., LLC v. Autoalert, Inc., IPR2013-00225, Paper 15 at 3 (“The Board may
`
`exclude or give no weight to the evidence where a party has failed to state its
`
`12
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`IPR2017-01394
`U.S. Patent 9,336,689
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`
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`relevance or to identify specific portions of the evidence that support the
`
`challenge.”); Wowza Media Sys., LLC v. Adobe Sys. Inc., IPR2013-00054, Paper 12
`
`at 11; Apple Inc. v. Contentguard Holdings, Inc., IPR2015-00451, Paper 9 at 4
`
`(“[t]he petition must specify where each element of the claim is found in the prior
`
`art patents or printed publications relied upon.”); Kingbright Elec. Co. Ltd. v. Cree,
`
`Inc., IPR2015-00746, Paper 8 at 5, 7, and 9 (“The petition must specify where each
`
`element of the claim is found in the prior art patents or printed publications relied
`
`upon.”)
`
`Here, the Petition falls short of Petitioner’s burden because it addresses only
`
`the general concept of inline corrections to captions, but disregards the specific
`
`limitations of the ’689 Patent that distinguish the claims challenged here from
`
`those in the ’801 Patent. As such, the arguments that the Board considered in
`
`analyzing the claims of the ’801 Patent (many of which are repeated in the instant
`
`petition) are not dispositive of the patentability of the claims of the ’689 Patent.
`
`For example, claim 1 of the ’801 Patent, which was disclaimed, is
`
`reproduced below.
`
`1. A method of providing error correction in a text caption, the method
`
`comprising:
`
`13
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`IPR2017-01394
`U.S. Patent 9,336,689
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`
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`displaying a text caption on at least one electronic device, the text caption
`
`including one or more blocks of text representing a text transcription
`
`of a voice signal;
`
`replacing a first block of text of the text caption with another block of text
`
`during a real-time conversation from which the voice signal is
`
`generated; and
`
`displaying another block of text within the text caption on the at least one
`
`electronic device at a location of the first block of text within the text
`
`caption.
`
`Ex. 1021 at 7:30-40.
`
`Claim 1 of the ’801 Patent is substantively different from the claims of the
`
`’689 Patent because, for example, claim 1 of the ’801 Patent does not limit how or
`
`where voice signals are received. Nor does it limit how or where the “first block of
`
`text” is generated, e.g., at the first communication device or elsewhere, or replaced,
`
`e.g., “inline” or elsewhere. Furthermore and critically, claim 1 of the ’689 Patent,
`
`which is a system claim, requires that certain operations be performed on specific
`
`hardware components in each communication device (i.e., the one located at the
`
`relay and the hearing-impaired user’s device). Such limitations are not present in
`
`the claims of the ’801 Patent.
`
`14
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`IPR2017-01394
`U.S. Patent 9,336,689
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`Stated simply, the ’801 and ’689 Patents are not directed to the same
`
`invention. As demonstrated below, the Petition is deficient because it merely
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`addresses a broad concept, while ignoring the specifics of the invention claimed in
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`the ’689 Patent. That is why the final written decision in the ’801 Patent IPR is not
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`dispositive of the issues in this Petition.
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`IV. THE SKILLED ARTISAN
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`Petitioner adopts the Board’s definition of a skilled artisan from the ’801
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`Patent IPR: “an individual who possesses a bachelor in science in electrical
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`engineering, computer science, or computer information systems, along with a
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`general knowledge and understanding of a text caption communication system,
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`including ‘the electronic generation, correction, and display of transcribed or
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`captioned text that is transmitted to and displayed on an electronic device.’” Paper
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`1 at 9 (citing Ex. 1011 at 9-10). Patent Owner does not dispute that definition for
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`the purpose of this proceeding, except that someone with less technical education
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`but more experience or more technical education but less experience would also
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`have been a skilled artisan. Ex. 2001 at ¶¶ 29-32.
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`V. CLAIM CONSTRUCTION
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`Petitioner proposes that the term “block of text” be construed as “at least one
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`word, sentence, or line of text.” Paper 1 at 3-4. Patent Owner, for the limited
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`purposes of this response, does not oppose this proposed construction, which was
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`adopted by the Board in the final written decision in the ’801 Patent IPR. See Ex.
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`1011 at 7.
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`VI. PETITIONER FAILS TO SHOW THAT THERE IS A REASONABLE
`LIKELIHOOD THAT CLAIMS 1-12 AND 19 OF THE ’689 PATENT
`ARE OBVIOUS.
`
`A. The Standard for Instituting Inter Partes Review on a Given
`Claim
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`For each claim challenged in its petition for inter partes review, Petitioner
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`bears the burden of showing that there is a “reasonable likelihood” that it will
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`prevail in its challenge. 35 U.S.C. §314(a); see also 37 C.F.R. 42.108(c). As the
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`Board has explained, “[u]nder the statute, any petition for inter partes review must
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`‘identif[y] . . . with particularity . . . the grounds on which the challenge to each
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`claim is based.’” Hopkins, IPR2015-00616, Paper 9 at 7 (quoting 35 U.S.C. §
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`312(a)(3)). Petitioner has “the burden of proof to establish that it is entitled to the
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`requested relief.” Id. (citing 37 C.F.R. § 42.20(c)). Under this framework, the
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`Board “address[es] only the basis, rationale, and reasoning put forth by the
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`Petitioner[] in the Petition, and resolve[s] all vagueness and ambiguity in
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`[Petitioner’s] arguments against Petitioner[].” Id. citing Liberty Mut. Ins. Co. v.
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`Progressive Cas. Ins. Co., CBM-2012-00003, slip op. at 10 (PTAB Oct. 25, 2012)
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`(Paper 8) (emphasis added). Furthermore, “[t]he petition must include a detailed
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`explanation of the significance of the evidence,” (id. (citing 37 C.F.R.
`
`§42.22(a)(2))) and it “must specify where each element of the claim is found in the
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`prior art patents or printed publications relied upon.” Id. (citing 37 C.F.R.
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`42.104(b)(4)). As such, “[i]t is Petitioner’s responsibility ‘to explain specific
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`evidence that support[s] its arguments, not the Board’s responsibility to search the
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`record and piece together what may support Petitioner’s arguments.” Hopkins,
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`IPR2015-00616, Paper 9 at 9 (citing Dominion, Case IPR2013-00225, slip. op. at 4
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`(PTAB Oct. 10, 2013) (Paper 15)).
`
`Petitions that fail to comply with these requirements are denied by the
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`Board. For example, in Plant Science, Inc. v. The Andersons, Inc., the Board
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`determined that “the information presented in the Petition [did] not demonstrate a
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`reasonable likelihood that [the] Petitioner[] would prevail with respect to its
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`assertions of unpatentability” because “the Petition (1) [did] not specify
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`sufficiently where each element of the claims [was] found in the applied
`
`references, and (2) [did] not include a detailed explanation of the significance of
`
`the evidence.” IPR2014-00941, Paper 9 at 15-16. Similarly, in Tempur Sealy Int’l,
`
`Inc. v. Select Comfort Corp., the Board denied a petition that did “not explain
`
`cogently how the construed claims [were] unpatentable.” IPR2014-01419, Paper 7
`
`at 7. In particular, the petition stated that “the system of [the prior art references]
`
`would include a microprocessor without identifying which reference [was] relied
`
`upon as disclosing a processor as claimed.” Id. In Hopkins, the Board determined
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`that because the petition lacked a detailed explanation of the significance of the
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`evidence and specificity as to the disclosure of each element, it did “not meet
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`Petitioners’ burden of proof.” IPR2015-00616, Paper 9 at 7. In such
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`circumstances, the “Board may exclude or give no weight to the evidence where a
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`party has failed to state its relevance or to identify specific portions of the evidence
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`that support the challenge.” Id.
`
`B.
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`The Standard For Determining Obviousness Under 35 U.S.C. §
`103
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`“A patent . . . may not be obtained . . . if the differences between the claimed
`
`invention and the prior art are such that the claimed invention as a whole would
`
`have been obvious before the effective filing date of the claimed invention to a
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`person having ordinary skill in the art to which the claimed invention pertains.”
`
`35 U.S.C. § 103(a). But a patent is not proved obvious merely by demonstrating
`
`that each element was known in the prior art. KSR Int’l Co. v. Teleflex Inc., 550
`
`U.S. 398, 418 (2007). Rather, the party challenging the validity of a patent must
`
`also identify why a skilled artisan would have combined the elements in the way
`
`claimed, and that the skilled artisan would have had a reasonable expectation of
`
`success. See PAR Pharm., Inc. v. TWi Pharms., Inc., 773 F.3d 1186, 1193 (Fed. Cir.
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`2014). Moreover, the alleged reasoning for why a skilled artisan would combine
`
`the elements must be supported by evidence, not conclusory statements. KSR Int’l
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`Co., 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). To
`
`reach a conclusion of obviousness “requires more than a mere showing that the
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`prior art includes separate references covering each separate limitation in a claim
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`under examination . . . .” Hopkins, IPR2015-00616, Paper 9 at 12 (citing Unigene
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`Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir. 2011)). “[O]bviousness
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`requires the additional showing that a person of ordinary skill at the time of the
`
`invention would have selected and combined those prior art elements in the normal
`
`course of research and development to yield the claimed invention.” Id.
`
`In Hopkins, Petitioners stated “generally that [a prior art reference]
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`disclose[d] “an input circuit,” “a display circuit,” “a power switching circuit,” “a
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`current sensing circuit,” and a “microprocessor control.” Hopkins, IPR2015-
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`00616, Paper 9 at 7-8. The Board found that these “broad circuit labels [] do not
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`correspond with the detailed recitation in [the claim] of the specific elements
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`claimed.” Id. at 8. Petitioners did not identify each of the specific claim elements
`
`and explain how the prior art disclosed those elements. Despite quoting exten