Case IPR2018-01553
`Patent No. 5,699,275
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD., and
`GOOGLE LLC1,
`Petitioner,
`v.
`IRON OAK TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`IPR2018-01553
`Patent 5,699,275
`____________
`
`PATENT OWNER RESPONSE
`
`1 Google LLC, who filed a petition in IPR2019-00111, has been joined as a
`petitioner in this proceeding.
`
`
`Patent No. 5,699,275
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD., and
`GOOGLE LLC1,
`Petitioner,
`v.
`IRON OAK TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`IPR2018-01553
`Patent 5,699,275
`____________
`
`PATENT OWNER RESPONSE
`
`1 Google LLC, who filed a petition in IPR2019-00111, has been joined as a
`petitioner in this proceeding.
`
`
`
`Case IPR2018-01553
`Patent No. 5,699,275
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ..................................................................................... 1
`
`THE PETITION DOES NOT DEMONSTRATE INVALIDITY
`OF CLAIM 1 BY A PREPONDERANCE OF THE EVIDENCE.............. 1
`
`A.
`
`Petitioner Has Not Shown That A Hapka-Parrillo
`Combination Rendered Obvious Claim 1 ........................................ 3
`
`1.
`
`Petitioner Failed To Prove That Hapka Discloses
`Selective Updating Of First And Second Mobile
`Units When Both Are Capable Of Being Updated
`By The Same Patch................................................................. 6
`
`B.
`
`Petitioner Has Not Shown That Wortham Combined With Hapka-
`Parrillo Rendered Claim 1 Obvious ................................................. 9
`
`III.
`
`CONCLUSION ......................................................................................... 9
`
`ii
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`Case IPR2018-01553
`Patent No. 5,699,275
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`I.
`
`INTRODUCTION
`
`The Board instituted review of claim 1 of U.S. Patent No. 5,699,275 (“the
`
`’275 patent”) based on the proposed combination of Hapka (Ex. 1008) and Parrillo
`
`(Ex. 1009), hereafter the “Hapka-Parrillo” combination.
`
`Patent Owner presents herein only those arguments necessary to demonstrate
`
`that Petitioner did not carry its burden of showing unpatentability of claim 1. Patent
`
`Owner does not accede to those arguments and evidence set forth in the petition, or
`
`to those conclusions drawn by the Board in the Institution Decision, that are not
`
`directly addressed herein. Patent Owner incorporates herein for all purposes those
`
`arguments presented in its Preliminary Response.
`
`II.
`
`THE PETITION DOES NOT DEMONSTRATE INVALIDITY OF
`CLAIM 1 BY A PREPONDERANCE OF THE EVIDENCE
`
`After institution, Petitioner has the burden of persuasion to establish by a
`
`preponderance of the evidence that claim 1 is invalid as alleged in the petition. 35
`
`U.S.C. § 316(e); Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1334 (Fed. Cir. 2016)
`
`(“[T]he burden of proof is on the petitioner to prove unpatentable those issued claims
`
`that were actually challenged in the petition for review and for which the Board
`
`instituted review."). The burden of persuasion burden never shifts to the Patent
`
`Owner. Dynamic Drinkware LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
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`Case IPR2018-01553
`Patent No. 5,699,275
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`(Fed. Cir. 2015) ("In an inter partes review, the burden of persuasion is on the
`
`petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C.
`
`§ 316(e), and that burden never shifts to the patentee." ).
`
`Perhaps more importantly, the burden of production never shifts to the Patent
`
`Owner. In re Magnum Oil Tools International, Ltd., 829 F.3d 1364 (Fed. Cir. 2016)
`
`(“We thus disagree with the PTO's position that the burden of production shifts to
`
`the patentee upon the Board's conclusion in an institution decision that "there is a
`
`reasonable likelihood that the petitioner would prevail.").
`
`In other words, to prevail on its allegation that claim 1 is rendered obvious by
`
`the proposed Hapka-Parrillo combination,
`
`the petition must demonstrate by a
`
`preponderance of the evidence that the differences between the subject matter of
`
`claim 1 and the properly characterized prior art are such that the claimed subject
`
`matter, as a whole, would have been obvious at the time the invention was made to
`
`a person having ordinary skill in the art to which said subject matter pertains. KSR
`
`Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`
`The determination of obviousness involves multiple fact questions, for which
`
`Petitioner bears the un-shifting burdens of production and persuasion. See Graham
`
`v. John Deere Co., 383 U.S. 1, 17 (1966). A fundamental factual inquiry in the
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`obvious analysis is the “content” of the prior art. Id.
`
`In other words, Petitioner has
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`2
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`Case IPR2018-01553
`Patent No. 5,699,275
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`the burden to prove what a person of skill in the art would have understood what
`
`each prior art reference disclosed at the time the ’275 patent application was filed.
`
`To establish obviousness of claim 1, the petition must demonstrate that all of
`
`the claim elements are disclosed or suggested by the properly combined prior art.
`
`See CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003); In re
`
`Royka, 490 F.2d 981, 985 (CCPA 1974). Thus, the petition “must specify where
`
`each element of the claim is found in the prior art patents or printed publications
`
`relied upon.” 37 C.F.R. § 42.104(b)(4); see also Arendi S.A.R.L. v. Apple, Inc., 832
`
`F.3d 1355 (Fed. Cir. 2016) (reversing Board obviousness determination based on
`
`“common sense” that was conclusory and unsupported by substantial evidence).
`
`Conclusory statements, whether by attorney or expert, cannot satisfy the
`
`burden of demonstrating obviousness. In re Magnum Oil Tools, 829 F.3d at 1380.
`
`A.
`
`Petitioner Has Not Shown That The Proposed Hapka-Parrillo
`Combination Rendered Obvious Claim 1
`
`Among many other things, claim 1 requires that “the manager host is further
`
`operable to address the at least one discrete patch message such that the at least one
`
`discrete patch message is transmitted to the first mobile unit but not the second
`
`mobile unit.” Ex. 1001 at claim 1 (emphasis added).
`
`3
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`Case IPR2018-01553
`Patent No. 5,699,275
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`In the Institution Decision, the Board concluded that this claim phrase needed
`
`further construction and rewrote the claim phrase to require that
`
`the manager host is further operable to decide which specific mobile
`unit to send address the at least one discrete patch message to before
`beginning transmission such that
`the at
`least one discrete patch
`message is transmitted to the first mobile unit but not the second mobile
`unit.
`
`Decision at 6. Notably,
`
`the Decision did not conclude whether Petitioners’
`
`arguments and evidence about the Hapka-Parrillo combination disclosed this claim
`
`element, and merely recounted Petitioner’s contentions. See Decision at 16-18. As
`
`shown below, Petitioner has failed to carry its burden at least for this claim element.
`
`As a first threshold issue, a correct characterization or understanding of the
`
`“content” of the prior art is fundamental to a proper validity analysis. As the
`
`Supreme Court established in Graham v. John Deere Co., 383 U.S. 1 (1966), “the
`
`scope and content of the prior art are to be determined; differences between the prior
`
`art and the claims at issue are to be ascertained; and the level of ordinary skill in the
`
`pertinent art resolved. Against this background, the obviousness or nonobviousness
`
`of the subject matter is determined.” Id. at 17. Not surprisingly, Board decisions
`
`are reversed when the “content” of the prior art is not correctly determined. See,
`
`e.g., In Re McNeil-PPC, Inc., 574 F.3d 1393, 1401 (Fed. Cir. 2008) (reversing
`
`4
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`Case IPR2018-01553
`Patent No. 5,699,275
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`Board’s determination of obviousness because of error in understanding prior art);
`
`In Re Chapman, 595 F.3d 1330, 1339-40 (Fed. Cir. 2010) (vacating obviousness
`
`determination by Board so that it can “revisit its conclusion of obviousness in light
`
`of a correct understanding of Gonzalez.”). A correct understanding of the content
`
`of a reference cannot be obtained by cherry-picking some prior art statements and
`
`ignoring others. The reference as a whole must be considered and properly
`
`understood.
`
`As a second threshold issue, it must be appreciated that the universe of first
`
`and second mobile units described by claim 1 are only those mobile units that: 1)
`
`are “operable to receive the at least one discrete patch message;” 2) that are
`
`“operable to create patched operating code” by merging the patch with current
`
`operating code; and 3) that are operable to switch execution to the patched operating
`
`code. Thus, the second mobile unit of claim 1 must be in a condition that its current
`
`operating code could be updated by the patch message sent to the first mobile unit.
`
`A mobile unit whose current operating code cannot be updated with the patch
`
`message cannot be the “second mobile unit” required by claim 1. For example, a
`
`mobile unit whose operating code has been updated by the patch message cannot be
`
`a “second mobile unit” because that unit no longer is “operable to create patched
`
`operating code by merging the at least one patch with current operating code.” See
`
`Ex. 1001 at claim 1.
`
`5
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`Case IPR2018-01553
`Patent No. 5,699,275
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`Neither the Board’s Decision nor the petition expressly addresses these
`
`requirements of claim 1 that at the time of transmission of the patch message by the
`
`manager host both mobile units must be operable to create patched operating code
`
`from current operating code, and that the manager host transmit the patch to one
`
`mobile unit and not the other even though both units are capable of updating current
`
`operating code.2 As shown below, this is one element of claim 1 that the Petition
`
`failed to even address.
`
`1.
`
`Petitioner Failed To Prove That Hapka Discloses Selective
`Updating Of First And Second Mobile Units When Both Are
`Capable Of Being Updated By The Same Patch
`
`Petitioner argues that because Hapka discloses a fleet of vehicles with each
`
`having a “mobile unit,” Hapka necessarily discloses a first “mobile unit” and a
`
`second “mobile unit.” Pet. at 54. Neither Petitioner nor its expert separately argues
`
`how or where Hapka discloses that the alleged “second” mobile unit could be
`
`updated by the same patch (i.e., “the at least one discrete patch message”) that
`
`2 Patent Owner sometimes refers to this claim requirement with shorthand “selective
`updating.” The Patent Office recognized the patentability of claim 1 by specifically
`noting the “selective updating” requirement of claim 1. See Ex. 1004 at 110.
`
`6
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`Case IPR2018-01553
`Patent No. 5,699,275
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`updated the first mobile unit, as required by claim 1. See Pet. at 53-55; Ex. 1002 at
`
`¶¶ 244-245.
`
`Petitioner further argues that because Hapka discloses a fleet of vehicles, that
`
`sending a communication to one vehicle to modify its engine algorithm necessarily
`
`means that a second vehicle was not sent the communication. Pet. at 55-56. As
`
`pointed out above, it is irrelevant for claim 1 whether Hapka discloses not sending a
`
`communication to a second terminal. See Ex. 1001 at claim 1.
`
`What is relevant, and what neither Petitioner nor its expert addressed is
`
`whether Hapka disclosed that the alleged “second mobile unit” is operable to receive
`
`the same communication (algorithm modification) as the first mobile unit, and
`
`whether the alleged “second mobile unit” is operable to create patched operating
`
`code using the same communication (algorithm modification) as used by the first
`
`mobile unit. As explained in In re Magnum Oil Tools, it is not Patent Owner’s
`
`burden to prove why Hapka fails to disclose the claim limitation—it was and remains
`
`at all times Petitioners burden to show how and where Hapka discloses this claim
`
`requirement. In re Magnum Oil Tools, 829 F.3d at 1376-77 (“[I]it is inappropriate
`
`to shift the burden to the patentee after institution to prove that the patent is
`
`patentable.
`
`Instead,
`
`the petitioner continues to bear the burden of proving
`
`unpatentability after institution, and must do so by a preponderance of the evidence
`
`at trial.”). That, Petitioner did not do.
`
`7
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`Case IPR2018-01553
`Patent No. 5,699,275
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`Petitioner does not argue that Parrillo (Ex. 1009) discloses the “selective
`
`updating” aspect of claim 1.
`
`Instead, Petitioner focusses on Parrillo as allegedly
`
`disclosing the “operable to address” (or “decide which specific mobile unit to send,”
`
`as construed by the Board) aspect of claim 1. See Pet. at 56-60. Nowhere does
`
`Petitioner address how or where Hapka or Parrillo discloses a manager host that is
`
`operable to send an update communication to a first mobile unit, but not to a second
`
`mobile unit that is operable to create patched operating code using that very same
`
`communication update. Indeed, Petitioner tacitly admits there is no such disclosure
`
`in Hapka or Parrillo by arguing instead that
`
`the Hapka-Parrillo combination
`
`“target[s] individual vehicles … that required a particular software modification,
`
`while not affecting the operating code of vehicles not requiring a modification.”
`
`As established above, a vehicle that does not require the modification (i.e., not
`
`operable to created patched operating code) cannot be the “second mobile unit”
`
`required by claim 1.
`
`Thus, there is no plausible basis given in the petition for the Board to conclude
`
`that Petitioners have carried their burden to demonstrate by a preponderance of the
`
`evidence that a Hapka-Parrillo combination would be operable to transmit update
`
`information to one mobile terminal but not to a second mobile terminal when both
`
`terminals were “operable to create patched operating code by merging the at least
`
`one patch with current operating code located in the [] mobile unit.”
`
`8
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`Case IPR2018-01553
`Patent No. 5,699,275
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`B.
`
`Petitioner Has Not Shown That Wortham Combined With The
`Hapka -Parrillo Combination Rendered Obvious Claim 1.
`
`To the extent the “mobile unit” claim element is not disclosed by the Hapka-
`
`Parrillo, Petitioner relies on Wortham (Ex. 1014) to conclude that “this limitation
`
`would have been obvious to a POSITA in view of Wortham.” Pet. at 61; Ex. 1002
`
`at ¶¶ 45-58, 62-63, 257-264. Because the mobile units of claim 1 are not limited to
`
`battery-powered-devices, Petitioner’s reliance on Wortham is irrelevant.
`
`Moreover, Petitioner failed to show that Wortham disclosed the claim element
`
`missing from the Hapka-Parrillo combination; that is, selective updating. In other
`
`words, Petitioner provided no evidence or argument
`
`that Wortham disclosed
`
`transmitting update information to one mobile terminal but not to a second mobile
`
`terminal when both terminals were operable to update current operating software
`
`with the update information. See Pet. at 61-64; Ex. 1002 (Bederson) at ¶¶ 257-263.
`
`For at least this reason, Petitioner Samsung’s proposed combination of Hapka-
`
`Parrillo-Wortham fails to disclose or adequately suggest the combination of all
`
`elements in claim 1.
`
`III. CONCLUSION
`
`Petitioner had the burden to demonstrate in its petition that each element of
`
`claim 1 of the ’275 patent was disclosed in a legitimate combination of prior art
`
`9
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`Case IPR2018-01553
`Patent No. 5,699,275
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`references. Among other failures, Petitioner did not demonstrated in its petition that
`
`the prior art disclosed a manager host that “decides” not to send an operating code
`
`patch to a second mobile unit that is both operable to receive the patch and operable
`
`to create patched operating code from the patch that was sent to a first mobile unit,
`
`as required by claim 1. For at least this reason, the patentability of claim 1 should
`
`be confirmed.
`
`Date: May 24, 2019
`
`Respectfully submitted,
`
`By: /Al Deaver/
`Albert B. Deaver, Jr.
`Reg. No. 34,318
`Lead Counsel for Patent Owner
`
`10
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`Case IPR2018-01553
`Patent No. 5,699,275
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`CERTIFICATE OF COMPLIANCE
`
`Pursuant to 37 C.F.R. § 42.24(d), I certify that this Response to Petition
`
`complies with the type-volume limitation of 37 C.F.R. § 42.21(b)(1) because it
`
`contains fewer than the limit of 14,000 words, as determined by the word processing
`
`program used to prepare the document, excluding the parts of the document
`
`exempted by 37 C.F.R. § 42.24(a)(1).
`
`Date: May 24, 2019
`
`Respectfully submitted,
`
`By: /Al Deaver/
`Albert B. Deaver, Jr.
`Reg. No. 34,318
`Lead Counsel for Patent Owner
`
`
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`Case IPR2018-01553
`Patent No. 5,699,275
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §42.6(e), I certify that an electronic copy of the foregoing
`
`PATENT OWNER’S RESPONSE was served along with any accompanying
`
`exhibits via the Patent Review Processing System and via email to Petitioner’s
`
`counsel:
`
`Joseph Palys, Philip Citroën, Naveen Modi, and Howard Herr all at PH-Samsung-
`
`IronOak-IPR@paulhastings.com
`
`Matthew Smith
`
`at
`
`smith@smithbaluch.com and Andrew Baluch
`
`at
`
`baluk@smithbaluch.com
`
`Date: May 24, 2019
`
`Respectfully submitted,
`
`By: /Al Deaver/
`Albert B. Deaver, Jr.
`Reg. No. 34,318
`Lead Counsel for Patent Owner
`
`- 2 -
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