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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`SONY INTERACTIVE ENTERTAINMENT LLC
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`Petitioner
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`v.
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`BOT M8, LLC
`Patent Owner
`____________
`
`
`Case No. IPR2020-01288
`U.S. Patent No. 7,664,988
`____________
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`
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`PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY
`RESPONSE ADDRESSING ISSUES RELATED TO 35 U.S.C. § 325 (d)
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`Case IPR2020-01288
`U.S. Patent No. 7,664,988
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`Table of Contents
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`I. Reply Regarding 35 U.S.C. § 325(d) ............................................................... 1
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`A. The Art and Arguments Are Not the Same or Substantially the Same as
`Those Previously Presented to the Office. ................................................ 1
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`B. The Office Erred in a Manner Material to Patentability. ........................... 5
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`
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`I.
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`REPLY REGARDING 35 U.S.C. § 325(d)
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`Case IPR2020-01288
`U.S. Patent No. 7,664,988
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`The Board should not exercise its discretion to deny institution under § 325(d).
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`Neither part of the two-part framework established in Advanced Bionics, LLC v.
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`MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 at 8 (Feb. 13,
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`2020) is satisfied.
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`A.
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`The Art and Arguments Are Not the Same or Substantially the Same
`as Those Previously Presented to the Office.
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`The Petition asserts Grounds 2, 4, 6, and 8 for every Challenged Claim based
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`on Morrow and Morrow ‘771. These Grounds are entirely unrelated to the § 325(d)
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`arguments based on Sugiyama presented by PO, and are reason alone for the Board
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`to not exercise its discretion to deny institution under § 325(d).
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`Sugiyama (Ex. 1005) was cited on an IDS and submitted with only an English
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`abstract and without an English-language translation of the Japanese reference itself.
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`Ex. 1002 at 62, 73-80. Sugiyama was never discussed or used as a basis for rejection
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`of the ’988 Patent or the ’670 Child Patent. MPEP § 609.04(a) indicates that the
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`Examiner will consider a Japanese reference only “insofar as it is understood on its
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`face.” Only the abstract of Sugiyama was submitted in English, and it therefore is
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`the only portion of Sugiyama that was understood on its face.1
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`1 Although certain numerals and acronyms in the Japanese drawing of Figs. 2-4 are
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`understandable (e.g., CPU 20, HDD 24, ROM 22), each of these drawings also
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`1
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`Case IPR2020-01288
`U.S. Patent No. 7,664,988
`PO alleges that Ex. 2007, a European Search Report mentioning Sugiyama,
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`was purportedly missing from Ex. 1002. POPR at 20-21.2 Ex. 1002 is a complete
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`and accurate copy of the file history that was downloaded from the USPTO’s Public
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`PAIR system. NPLs, which Ex. 2007 purports to be, are not available from Public
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`Pair.
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`See,
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`e.g.,
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`https://www.uspto.gov/ebc/pair/pair_faq_pt_general.html.
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`Moreover, Ex. 2007 was not: 1) itself listed on any IDS; 2) initialed by the Examiner
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`as having been considered; 3) listed as a reference having been considered by the
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`Examiner; or 4) discussed in any office action, response, or interview. Ex. 1002. And
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`it is not listed on the face of the ‘988 Patent. There is nothing in the file history to
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`suggest the Examiner considered or evaluated Ex. 2007.
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`Regardless, Ex. 2007 does not support an exercise of discretion to deny
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`institution under § 325(d). Ex. 2007 identifies only the abstract of Sugiyama as
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`contains Japanese characters that are not. The Japanese drawing of Fig. 5 is
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`predominantly Japanese characters that are not understandable on its face. Ex. 1002
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`at 79-80.
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`2 Notably, PO did not itself provide a “complete” copy of the ’988 File History.
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`Instead, PO submitted a Non-Patent Literature (“NPL”) document as Ex. 2007. PO
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`does not state from where, how, or when it obtained the “recent[ly] discover[ed]”
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`Ex. 2007. POPR at 21.
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`2
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`Case IPR2020-01288
`U.S. Patent No. 7,664,988
`being particularly relevant to the claims of the foreign counterpart application. Ex.
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`2007 at 4. As to its relevance, the European Patent Office states only:
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`The subjet[sic]-matter of claim 1 also lacks an inventive step with
`respect to [Sugiyama] for similar reasons (see [Sugiyama], HDD 24
`containing an application program, ROM 22 containing fault
`processing program run by the CPU (20), it is obvious to the skilled
`person to have the ROM containing the system boot program and the
`CPU and the ROM on a mother board).
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`Ex. 2007 at 3. This description is coextensive with what can be understood from the
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`English-language abstract itself. Ex. 1002 at 72. Thus, even if the Examiner
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`considered Ex. 2007 (of which there is no evidence), it, like the English-language
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`abstract of Sugiyama, does not provide or suggest the important disclosures from
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`the translated portions of Sugiyama relied on in the Petition.
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`Specifically, the Petition overwhelmingly relies on the detailed disclosures in
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`Sugiyama that was provided to the Examiner only in Japanese, and therefore was not
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`understood on its face by the Examiner during prosecution. Taking Claim 1 of the
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`‘988 Patent as exemplary, the Petition relies on the following portions of Sugiyama:
`
`Claim Element
`[1(preamble)]
`[1a]
`[1b]
`[1c]
`[1d]
`
`[1(e)]
`
`Portions of Sugiyama Cited in Petition
`[0002], [0005], [0010], [0013], Fig. 3
`[0011], [0032], [0012]-[0013], [0022]-[0028], Figs. 3, 5
`[0010], [0005]-[0006], [0011], Figs. 2, 3, Claim 1
`[0002], [0010], [0012], Figs. 2, 4
`[0023], [0001], [0013], [0030], [0022]-[0028], [0011],
`[0029], Abstract, Fig. 5
`[0023], [0030], [0022], [0013], [0025], Fig. 5
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`3
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`Case IPR2020-01288
`U.S. Patent No. 7,664,988
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`The Petition cites to the Sugiyama abstract only one time, in Element [1d], and it is
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`one citation among many that are more extensively discussed. The Petition does not
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`cite to the Sugiyama abstract in mapping any other claim element.
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`
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`By way of substantive examples, the portions of Sugiyama that teach a boot
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`program being distinct from the fault inspection program are portions of the
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`Sugiyama reference that were provided to the Examiner only in Japanese. Petition
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`at 3-4 (discussing Sugiyama at Fig. 3 (stating “startup program” and “HDD
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`inspection program P2”), Fig. 5, [0030], [0011], [0022], [0013]). Neither
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`Sugiyama’s English-language abstract nor Ex. 2007 cited or commented on this
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`critical subject matter. Similarly, the portions of Sugiyama that teach a control
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`device that “completes the execution of the fault inspection program before the game
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`is started” (the very ’988 Patent claim amendment that resulted in allowance, see
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`Petition at 2, which appears, for example, in Element [1(e)]) were provided to the
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`Examiner only in Japanese. Petition at 23-25. Neither Sugiyama’s English-language
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`abstract nor Ex. 2007 cited or commented on this subject matter. Sugiyama is not
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`cumulative of Bizzari. Petition at 3-4; IPR2020-00726, Paper No. 13 at 11-12 (Oct.
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`6, 2020). The portions of Sugiyama relied on in the Petition were not understandable
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`on its face by the Examiner, and they were not mentioned or discussed in Ex. 2007.
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`Becton, Dickinson factors (a), (b), and (d) weigh against satisfaction of the first part
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`of the Advanced Bionics framework.
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`4
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`Case IPR2020-01288
`U.S. Patent No. 7,664,988
`The Office Erred in a Manner Material to Patentability.
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`B.
`Regarding factor (c), the key teachings of Sugiyama relied on in the Petition
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`were untranslated and were not mentioned in the English-language abstract or Ex.
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`2007 and, thus, were never considered or evaluated by the Examiner.
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`Regarding factors (e) and (f), the record is, at very best, silent regarding the
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`now translated teachings of Sugiyama.3 Immediately preceding allowance, all
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`independent claims were amended to require that the control device “completes the
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`execution of the fault inspection program before the game is started.” Petition at 2;
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`Ex. 1002 at 201-204. The Petition demonstrates that Sugiyama discloses this key
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`limitation. Petition at 23-25; Sugiyama at [0023], [0030], Figs. 3, 5. If the Examiner
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`somehow considered the previously untranslated teachings, whether by Sugiyama or
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`by Ex. 2007, then the Examiner erred by overlooking these teachings. Moreover,
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`the full translation of Sugiyama constitutes additional evidence and facts presented
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`in the Petition that warrants reconsideration of the prior art. For these reasons, the
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`Board should decline to exercise its discretion under 35 U.S.C. § 325(d).
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`3 “[I]f the record of the Office’s previous consideration of the art is not well
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`developed or silent, then a petitioner may show the Office erred by overlooking
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`something.” Advanced Bionics, Paper 6 at 10.
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`5
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`Dated: December 17, 2020
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`Case IPR2020-01288
`U.S. Patent No. 7,664,988
`Respectfully submitted,
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`Eric A. Buresh
`BY: /s/
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`Eric A. Buresh, Reg. No. 50,394
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`COUNSEL FOR PETITIONER
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`6
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`Case IPR2020-01288
`U.S. Patent No. 7,664,988
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`CERTIFICATE OF SERVICE ON PATENT OWNER
`UNDER 37 C.F.R. § 42.105
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105, the undersigned certifies that on
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`December 17, 2020, a true and correct copy of the foregoing Petitioner’s Reply to
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`Patent Owner’s Preliminary Response Addressing Issues Related to 35 U.S.C. § 325
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`(d) were served by electronic mail on Patent Owner’s lead and backup counsel at the
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`following email addresses:
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`James Hannah: jhannah@kramerlevin.com
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`Jonathan S. Caplan: jcaplan@kramerlevin.com
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`Jeffrey H. Price: jprice@kramerlevin.com
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`svdocketing@kramerlevin.com
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`Eric A. Buresh
`BY: /s/
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`Eric A. Buresh, Reg. No. 50,394
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`COUNSEL FOR PETITIONER
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`7
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