From:
`To:
`Cc:
`
`Subject:
`Date:
`Attachments:
`
`Kenneth Weatherwax
`Precedential_Opinion_Panel_Request
`Keefe, Heidi; Morton, Phillip; Mace, Andrew; Wu, Steve; Knight, Dustin M; Weinstein, Mark; Trials; Morgan
`Nguyen; jbarabas@krameralberti.com; David Alberti; slim@krameralberti.com; Cindy Pohorski;
`abrewster@krameralberti.com
`IPR2021-01457 (USP 9928044) Facebook v. Express Mobile - Patent Owner request for review under S.O.P. 2
`Thursday, April 13, 2023 7:02:28 PM
`2023-04-13 PO POP RR – FINAL.pdf
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Sirs,
`
`We write on behalf of Express Mobile, Inc. (“Patent Owner”) regarding the Inter Partes Review
`regarding Patent 9,928,044. On March 14, 2023, the Board issued a Final Written Decision (Paper
`38) invalidating all challenged claims. Patent Owner has filed a timely request for review of the
`Board’s decision, and respectfully requests that the matter be heard by a Precedential Opinion Panel
`pursuant to Standard Operating Procedure 2.
`
`Question Presented
`
`Based on my professional judgment, I believe this case requires an answer to one or more
`precedent-setting questions of exceptional importance, including the following: Whether a genuine
`dispute regarding the scope of a claim term in the context of an obviousness ground must be
`resolved before the final written decision of the Board can resolve the obviousness question, and
`whether four or more references can be combined to create an obviousness rejection where those
`references contain multiple contrary teachings that are neither filed by the petitioner with the Board
`nor addressed by the final written decision.
`
`/Kenneth J. Weatherwax/
`Lowenstein & Weatherwax LLP
`
`Reasons for Recommending Precedential Opinion Panel Review
`
`As discussed in the attached request for rehearing, the assigned panel violated fundamental rules of
`claim construction law by disregarding intrinsic evidence concerning the construction of the claim
`term “Player.” Compounding its error, the assigned panel wrongly determined obviousness using
`hindsight by stitching together bits and pieces from four references without considering (or even
`having before it) the references or teachings of the references as a whole. As now-Chief Judge
`Moore of the Federal Circuit has commented in another case, “How often do you see four reference
`obviousness rejections? Because I’ll be honest, I’ve never seen one.” That should remain the case
`here.
`
`The ’044 patent at issue here teaches a solution for developing platform-independent “Applications”
`that work with separate, device-dependent “Players” produced by an authoring tool, allowing the
`IPR2021-01457
`Ex. 3002
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`

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`Applications to have a consistent look and feel regardless of the device. In finding the challenged
`claims obvious, the assigned panel erroneously construed the term “Player” as “device-specific code
`which contains instructions for a device and which is separate from the Application,” which is
`correct, but applied this construction to cover a “JAVA Virtual Machine,” or JVM, without addressing
`the parties’ dispute over whether this construction could do so. Applying this construction to cover a
`JVM is at war with the intrinsic evidence, which shows unequivocally that a JVM is not a “Player,” let
`alone a Player produced by an authoring tool as several of the claims of the ’044 patent require. The
`’044 patent, unsurprisingly, distinguishes between a “virtual machine” and the claimed “Player.” The
`Board did not address this dispute as a matter of resolving the proper construction of the claim
`language.
`
`By failing to construe “Player” to resolve the issues presented, by ignoring controlling Federal Circuit
`claim construction law requiring constructions consistent with the intrinsic evidence, and by
`conflating a JVM with a Player, the assigned panel erred.
`
`These actions contravene controlling Federal Circuit caselaw as well as the PTAB’s own
`procedures. See O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir.
`2008) (“When the parties present a fundamental dispute regarding the scope of a claim term, it is
`the court’s duty to resolve it.”); Phillips v. AWH Corp., 415 F.3d 1303, 1316-1317 (Fed. Cir. 2005) (en
`banc) (“the rules of the PTO require that application claims must ‘conform to the invention as set
`forth in the remainder of the specification and the terms and phrases used in the claims must find
`clear support or antecedent basis in the description so that the meaning of the terms in the claims
`may be ascertainable by reference to the description.’”).
`
`The assigned panel’s decision is also incorrect because Ground 1 is a combination of five different
`references, spanning a total of nearly 900 pages that were not analyzed in full by Petitioner, its
`expert, or the assigned panel. The Petition fails to demonstrate that it would have been obvious to
`combine five references in order to allegedly meet the claims.
`
`Controlling Federal Circuit law shows the impropriety of combining four or more references without
`motivation and shows that the assigned panel should be skeptical of obviousness combinations
`based on four or more references, particularly those here which teach away from the claimed
`combination and were plainly rooted in hindsight. See InTouch Techs., Inc. v. VGO Comm’cns, Inc.,
`751 F.3d 1327, 1349 (Fed. Cir. 2014) (it is improper to combine references “like separate pieces of a
`simple jigsaw puzzle” without “explain[ing] what reason or motivation one of ordinary skill in the art
`at the time of the invention would have had to place these pieces together.”); Institut Pasteur &
`Universite Pierre Et Marie Curie v. Focarino, 738 F.3d 1337, 1345 (Fed. Cir. 2013) (finding reference’s
`teaching away “counts significantly against finding a motivation” to combine).
`
`This case provides an ideal vehicle to address and reaffirm that the PTAB must resolve claim
`construction disputes under O2 Micro, and to properly address multi-reference obviousness
`combinations in light of the guidance of now-Chief Judge Moore and other members of the Federal
`Circuit, as well as the InTouch and Institut Pasteur decisions on motivation and teaching away.
`
`For the reasons given above, reconsideration by the Precedential Opinion Panel of these questions is
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`

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`respectfully recommended pursuant to Standard Operating Procedure 2, Section I.A.
`
`For the Panel’s convenience it is noted that this request for review is related to the pending March
`31, 2023 requests for review of the Final Written Decisions in IPR2021-01455 and IPR2021-01456,
`involving the same parties.
`
`/Kenneth J. Weatherwax/
`Lowenstein & Weatherwax LLP
`Reg. No. 52,548
`Counsel for Patent Owner
`
`