UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ERICSSON INC.
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`Petitioner
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`v.
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`UNILOC 2017 LLC
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`Patent Owner
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`IPR2020-00315
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`U.S. PATENT NO. 7,075,917
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ERICSSON INC.
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`Petitioner
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`v.
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`UNILOC 2017 LLC
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`Patent Owner
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`IPR2020-00315
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`U.S. PATENT NO. 7,075,917
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`IPR2020-00315
`U.S. Patent No. 7,075,917
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`I.
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`II.
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`Table of Contents
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`INTRODUCTION ........................................................................................ 1
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`THE ‘917 PATENT ...................................................................................... 1
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`A.
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`B.
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`C.
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`Effective Filing Date of the ‘917 Patent
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`Overview of the ‘917 Patent
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`Prosecution History of the ‘917 Patent
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`1
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`2
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`11
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`III. RELATED PROCEEDINGS ...................................................................... 13
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`IV. THE BOARD SHOULD EXERCISE DISCRETION TO DENY
`INSTITUTION ........................................................................................... 14
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`V.
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`LEVEL OF ORDINARY SKILL IN THE ART ......................................... 14
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`VI. PETITIONER FAILS TO CARRY ITS BURDEN OF SHOWING A
`REASONABLE LIKELIHOOD OF PREVAILING AS TO ANY
`CHALLENGED CLAIM. ........................................................................... 15
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`A.
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`B.
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`C.
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`D.
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`Claim Construction Standard
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`16
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`The Petition fails to establish that TR25.835 constitutes prior art as to
`the ‘917 Patent.
`16
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`No prima facie obviousness for “storing abbreviated sequence
`numbers whose length depends on the maximum number of coded
`transport blocks to be stored and which can be shown unambiguously
`in a packet data unit sequence number”
`30
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`The Petition does not establish that TR25.835 teaches or renders
`obvious “a physical layer of a receiving side is provided for testing the
`correct reception of the coded transport block” as recited in Claim 1.
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`37
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`VII. CONCLUSION .......................................................................................... 41
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`ii
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`I.
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`INTRODUCTION
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`Uniloc 2017 LLC (the “Patent Owner” or “Uniloc”) submits its Patent Owner
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`Preliminary Response to the Petition for Inter Partes Review (“Pet.” or “Petition”)
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`of United States Patent No. 7,075,917 (“the ‘917 patent” or “Ex. 1001”) filed by
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`Ericsson Inc. (“Petitioner”) in IPR2020-00315.
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`In view of the reasons presented herein, the Petition should be denied in its
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`entirety as failing to meet the Petitioner’s burden of proving a reasonable likelihood
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`of prevailing as to any challenged claim.
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`Uniloc addresses each ground and provides specific examples of how
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`Petitioner failed to meet its burden of proof. As a non-limiting example described in
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`more detail below, the Petition has failed to establish that the primary reference on
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`the sole ground is prior art, and the Petition fails the all-elements-rule in not
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`addressing every feature of any of the challenged claims.
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`II. THE ‘917 PATENT
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`A. Effective Filing Date of the ‘917 Patent
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`The ‘917 patent is titled “Wireless Network with a Data Exchange According
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`to the ARQ Method.” The ‘917 Patent issued on July 11, 2006, from United States
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`Patent Application No. 09/973,312, filed October 9, 2001, which claims priority to
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`German Patent Application No. 100 50 117, filed October 11, 2000. The Petition
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`does not dispute that the effective filing date of the ‘917 Patent is October 11, 2000.
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`B. Overview of the ‘917 Patent
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`The ‘917 Patent discloses various embodiments of a communication network
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`intended for use in wireless communications. In general terms, the ‘917 Patent
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`addresses challenges with wireless networks having a radio network controller, and
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`terminals in communication with the radio network controller. (Ex. 1001; 1:5-7).
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`Data transmitted between the radio network controller and the terminals is
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`transmitted through channels predefined by the radio network controller. (Ex. 1001;
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`3: 57-60). The radio link from the radio network controller to the terminals is referred
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`to as the downlink, and the radio link from the terminals to the radio network
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`controller is referred to as the uplink. (Ex. 1001; 3:62-67).
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`The network may be operated using a layer model, or protocol architecture, in
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`accordance with a set of standards, known as the 3rd Generation Partnership Project
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`(3GPP); Technical Specification Group (TSG) RAN; Working Group 2 (WG2):
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`Radio Interface Protocol Architecture: TS25.301 V3.6.0). (Ex. 1001; 6:9-16).
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`As explained with reference to Fig. 2 of the ‘917 Patent, the layer model has
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`three protocol layers: the physical layer PHY, a data connection layer including sub-
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`layers MAC, for Medium Access Control, and RLC, for Radio Link Control, and the
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`layer RRC for radio resource control. (Ex. 1001, 4:43-48). The RRC layer is
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`responsible for signaling between the radio network controller and the mobile
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`terminals. (Ex. 1001, 4:49-51). The sub-layer RLC controls radio links between
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`remote terminals and radio network controllers. (Ex. 1001; 4:51-53). The layer RRC
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`controls layers MAC and PHY via control lines 10 and 11. The layer RRC can thus
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`control the configuration of the MAC and PHY layers. (Ex. 1001, 4:53-56). The
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`physical layer PHY makes transport links 12 available to the MAC layer (Ex. 1001,
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`4:56-57). The MAC layer makes logic channels 13 available to the RLC layer. (Ex.
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`1001, 4:57-58). The RLC layer is available to applications via access points 14. (Ex.
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`1001, 4:58-59).
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`Packet data units for transmission are formed in the RLC layer, are packed in
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`transport blocks in the MAC layer, and provided to the physical layer. The transport
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`blocks are transmitted between the radio network controller and terminals by the
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`physical layer. (Ex. 1001, 5:).
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`Identification of error-affected packets and retransmission of error-affected
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`packet data units is accomplished in multiple manners. Using the hybrid Automatic
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`Repeat Request (ARQ) method Type II or Type II, a received packet data unit
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`affected by an error is buffered and, after additional incremental redundancy, is
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`decoded together with the received packet data unit affected by error. In the ARQ
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`method Type II, the incremental redundancy is useless without the buffered, and
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`error-affected, packet. In the ARQ method Type II the incremental redundancy can
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`be decoded without the buffered, error-affected, packet. A message as to error-free
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`reception is sent by the receiving device only when the receiving RLC layer
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`establishes on the basis of an RLC sequence number that packet data units are
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`lacking. (Ex. 1001; 1:40-43). The RLC sequence number, or packet data unit
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`sequence number, is transmitted in parallel with the coded transport block or the
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`incremental redundancy required afterwards, as side information, thereby permitting
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`the receiving side to detect which coded transport block is concerned or which
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`buffered coded transport block the additionally transmitted redundance refers to
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`when a coded transport block is retransmitted (Ex. 1001; 5: As a result, the packet
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`data unit must be buffered over a long time period until an incremental redundancy
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`is requested, and then, after successful decoding, the reception may be
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`acknowledged as correct. (Ex. 1001; 1:43-45). The period of time that the packet
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`data unit must be buffered is particularly long on the network side, as the physical
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`layer and the RLC layer are usually located on different hardware components on
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`the network side. (Ex. 1001; 1:48-50).
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`The ‘917 Patent addresses the challenge of buffering the error-affected data
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`for a long period of time by having the receiving physical layer check whether the
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`coded transport block has been transmitted correctly. (Ex. 1001; 6:9-11). The ‘917
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`Patent further provides for transmission of an acknowledge command over a back
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`channel between a physical layer of a transmitting device and the physical layer of
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`a receiving device. (Ex. 1001; 2:30-33). This transmission of the acknowledge
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`command provides that a correct or error-affected transmission of a transport block
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`is provided to the transmitting side much more rapidly than previously known. (Ex.
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`1001; 2:33-36). As a result, a repetition of transmission with incremental redundancy
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`may be effected rapidly. This enables the receiving side to buffer the received coded
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`transport block affected by error for a shorter time period. (Ex. 1001;2:38-40). The
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`memory capacity needed on average for buffering received coded transport blocks
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`affected by error is reduced. (Ex. 1001; 2:42-44).
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`Referring to Fig. 3 of the ‘917 Patent, an example is provided.
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`Here, transport blocks TB0 to TB4, to be transmitted for a time period of two
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`radio frames RF, each having a duration of one Transmission Time Interval (TTI)
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`are shown. (Ex. 1001; 6:44-48). Multiple channels, including the physical channel
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`PHC, which carries the transport blocks, the side information channel SI, which
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`carries information about the redundancy version and the abbreviated sequence
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`number of a transport block, and the back channel BC are shown. (See Ex. 1001;
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`6:27 – 7:16). As the ‘917 Patent explains, the correct or error-affected reception is
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`checked in the physical layer in the radio frame RF which comes after the
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`transmission time interval. (Ex. 1001; 6:56-58). Thus, for transport block TB1,
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`which is transmitted during the first radio frame of Fig. 3, error-checking is
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`performed during the second of the four radio frames shown in Fig. 3, and the
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`positive acknowledge command ACK is transmitted via back channel BC during the
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`third radio frame. (Ex. 1001; 6:60-61). The transmission of transport blocks TB2,
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`TB3 and TB4 is completed during the second of the four radio frames, and error
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`checking is performed during the third radio frame. During the fourth radio frame,
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`the positive acknowledgment command ACK for the transport blocks TB4 and TB2,
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`and the negative acknowledgment command NACK for transport block TB3, are
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`transmitted via back channel BC (Ex. 1001; 6:62-65).
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`Further, the ‘917 Patent teaches the use of abbreviated sequence numbers to
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`reduce the extent of information that is required to be additionally transmitted for
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`managing the transport blocks and packet data units. (Ex. 1001; 2:45-49). The ‘917
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`Patent teaches that “abbreviated sequence number is determined by the number of
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`M coded transport blocks which, on the receiving side, can at most be buffered
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`simultaneously.” (Ex. 1001, 5:41-44). The ‘917 Patent goes on to state that the
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`number of M coded transport blocks is the logarithm to the base of 2, rounded to the
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`next higher natural number. (Ex. 1001, 5:44-44) Thus, the maximum number of
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`coded transport blocks to be stored is the same as the maximum number of coded
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`transport blocks that can be buffered simultaneously.
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`8
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`The ‘917 Patent issued with three independent claims, namely claims 1, 9 and
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`10. The text of those three independent claims is copied herein for the convenience
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`IPR2020-00315
`U.S. Patent No. 7,075,917
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`of the Board:
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`1. A wireless network comprising a radio network controller and
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`a plurality of assigned to signals, which are each provided for
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`exchanging data according to the hybrid ARQ method an which form a
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`receiving and/or transmitting side, in which a physical layer of a
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`transmitting side is arranged for
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`storing coded transport blocks in a memory, which blocks
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`contain at least a packet data unit which is delivered by an assigned
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`radio link control layer and can be identified by a packet data unit
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`sequence number,
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`storing abbreviated sequence numbers whose length depends on
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`the maximum number of coded transport blocks to be stored and which
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`can be shown unambiguously in a packet data unit sequence number,
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`and for
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`transmitting coded transport blocks having at least an assigned
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`abbreviated sequence number and
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`a physical layer of a receiving side is provided for testing the
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`correct reception of the coded transport block and for sending a positive
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`acknowledge command to the transmitting side over a back channel
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`when there is correct reception and a negative acknowledge command
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`when there is error-affected reception.
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`9. A radio network controller in a wireless network comprising a
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`plurality of terminals, which radio network controller is provided for
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`exchanging data with the terminals and which forms a receiving and/or
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`transmitting side, in which a physical layer of the radio network
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`controller arranged as a transmitting side for
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`storing coded transport blocks in a memory, which blocks
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`contain at least a packet data unit which is delivered by an assigned
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`radio link control layer and can be identified by a packet data unit
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`sequence number,
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`storing abbreviated sequence numbers whose length depends on
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`the maximum number of coded transport blocks to be stored and which
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`can be shown unambiguously in a packet data unit a sequence number,
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`and for
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`transmitting coded transport blocks having at least an assigned
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`abbreviated sequence number and
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`a physical layer of the radio network controller is arranged as a
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`receiving side for testing the correct reception of a coded transport
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`block from a terminal and for sending a positive acknowledge
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`command to a terminal over a back channel when there is correct
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`reception and a negative knowledge command when there is error-
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`affected reception.
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`10. A terminal in a wireless network comprising further terminals
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`and a radio network controller, which terminal is provided for
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`exchanging data with the terminals and which forms a receiving and/or
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`10
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`transmitting side, in which a physical layer of the terminal is arranged
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`as a transmitting side for
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`IPR2020-00315
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`storing coded transport blocks in a memory, which blocks
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`contain at least a packet data unit which is delivered by an assigned
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`radio link control layer and can be identified by a packet data unit
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`sequence number,
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`storing abbreviated sequence numbers whose length depends on
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`the maximum number of coded transport blocks to be stored and which
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`can be shown unambiguously in a packet data unit a sequence number,
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`and for
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`transmitting coded transport blocks to the radio network
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`controller having at least an assigned abbreviated sequence number and
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`A physical layer of the terminal is arranged as a receiving side
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`for testing the correct reception of a coded transport block from the
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`radio network controller and for sending a positive acknowledge
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`command to the radio network controller over a back channel when
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`there is correct reception and a negative acknowledge command when
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`there is error-affected reception.
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`C.
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`Prosecution History of the ‘917 Patent
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`The ‘917 Patent issued from U.S. Patent Application Serial No. 09/973,312,
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`filed October 9, 2001 (the ‘312 Application), which claims priority to German
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`Application No. 10050117.6, filed October 11, 2000. The ‘312 Application was filed
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`with 10 claims, including 3 independent claims (Ex. 1002, pp. 13-15). Information
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`11
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`U.S. Patent No. 7,075,917
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`Disclosure Statements were filed in the ‘312 Application on January 8, 2002 and
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`September 22, 2003, identifying: 3rd Generation Partnership Project, Technical
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`Specification Group Radio Access Network, Report on Hybrid ARQ Type II/III
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`(Release 2000), 3G TR 25.835 v0.0.0, TS-RAN Working Group 2 (Radio L2 and
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`Radio L3, France, August 15-21, 2000).
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`In a first Office Action, mailed September 21, 2005, independent claims 1 and
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`9-10, were objected to for various informalities and dependent claims 4-8 were
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`rejected under 35 U.S.C. 112, second paragraph. (Ex. 1002, p. 59-61). The Office
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`Action confirmed that the Examiner considered the references cited in the
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`Information Disclosure Statements. (Ex. 1002, pp. 63-64). The Office Action further
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`included a list of references considered by the Examiner, namely U.S. Patent
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`Publication No. 2001/0036169 (Ratzel), U.S. Patent Publication No. 2003/0157927
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`(Yi, et al.) and U. S. Patent Publication No. 204/0246917 (Cheng, et al.). (Ex. 1002,
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`p. 65). The Ratzel reference discloses, in a digital packet radio receiver network, an
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`automatic repeat request, or ARQ, in which a very short sequence number is utilized
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`for space efficiency. (Ex. 1002, p. 99).
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`An Amendment and Response was filed on January 23, 2006. (Ex. 1002, pp.
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`68-75). In the Amendment, independent claims 1, 9 and 10 were amended to correct
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`minor informalities. (Ex. 1002, pp. 69-71). Dependent claims 4, 5, 7 and 8 were
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`amended to clarify that the recited physical layer may be of the sending side or the
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`1PR2020-00315
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`US. Patent No. 7,075,917
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`transmitting side, and that an acknowledge command may be transmitted form either
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`the sending side or the transmitting side. (Ex. 1002; p. 70).
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`The USPTO issued a Notice of Allowance on February 27, 2006. (EX. 1002,
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`p. 78). The issue fee was paid on May 24, 2006. (EX. 1002; p.85). The application
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`issued as the ‘917 Patent on July 1, 2006.
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`III. RELATED PROCEEDINGS
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`The ’917 patent is involved in the following proceedings:
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`Case Caption
`
`
`Number
`District
`8-18-cv-01279
`CDCA
`
`Uni/0c 2017 LLC et a! 12. Verizon
`
`Communications Inc. et a!
`
`Apple Inc. v. Uni/0c 2017 LLC
`
`Uni/0c 2017 LLC v. Microsofi
`Corporation
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`Uniioc 201 7 LLC v. Verizon
`
`Communications Inc. et a!
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`Uni/0c 20I 7 LLC v. A T&.T Services,
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`Apple Inc. v. Uni/0c 20I 7 LLC
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`Ericsson Inc. v. Uni/0c 20I 7 LLC
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`
`
`
`
`
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`7/24/2018
`
`8/29/2018
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`11/12/2018
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`1 1/17/2018
`
`11/ 17/2018
`
`3/26/20] 9
`
`
`
`Uniioc 20] 7 LLC et a} v. Microsoft
`Corporation
`
`
`Inc. et a!
`
`Microsoft Corporation v. Uniloc
`IPR2019-00973
`PTAB
`4/19/2019
`20] 7 LLC
`
`2-18-cv-00380
`
`IPR2019-00259
`
`8-18-cv-02053
`
`2-18-cv-00513
`
`2-1 9-cv-00102
`
`EDTX
`
`PTAB
`
`CDCA
`
`EDTX
`
`EDTX
`
`PTAB
`
`PTAB
`
`12/18/2019
`
`12/18/2019
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`IPR2020-00224
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`IPR2020-00315
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`IPR2020-00315
`U.S. Patent No. 7,075,917
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`IV. THE BOARD SHOULD EXERCISE DISCRETION TO DENY
`INSTITUTION
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`Uniloc opposes joinder to IPR2019-00973 (“Microsoft IPR”) for the reasons
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`given in its opposition to the joinder motion. Paper 7. Should the Board deny the
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`joinder motion, the Board should also exercise its discretion not to institute a
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`separate trial in this proceeding, at least because it would not be an efficient use of
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`the Board’s resources.
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`V. LEVEL OF ORDINARY SKILL IN THE ART
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`The Petition proposes a level of ordinary skill in the art of a person having a
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`bachelor’s degree in electrical engineering, computer science, or the equivalent and
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`three years of experience working with wireless digital communication systems
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`including the physical layer of such systems. (Petition, p. 26). The Petition
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`alternatively proposes that the skilled person would have had a master’s degree in
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`electrical engineering, computer science, or the equivalent with an emphasis on
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`wireless digital communication systems. (Petition, pp. 26-27).
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`Patent Owner also does not provide its own definition because, even applying
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`the multiple and varying alternative definitions proposed by Petitioner, Petitioner
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`has not met its burden. Moreover, the Petition cites to the hybrid ARQ methods
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`described in the ‘917 Patent itself as support for the level of ordinary skill in the art,
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`but completely fails to link these particularized subject matter areas to the identified
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`levels of education and industry experience proposed by Petitioner.
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`VI. PETITIONER FAILS TO CARRY ITS BURDEN OF SHOWING A
`REASONABLE LIKELIHOOD OF PREVAILING AS TO ANY
`CHALLENGED CLAIM.
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`Patent Owner demonstrates that Petitioner has failed to carry its burden of
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`showing a reasonable likelihood of prevailing in showing that any of the challenged
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`‘917 Patent claims is unpatentable by a preponderance of the evidence. 35 U.S.C.
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`§316(e). By not addressing additional arguments, Patent Owner in no way concedes
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`that any argument by Petitioner is correct.
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`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
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`§ 42.108(c). Because the Petition only presents a theory of obviousness, Petitioner
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`must demonstrate that there is a reasonable likelihood that at least one of the claims
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`challenged in the petition would have been obvious in view of the references cited
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`in the Petition. Petitioner “must specify where each element of the claim is found in
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`the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4).
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`The Board should reject the Petition because Petitioner fails to meet this burden for
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`the sole ground.
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`The Petition is stylized as presenting the following ground:
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`Ground Claim(s)
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`Statute Reference(s)
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`1
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`1-3 and 9-10
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`103
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`3G TR25.835 (Ex. 1005) and U.S. Patent
`No.6,507,582 (Abrol) (Ex. 1007)
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`A. Claim Construction Standard
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`As of the filing date of the Petition, the standard for claim construction in Inter
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`Partes Review is the standard of “ordinary and customary meaning of such claim as
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`understood by one of ordinary skill in the art and the prosecution history pertaining
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`to the patent.” 37 C.F.R. §42.100(b) (effective November 13, 2018). For all claim
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`terms, Uniloc requests that the Board adopt the ordinary and customary meaning of
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`the claim term as understood by one of ordinary skill in the art.
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`The proposed construction of “back channel” on pages 28-29 of the Petition
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`as a “channel which is inserted directly between the receiving physical layer and the
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`sending (or transmitting) physical layer (and not between the RLC layers) for
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`informing the transmitting side (transmitting terminal or radio network controller)
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`of the fact that a transport block has not been transmitted error-free”, has not been
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`shown to constitute the ordinary and customary meaning of the phrase as understood
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`by one of ordinary skill in the art.
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`B.
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`The Petition fails to establish that TR25.835 constitutes prior art
`as to the ‘917 Patent.
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`The Petition fails to establish that TR25.835 constitutes prior art. First, the
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`Petition fails to meet the Petitioner’s burden of explaining how TR25.832 allegedly
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`qualifies as prior art under pre-AIA 35 U.S.C. 102(a) or 102 (b). Second, even if the
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`Board were to treat the Petitioner here in the manner an Examiner treats a pro se
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`applicant and conduct a legal analysis on Petitioner’s behalf, the evidence provided
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`by the Petitioner, namely the Bishop Declaration (Ex. 1004), does not meet the
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`Petitioner’s burden here. The Bishop Declaration makes clear that the version of
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`TR25.835 that was allegedly available on the 3GPP ftp server was not publicly
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`accessible by virtue of indexing or cataloging, as the document bore an arbitrary title
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`that had no information regarding its subject matter. Ex. 1004 ¶25. The Bishop
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`Declaration does not state that TR25.835, or a notification as to the uploading of
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`TR25.835 to the 3GPP server, was distributed by email. See id. Even if a notification
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`of the uploading of the TR25.835 had been emailed, there was no way for the person
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`of ordinary skill to subscribe to such emails, as the Bishop Declaration states that
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`those notification emails were provided to selected representatives of 3GPP member
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`companies, not the general public. Id.¶19. Finally, the Petition does not rely on any
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`presentation or distribution of TR25.835 at a meeting. See Pet. 8.
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`The Petition’s rationale, on page 8 of the Petition, for the alleged status of
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`TR25.835 as prior art, fails on multiple grounds. The Petition merely states that
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`TR25.835 was published by 3GPP in 2000 and publicly available on the 3GPP file
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`server no later than September 13, 2000. Pet. 8. The Petition does not recite any
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`applicable standard that TR25.832 must meet to qualify as a printed publication
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`under pre-AIA 35 U.S.C. §102(a) or 102(b), or explain how the supporting evidence
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`allegedly demonstrates that the applicable standard is met, thus failing to meet the
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`minimum standards required to explain the significance of evidence, both under
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`applicable regulations and under applicable case law.
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`The Petition fails to meet the requirements of 37 C.F.R. 42.22(a), which states:
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`Each petition or motion must be filed as a separate paper and must
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`include:
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`(1) A statement of the precise relief requested; and
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`(2) A full statement of reasons for the relief requested, including
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`a detailed explanation of the significance of the evidence including
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`material facts, and the governing law, rules and precedent.
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`Here, the required “detailed explanation of the significance of the evidence
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`including material facts” is completely absent from the Petition.
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`The regulations relating to requirements for petitions provide further detail as
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`to the nature of the burden on the Petitioner to explain the significance of the
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`evidence. The Petition must include:
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`(5) The exhibit number of the supporting evidence relied upon to
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`support the challenge and the relevance of the evidence to the challenge
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`raised, including identifying specific portions of the evidence that
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`support the challenge. The Board may exclude or give no weight to the
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`evidence where a party has failed to state its relevance or to identify
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`specific portions of the evidence that support the challenge.
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`37 C.F.R. § 42.104 (emphasis added). Here, the Petitioner merely refers generally to
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`fourteen paragraphs of the Bishop Declaration, Ex. 1004, without identifying either
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`a specific portion, i.e., a specific paragraph, or any particular factual statement in the
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`Bishop Declaration. See Pet. 8.
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`The Petition thus utterly lacks the required “detailed explanation of the
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`significance of the evidence including material facts,” required by 37 C.F.R.
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`42.22(a), in support of Petitioner’s burden to show that TR25.835 constitutes prior
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`art under 35 U.S.C. §102(a) or 102(b). Rather, the Petition merely alleges that the
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`document was available on a file server as of a certain date. Pet. 8. Petitioner
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`provides neither a recitation of an applicable legal standard, nor an analysis of how
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`the availability of the document on a file server might satisfy that applicable legal
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`standard. Thus, the Petition, on its face, fails to meet the requirements of 37 C.F.R.
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`42.22(a).
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`The Petition similarly fails to meet the requirements of 37 C.F.R. §42.104, as
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`the Petition fails to identify the specific portions of the Bishop Declaration that
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`allegedly support Petitioner’s contention that TR25.835 constitutes prior art. The
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`Petition merely points generally to Paragraphs 12-24 and 25 of the Bishop
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`Declaration, not to specific portions of the Declaration. Pet. 8. In accordance with
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`37 C.F.R. §42.104, as the Petition fails to identify the specific portions of the
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`evidence that support Petitioner’s contention that TR25.835 constitutes prior art, the
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`Board should “exclude or give no weight to” the Bishop Declaration, and thus the
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`Petitioner has failed to demonstrate that TR25.835 constitutes prior art.
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`The Court of Appeals for the Federal Circuit, like the applicable regulations,
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`stresses the importance of the requirement that the Petition identify the particular
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`portions of the evidence that support the Petition’s contentions, and explain the
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`significance of that evidence:
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`It is of the utmost importance that petitioners in the IPR proceedings
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`adhere to the requirement that the initial petition identify “with
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`particularity” the “evidence that supports the grounds for the challenge
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`to each claim.” 35 U.S.C. § 312(a)(3).
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`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed.
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`Cir. 2016). Here, the Petitioner fails to identify with particularity either the portions
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`of the Bishop Declaration on which it relies, or the particular facts supported by the
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`Bishop Declaration, that support its contention that TR25.385 constitutes prior art.
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`The Board’s case law as to the obligation of the Petitioner to explain the
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`significance of submitted evidence reinforces that the Petition here fails to prove that
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`TR25.385 is prior art. The failure of the Petition here to provide an explanation as
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`to why a document allegedly constitutes prior art is on all fours with the following
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`statement by the Board in Dynaenergetics US, Inc v. Geodynamics, Inc., PGR2018-
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`00065, Paper 8 (2018) (Routine), at 25-26 (emphasis added):
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`There is simply nothing in the Petition itself regarding the significance
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`of the representations made in the Honcia declaration concerning the
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`lecture notes presented by Dr. Honcia at the CCG workshop, nor does
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`Petitioner explain how these representations demonstrate that Battelle
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`was "otherwise made available to the extent that persons interested and
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`ordinarily skilled in the subject matter or art exercising reasonable
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`diligence, can locate it." Blue Calypso, 815 F.3d at 1348 (citation
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`omitted). Moreover, Petitioner does not explain how one of skill in the
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`art, exercising reasonable diligence, would access Battelle. We view
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`Petitioner's naked assertion that Battelle is publicly available, and
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`blanket citation to paragraphs 1 and 12 of the Honcia declaration, as
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`an invitation to be an archeologist of the record in search of pertinent
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`facts to satisfy the criteria for public accessibility described above.
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`That, however, is not our role.
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`Petitioner's mere statement that Battelle is publicly available,
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`backed by a citation to the Honcia declaration, is insufficient to support
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`a finding that it is more likely than not that Battelle was publicly
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`accessible as of the critical date. Absent sufficient arguments and
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`credible evidence, we determine that Battelle does not qualify as a prior
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`art printed publication under 35 U.S.C. §§ 102 or 103.
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`In Dynaenergetics US, as in the present case, the Petition provided no more
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`than a blanket citation to a portion of a declaration, with no explanation as to how
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`the facts set forth in the accompanying declaration met the applicable standard. The
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`mere invitation to be an archaeologist of the Declaration accompanying the Petition
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`21
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`in search of pertinent facts does not satisfy Petitioner’s burden. As in Dynaenergetics
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`US, the Petition here has failed to provide support for a finding that TR25.835
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`qualifies as prior art.
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`The Board’s Informative Decision in Spalding v. Hartsell, Interference No.
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`104,699, Paper No. 92 (2002), further demonstrates that the Petition has failed to
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`meet the minimum standard to show that TR25.835 qualifies as prior art. There, the
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`Board stated:
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`The preliminary motion does not explain how the cited evidence
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`supports Spalding’s ultimate conclusion that the Bergamini paper
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`constitutes a printed publication or that Bergamini distributed his paper
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`“widely and publicly” to “individuals, organizations, and companies
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`interested in vapor recovery systems.” The citation to the exhibits
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`merely invites the opponent and the decision-maker to sift through
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`the evidence on their own initiative and to draw their own conclusions
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`based on their own manner of harnessing, interpreting, and
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`characterizing the evidence.
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`Spalding v. Hartsell, Paper No. 92, at 5 (emphasis added). Here, the Petitioner has
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`similarly invited the Patent Owner and the Board to sift through the Bishop
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`Declaration (Ex. 1004), which, without the attached curriculum vitae of the
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`Declarant, is 20 pages in length, on their own initiative, and to draw their own
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`conclusions. The Board’s statement in Spalding v. Hartsell is similarly applicable:
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