`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`SONY INTERACTIVE ENTERTAINMENT LLC,
`Petitioner,
`
`v.
`
`BOT M8, LLC,
`Patent Owner.
`
`____________________
`
`Case IPR2020-01288
`U.S. Patent No. 7,664,988
`__________________________________________________________
`
`PATENT OWNER’S SUR-REPLY TO
`PETITIONER’S REPLY TO PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`IPR2020-01288 (U.S. Patent No. 7,664,988)
`Patent Owner’s Sur-Reply to Petitioner’s Reply
`
`TABLE OF CONTENTS
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`Page
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`
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`Petitioner Misstates and Misapplies the First Part of the
`Advanced Bionics Framework ....................................................................... 2
`A.
`The Advanced Bionics Framework Inquires Whether the
`Same Art Were “Previously Presented to the Office,” Not
`Whether the Office Discussed It ......................................................... 2
`Substantially the Same Argument Was Previously
`Presented to the Office ........................................................................ 4
`Petitioner Has Not Shown that the Office Erred in a Manner
`Material to Patentability ................................................................................ 5
`
`
`B.
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`i
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`IPR2020-01288 (U.S. Patent No. 7,664,988)
`Patent Owner’s Sur-Reply to Petitioner’s Reply
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Federal Cases
`Advanced Bionics, LLC v. MED-EL Elektromedizinische Gerate
`GmbH,
`IPR2019-01469, Paper 6 (P.T.A.B. Feb. 13, 2020) .......................................... 1, 2
`Apple Inc. v. Motorola, Inc.,
`757 F.3d 1286 (Fed. Cir. 2014) (overruled on other grounds) ............................. 1
`Husky Injection Molding Sys., Ltd. v. Plastipak Packaging, Inc.,
`IPR2020-00438, Paper 23 (P.T.A.B. July 29, 2020) ........................................ 2, 5
`Federal Statutes
`35 U.S.C.
`§ 316(e) ................................................................................................................. 3
`§ 325(d) ................................................................................................................. 2
`Other Authorities
`37 C.F.R. § 1.97(e) ..................................................................................................... 1
`37 C.F.R. § 42.104(3) ................................................................................................ 1
`
`
`ii
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`
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`IPR2020-01288 (U.S. Patent No. 7,664,988)
`Patent Owner’s Sur-Reply to Petitioner’s Reply
`
`The Board should deny institution of inter partes review because Patent
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`Owner has satisfied the two-part framework established in Advanced Bionics, LLC
`
`v. MED-EL Elektromedizinische Gerate GmbH, IPR2019-01469, Paper 6 at 8
`
`(P.T.A.B. Feb. 13, 2020), in its Preliminary Response. Paper 6.
`
`Applicant Universal Entertainment Corporation (“Applicant”) complied with
`
`its duty to the Office and disclosed references cited in the “extended European
`
`Search Report” (Ex. 2007, “ESR”) for the then-pending European Patent
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`counterpart EP 1630659. 37 C.F.R. § 1.97(e); Ex. 1002 at 61, 119–20. Patent
`
`Owner has no role or responsibility for the omission of the ESR from Petitioner’s
`
`submission of U.S. Patent No. 7,664,988’s filing history (Ex. 1002, “’988 File
`
`History”).
`
`The submission of this ESR and the Sugiyama reference magnify
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`Petitioner’s lack of diligence in developing the theories in its Petition. Courts have
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`long considered “statements made before a foreign patent office when construing
`
`claims” as long as “they are relevant and not related to unique aspects of foreign
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`patent [counterpart].” E.g., Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1312
`
`(Fed. Cir. 2014) (overruled on other grounds). Accordingly, Petitioner should have
`
`considered Patent Owner’s Response to the ESR when evaluating “[h]ow the
`
`challenged claim is to be construed.” 37 C.F.R. § 42.104(3). This is a foreseeable
`
`issue and Petitioner did not meet this burden and fundamental requirement.
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`1
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`
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`IPR2020-01288 (U.S. Patent No. 7,664,988)
`Patent Owner’s Sur-Reply to Petitioner’s Reply
`
`
`
`Petitioner Misstates and Misapplies the First Part of the Advanced
`Bionics Framework
`A. The Advanced Bionics Framework Inquires Whether the Same
`Art Were “Previously Presented to the Office,” Not Whether the
`Office Discussed It
`The first part of the two-part Advanced Bionics framework and the statutory
`
`language of section 325(d) both inquire whether the same prior art or arguments
`
`were “previously presented” to the Office. 35 U.S.C. § 325(d); Advanced Bionics,
`
`Paper 6 at 7–8. One example of “previously presented art” includes “art provided
`
`to the Office by an applicant, such as on an Information Disclosure Statement
`
`(IDS).” Advanced Bionics, Paper 6 at 7–8. In contrast to Petitioner’s assertions
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`(Paper 8 at 2), the framework does not require the Office to have discussed the art.
`
`See Husky Injection Molding Sys., Ltd. v. Plastipak Packaging, Inc., IPR2020-
`
`00438, Paper 23 at 12 (P.T.A.B. July 29, 2020) (finding the submission of an
`
`asserted reference and accompanying European Search Report satisfies the “same
`
`or substantially the same art” condition that was “previously presented” to the
`
`Office). The same result applies here.
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`As evidenced by the Electronic Acknowledgement Receipt dated January
`
`25, 2008 (“Receipt”), Applicant submitted Sugiyama along with the ESR to the
`
`Office. Ex. 1002 at 61 (IDS transmittal), 62 (IDS), 73–80 (Sugiyama), 119–20
`
`(Receipt). In fact, the IDS submitted to the Office expressly references the
`
`“attached Extended European Search Report.” Id. at 61. The Examiner then
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`2
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`IPR2020-01288 (U.S. Patent No. 7,664,988)
`Patent Owner’s Sur-Reply to Petitioner’s Reply
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`considered Sugiyama and all other references cited the ESR. Id. at 135 (IDS
`
`showing Examiner’s initials next to each considered reference). There is no
`
`dispute that the same prior art was previously presented to the Office. Thus,
`
`Petitioner had notice that the ESR citing Sugiyama was before the Examiner during
`
`prosecution of the ’988 Patent.1 Id. at 61, 119–20. In fact, Sugiyama is cited on
`
`the face of the ’988 Patent. Ex. 1001 at 1.
`
`Despite this notice, Petitioner did not apprise the Board that Sugiyama was
`
`cited in the subject ESR, that the European Patent Office’s rejection of the EP
`
`counterpart application was before the Examiner prior to the mailing of the first
`
`Office Action, or that Applicant had extensively discussed the patentability of the
`
`counterpart application over Sugiyama. 35 U.S.C. § 316(e). The Examiner had
`
`not only Sugiyama, but also an English-language rejection utilizing Sugiyama, yet
`
`still determined that a rejection over Sugiyama was unwarranted.
`
`Petitioner’s reference to MPEP § 609.04(a), suggesting that Sugiyama was
`
`not before the Examiner, is a red herring. Paper 8 at 1. That section of the MPEP
`
`states that Examiner’s use non-English references is similar to how “non-English
`
`
`
`1 Contrary to Petitioner’s suggestion, the responsibility of providing the Office a
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`“complete” copy of the ’988 File History is Petitioner’s burden, not Patent
`
`Owner’s. 35 U.S.C. § 316(e).
`
`3
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`
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`IPR2020-01288 (U.S. Patent No. 7,664,988)
`Patent Owner’s Sur-Reply to Petitioner’s Reply
`
`language information in Office search files is considered by examiners in
`
`conducting searches.” MPEP § 609.04(a). More relevant is the fact that
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`Examiners can request copies and/or translations of possible references for an
`
`application being examined. MPEP § 901.05(c)–(d).
`
`The facts are that Sugiyama and an ESR—rejecting claims of the ’988
`
`Patent’s counterpart over Sugiyama—were previously presented to the Examiner
`
`during prosecution of the ’988 Patent, and the Examiner allowed the claims to
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`issue over Sugiyama.
`
`B.
`
`Substantially the Same Argument Was Previously Presented to
`the Office
`In its Reply, Petitioner does not dispute that it makes the same argument as
`
`the one made in the ESR and previously presented to the Office. Paper 8 at 2–4.
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`Instead of disputing this threshold fact, Petitioner incorrectly asserts that the
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`ESR’s discussion of Sugiyama “is coextensive with what can be understood from
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`the English-language abstract itself” and “does not provide or suggest the
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`important disclosures from the translated portions of Sugiyama relied on in the
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`Petition.” Paper 8 at 3. That is untrue. The ESR never limited its analysis to
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`Sugiyama’s Abstract. Id. The relevant portion of the ESR discussing Sugiyama
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`references “an application program” stored in HDD 24 and a “system boot
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`program” and “fault processing program” stored in ROM 22. Id.; Ex. 2007 at 3;
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`Ex. 1002 at 73. Other than “an application program,” these terms do not appear in
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`4
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`
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`IPR2020-01288 (U.S. Patent No. 7,664,988)
`Patent Owner’s Sur-Reply to Petitioner’s Reply
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`the Abstract and thus were derived from Sugiyama’s disclosure. Ex. 1002 at 73
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`(e.g., “service program” and “processing”).
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`Petitioner makes a substantially similar mapping of the Challenged Claims
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`to Sugiyama as appears in the ESR. See Paper 6 at 27–28. Petitioner’s mappings
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`of (1) “boot program” to “startup program” and (2) “fault inspection program” to
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`“HDD inspection program P2 . . . or . . . the program for executing steps Sa2 and
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`Sa4–Sa11 of Figure 5” mirror the ESR’s analysis mappings of (1) “boot program”
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`to “system boot program” and (2) “fault inspection program” to “fault processing
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`program,” respectively. Id. at 28.
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`Thus, Petitioner raises the same or substantially the same argument in its
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`Petition as was raised in the ESR and presented to the Examiner during prosecution
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`of the ’988 Patent. See Husky Injection Molding, Paper 23 at 13–17 (finding
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`substantial similarities of arguments in Petition and European Search Report
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`satisfy the “same or substantially the same argument” condition).
`
`
`
`Petitioner Has Not Shown that the Office Erred in a Manner Material
`to Patentability
`Petitioner’s Reply erroneously assumes that Petitioner had no notice of the
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`ESR. That is plainly incorrect—the record is clear that the ESR and Sugiyama
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`were of record during prosecution of the ’988 Patent. See Section I, supra; Husky
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`Injection Molding, Paper 23 at 18. The Board should deny institution.
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`5
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`
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`IPR2020-01288 (U.S. Patent No. 7,664,988)
`Patent Owner’s Sur-Reply to Petitioner’s Reply
`
`Respectfully submitted,
`
`
`
`/James Hannah/
`
`James Hannah (Reg. No. 56,369)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Tel: 650.752.1700 Fax: 212.715.8000
`Jonathan S. Caplan (Reg. No. 38,094)
`Jeffrey H. Price (Reg. No. 69,141)
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Tel: 212.715.9000 Fax: 212.715.8000
`
`Attorneys for Patent Owner
`
`Dated: December 24, 2020
`
`(Case No. IPR2020-01288)
`
`
`
`6
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`
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`IPR2020-01288 (U.S. Patent No. 7,664,988)
`Patent Owner’s Sur-Reply to Petitioner’s Reply
`
`CERTIFICATE OF SERVICE
`The undersigned certifies, in accordance with 37 C.F.R. § 42.6(e), that
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`service was made on the Petitioner as detailed below.
`
`Date of service December 24, 2020
`
`Manner of service Electronic Mail
` (Eric.Buresh@eriseip.com;
`Callie.Pendergrass@eriseip.com;
`Jason.Mudd@eriseip.com;
`ptab@eriseip.com)
`
`
` Documents served PATENT OWNER’S SUR-REPLY TO PETITIONER’S
`REPLY REGARDING PRELIMINARY RESPONSE
`
`
`
`
`
`Persons Served Eric A. Buresh
`Callie A. Pendergrass
`Jason R. Mudd
`
`/James Hannah /
`James Hannah
`Registration No. 56,369
`Counsel for Patent Owner
`
`
`1
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