Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper No. 8
`Entered: October 1, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SONY INTERACTIVE ENTERTAINMENT LLC,
`Petitioner,
`
`v.
`
`TECHNO VIEW IP, INC.,
`Exclusive Licensee of the Patent Owner.1
`____________
`
`Case IPR2018-01044 (Patent 7,666,096)
`Case IPR2018-01045 (Patent 8,206,218)
`____________
`
`
`
`Before WILLIAM V. SAINDON and NORMAN H. BEAMER,
`Administrative Patent Judges.
`
`SAINDON, Administrative Patent Judge.
`
`
`
`DECISION
`Authorizing Reply to Patent Owner Preliminary Response
`37 C.F.R. § 42.108(c)
`
`
`
`
`
`
`1 TD Vision Corporation S.A. de C.V is the Patent Owner. Paper 4; see also
`infra note 3.
`
`

`

`IPR2018-01044 (Patent 7,666,096)
`IPR2018-01045 (Patent 8,206,218)
`Sony Interactive Entertainment LLC (“Petitioner”) filed petitions
`requesting inter partes reviews of claims 1–14 and 16–19 of U.S. Patent No.
`7,666,096 B2 (Ex. 1001, “the ’096 patent”) and claims 1–11, 13, and 14 of
`U.S. Patent No. 8,206,218 B2 (IPR2018-01045, Ex. 1001, “the ’218
`patent”). Paper 2 (“1044 Pet.”)2; IPR2018-01045, Paper 2 (“1045 Pet.”.
`Techno View IP, Inc. (“Patent Owner”)3 filed a Preliminary Response in
`both proceedings. Paper 6 (“1044 Prelim. Resp.”); IPR2018-01045, Paper 7
`(“1045 Prelim. Resp.”).
`Petitioner requested a conference call to seek authorization under 37
`C.F.R. § 42.108(c) to file a Reply to the Preliminary Response based on two
`pieces of evidence cited in the Preliminary Response. The first is that, in the
`Preliminary Response, Patent Owner offered, as evidence in support of an
`argument against Petitioner’s rationale to combine, an “End User License
`Agreement” (“EULA”), purported to be required of users of Petitioner’s
`“PS4 videogame console.” 1044 Prelim. Resp. 22–23 (citing Ex. 2002);
`
`
`2 Unless otherwise noted, citations in this Decision are to papers and exhibits
`in IPR2018-01044.
`3 To follow the convention used by the parties and avoid confusion, for the
`purposes of this proceeding we will identify Techno View IP, Inc., the
`exclusive licensee of the ’096 patent, as the “Patent Owner.” See Motorola
`Mobility LLC v. Patent of Michael Arnouse, No. IPR2013-00010 (Paper 27),
`2013 WL 5970127 at *3 (PTAB April 5, 2013) (applying Federal Circuit
`standing analysis to determine who “has the right to participate in
`proceedings at the Office”); Sicom Sys. Ltd. v. Agilent Techs., Inc., 427 F.3d
`971, 976 (Fed. Cir. 2005) (“[A]n exclusive license may be treated like an
`assignment for purposes of creating standing if it conveys to the licensee all
`substantial rights.”); Prima Tek II, L.L.C. v. A-Roo Co., 222 F.3d 1372, 1377
`(Fed. Cir. 2000) (holding that, with a transfer of “all substantial rights under
`the patent, the assignee may be deemed the effective ‘patentee’ under 35
`U.S.C. § 281”).
`
`2
`
`

`

`IPR2018-01044 (Patent 7,666,096)
`IPR2018-01045 (Patent 8,206,218)
`1045 Prelim. Resp. 26–28 (citing IPR2018-01045, Ex. 2001). During the
`call, Petitioner argued that it would not have reasonably foreseen that its
`EULA would be offered as evidence against obviousness and that good
`cause exists for Petitioner to respond to this evidence. Patent Owner argued
`that good cause did not exist because Petitioner should have foreseen the use
`of this evidence. We agree with Petitioner that citation of this particular
`evidence was not reasonably foreseeable and that good cause exists to allow
`Petitioner a brief reply to address this evidence. In particular, we find
`sufficiently novel and unexpected the argument that an end user of a “PS4
`videogame console” is representative of the level of ordinary skill in the art
`(the perspective from which obviousness is determined), or that legal
`constraints on the end user’s actions affect that perspective. In our opinion,
`a brief answer by Petitioner is warranted in order to provide us with better
`information to make a well-informed decision on institution.
`The second piece of evidence cited by Patent Owner in its Preliminary
`Response is Huether (Ex. 2001). In its Petition, Petitioner relies on Johnson
`(Ex. 1008) as a primary reference for several grounds, and in particular for
`the limitation of several claims regarding a determination if a signal is in a
`two- or three-dimensional format. See, e.g., Pet. 47; Prelim. Resp. 33.
`Patent Owner introduces Huether, cited and incorporated by reference in
`Johnson as a command signal protocol, to distinguish Johnson’s teachings
`relative to the claims.
`This presents a closer case, as Johnson’s incorporation by reference of
`Huether is the only cross-reference in Johnson (see Ex. 1008, 1:8–12) and
`appears relevant to the communication protocol relied at least in part upon
`by Petitioner to teach a limitation (see Pet. 47, citing Ex. 1008, 6:61–7:3,
`
`3
`
`

`

`IPR2018-01044 (Patent 7,666,096)
`IPR2018-01045 (Patent 8,206,218)
`4:35–43). The Huether protocol appears relevant to one of the portions of
`Johnson cited by Petitioner. Ex. 1008, 4:40–46 (discussing how a
`stereoscopic mode may be set and citing indirectly to Huether as a protocol
`for doing so). On the other hand, a reference teaches all it suggests to a
`person of ordinary skill in the art, and Johnson alone may be relied upon to
`suggest a limitation, if a person of ordinary skill in the art would understand
`it to make such a suggestion (even if it turns out Johnson in fact uses some
`other protocol). See, e.g., EWP Corp. v. Reliance Universal Inc., 755 F.2d
`898, 907 (Fed. Cir. 1985) (“A reference must be considered for everything it
`teaches by way of technology and is not limited to the particular invention it
`is describing and attempting to protect.”); In re Nievelt, 482 F.2d 965, 968
`(CCPA 1973) (“Combining the teachings of references does not involve an
`ability to combine their specific structures.”). We point this out merely to
`highlight that Petitioner’s position is not per se reliant on Huether and thus
`analysis of Huether is perhaps not necessarily foreseeable.
`In any event, Petitioner has already established good cause for a
`limited number of pages. We see little harm in allowing Petitioner to spend
`some of a fixed number of pages on this topic because it will provide us with
`better information to make a well-informed decision on institution.
`Ultimately, Petitioner is constrained to the grounds set forth in the Petition
`and the Reply cannot change the grounds, only argue their merits.
`Accordingly, we grant Petitioner’s request to file a Reply to the
`Preliminary Response, due October 5, 2018. The Reply is limited to
`responding to Patent Owner’s arguments in the Preliminary Response
`regarding EULA and Huether; no new evidence may be submitted. The
`
`4
`
`

`

`IPR2018-01044 (Patent 7,666,096)
`IPR2018-01045 (Patent 8,206,218)
`Reply will be no more than 5 pages and the exact same Reply will be filed in
`both cases.
`Our Decision herein is based on a very limited review of the record,
`constrained to understanding whether Petitioner has established good cause
`for a reply; nothing should be construed as a finding of fact or holding of
`law regarding the merits of either party’s arguments in the Petition or
`Preliminary Response.
`
`ORDER
`In view of the foregoing, it is hereby:
`ORDERED that Petitioner’s request for a Reply is granted, and that
`the Reply is limited according to the parameters set forth above.
`
`
`
`
`
`
`5
`
`

`

`IPR2018-01044 (Patent 7,666,096)
`IPR2018-01045 (Patent 8,206,218)
`For Petitioner:
`
`Abran Kean
`Eric Buresh
`ERISE IP, P.A.
`abran.kean@eriseip.com
`eric.buresh@eriseip.com
`
`For Patent Owner:
`
`Thomas Kramer
`O’KELLY ERNST & JOYCE, LLC
`tkramer@oelegal.com
`
`Thomas Meagher
`Alan Pattillo
`MEAGHER EMANUEL LAKS GOLDBERG & LIAO, LLP
`tmeagher@meagheremanuel.com
`cpattillo@meagheremanuel.com
`
`6
`
`