Case IPR2017-00985 Patent 6,125,371

Attorney Docket No. 170317-001USIPR

UNITED STATES PATENT AND TRADEMARK OFFICE ____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

FACEBOOK, INC. Petitioner,

v.

SOUND VIEW INNOVATIONS, LLC Patent Owner. ____________

Case IPR2017-00985 Patent US 6,125,371

____________

PATENT OWNER SOUND VIEW INNOVATIONS, LLC’S PRELIMINARY RESPONSE

TO PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT NO. 6,125,371

PURSUANT TO 35 U.S.C. § 311 AND 37 C.F.R. § 42.107

i

TABLE OF CONTENTS

Page(s)

I. INTRODUCTION ...................................................................................... 1

II. PETITIONER CONTENDS THAT CLAIMS 1-3 AND 9-10 ARE INDEFINITE BECAUSE THEY ARE MEANS-PLUS-FUNCTION WITHOUT CORRESPONDING STRUCTURE. ..................................... 3

A. Phillips, Not BRI, Applies. ................................................................ 8

B. Even If BRI Did Apply, It Would Not Change The Effect Of Petitioner’s Indefiniteness And Means-Plus-Function Positions. ......10

C. Petitioner Fails To Meet Its Burden To Construe The Claims And Apply The Construed Claims To The Prior Art. ................................12

III. THE PETITION ARGUES OBVIOUSNESS ONLY UNDER AN INAPPLICABLE CLAIM CONSTRUCTION STANDARD................. 18

IV. EVEN IF THE PETITION HAD ARGUED UNPATENTABILITY UNDER THE CORRECT STANDARD, IT STILL FAILS TO MEET ITS BURDEN TO DEMONSTRATE OBVIOUSNESS. ............ 21

A. The Petition Fails To Show That Its References, Either Alone Or In Combination, Disclose A “Time Stamping Controller,” “Versioning Controller,” Or “Aging Controller” (Claims 1-3). .........22

B. The Combination Of Bernstein And Rubin Lacks Motivation And Reasonable Expectation Of Success. .................................................26

1) The Petition’s Ordinary Artisan Would Lack Significant DBMS Implementation Experience. ...................................... 26

2) The Combination Would Change The Function Rubin Performs. ............................................................................... 28

V. CONCLUSION ......................................................................................... 32

ii

TABLE OF AUTHORITIES

Page(s)

CASES

Apple, Inc. v. Motorola, Inc., 757 F.3d 1286 (Fed. Cir. 2014) .......................................................................20

Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355 (Fed. Cir. 2016) cert. denied, 137 S. Ct. 1329 (2017) ..............30

Harmonic, Inc. v. Avid Tech., Inc., 815 F.3d 1356 (Fed. Cir. 2016) .......................................................................13

In re Donaldson Co., 16 F.3d 1189 (Fed. Cir. 1994) .........................................................................11

In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364 (Fed. Cir. 2016) .......................................................................13

In re NuVasive, Inc., 842 F.3d 1376 (Fed. Cir. 2016) .......................................................................30

Media Rights Techs., Inc. v. Capital One Financial Corp., 800 F. 3d 1366 (Fed. Cir. 2015) ....................................................................... 5

Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757 (Fed. Cir. 1988) .........................................................................20

Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co. KG, 856 F.3d 1019 (Fed. Cir. 2017) .......................................................................17

Wasica Fin. GmbH v. Cont'l Auto. Sys., Inc., 853 F.3d 1272 (Fed. Cir. 2017) ................................................................. 23, 24

Williamson v. Citrix Online, LLC, 792 F. 3d 1339 (Fed. Cir. 2015) (en banc) ....................................................... 5

iii

ADMINISTRATIVE DECISIONS

American Honda Motor Co., Inc. v. Signal IP, Inc., IPR2015-01003, Paper 11 (PTAB Oct. 1, 2015) .............................................. 2

Apple, Inc. v. Contentguard Holdings, Inc., IPR2015-00455, Paper 9 (PTAB Jul. 6, 2015) ................................................14

Apple, Inc. v. Core Wireless Licensing S.A.R.L., IPR2015-01902, Paper (PTAB Feb. 17, 2016) ................................................15

Ex parte Miyazaki, 89 U.S.P.Q.2d 1207 (BPAI 2008) (precedential) ............................................11

Fieldcomm Group v. Sipco, LLC, IPR2015-00659, Paper 13 (PTAB Aug. 11, 2015) ..........................................15

Gracenote, Inc. v. Iceberg Indus., LLC, IPR2013-00551, Paper 6 (PTAB Feb. 28, 2014) .............................................14

Lindsay Corp. v. Valmont Indus., Inc., IPR2015-01039, Paper 7 (PTAB Sept. 24, 2015) ............................................15

Medshape v. Cayenne Medical, Inc., IPR2015-00848, Paper 9 (PTAB Sept. 14, 2015) ........................................ 6, 11

Panel Claw, Inc. v. Sunpower Corp., IPR2014-00388, Paper 14 (PTAB Aug. 7, 2014) ............................................14

Samsung Display v. Gold Charm Ltd., IPR2015-01452, Paper 12 (Nov. 13, 2015) ...................................................... 6

SAS Institute, Inc. v. Complementsoft, LLC, IPR2013-00226, Paper 9 (PTAB Aug. 12, 2013) ............................................15

Toyota Motor Corp. v. Blitzsafe Tex., LLC, IPR2015-00421, Paper (PTAB Jul. 7, 2016) ...................................................15

Under Armour, Inc. v. ADIDAS AG, IPR2015-00698, Paper 9 (PTAB Aug. 14, 2015) ............................................15

iv

STATUTES

35 U.S.C. § 316(e) ................................................................................................19

REGULATIONS

37 C.F.R. § 42.100(b) ......................................................................................... 2, 9

37 C.F.R. § 42.104(b) ...........................................................................................13

37 C.F.R. § 42.108(c)............................................................................................. 1

OTHER AUTHORITIES

MPEP § 2173.02(I) ...............................................................................................11

v

EXHIBIT LIST

2001 Excerpt from Memorandum Opinion re Claim Construction, Sound View Innovations, LLC v. Facebook, Inc., No. 16-116-RGA Doc. 100 (D. Del. May 19, 2017) (“Markman Order”)

2002 Excerpt from Joint Claim Construction Brief, Sound View Innovations, LLC v. Facebook, Inc., No. 16-116-RGA Doc. 82 (D. Del. Mar. 9, 2016)

2003 Excerpt from Joint Claim Construction Chart, Sound View Innovations, LLC v. Facebook, Inc., No. 16-116-RGA Doc. 64 (D. Del. Dec. 22, 2016)

2004 Excerpt from Declaration of Sandeep Chatterjee, Ph.D., Sound View Innovations, LLC v. Facebook, Inc., No. 16-116-RGA Doc. 83-1 (D. Del. Mar. 9, 2017)

2005 Records Management, Wikipedia.org available at https://en.wikipedia.org/wiki/Records_management (last visited Jun. 1, 2017)

1

I. INTRODUCTION1

The Board should deny the Petition because it fails to demonstrate a

reasonable likelihood that at least one of the Claims is unpatentable under the

proposed grounds, as required under 37 C.F.R. § 42.108(c).

The Petition takes the position that under the “broadest reasonable

interpretation” (“BRI”) claim construction standard, the challenged Claims (1-3 &

8-10) are obvious under a single proposed combination of references. The

Petition’s obviousness argument expressly rests on the premise that BRI applies.

Pet. at 3 (“[T]he constructions proposed in this Petition represent the broadest

reasonable interpretation that one of ordinary skill in the art would assign to the

terms, and not necessarily the construction that would be appropriate in

litigation.”).

This premise, however, is not true. Because the ’371 Patent will expire no

later than August 19, 2017, just over five months after the March 6, 2017 Notice of

Filing Date (see Paper 3), a “district court-type claim construction approach”

1 Patent Owner presents in this Response more than sufficient reasons to

deny institution. If, however, the Board disagrees, Patent Owner reserves the right

to then raise additional arguments, and additional supporting evidence and law.

2

should apply. 37 C.F.R. § 42.100(b) (applying district court type claim

construction if the patent will expire within 18 months of the Notice of Filing

Date). Indeed, Patent Owner has filed a Motion for District Court-Type Claim

Construction (Paper 6), which Petitioner has elected not to oppose. Therefore,

under the Board’s rules, Phillips, not BRI, applies, and Petitioner does not contest

this point.

That the Petition expressly depends upon the wrong claim construction

standard should be reason enough to deny it. Petitioner expressly, and at some

length, conditions all of its arguments for review upon the applicability of the BRI

standard. In fact, the Petition expressly takes the position that Claims 1, 2, & 3 are

“indefinite” if Phillips applies. Pet. at 7 n.1 (“Under the narrower Phillips claim

construction standard applicable in litigation, the ‘controller’ terms [in Claims 1–3]

would be subject to § 112, ¶ 6 treatment and are indefinite.”). It is, of course, well-

settled that institution of IPR is inappropriate as to indefinite claims, including

claims that petitioners themselves contend are indefinite. American Honda Motor

Co., Inc. v. Signal IP, Inc., IPR2015-01003, Paper 11 at 8-13 (PTAB Oct. 1, 2015).

Furthermore, in addition to the “controller” limitations of Claims 1-3 that the

Petition expressly contends are indefinite, Petitioner takes the same view in

litigation as to the “counter” limitations of Claims 2-3 & 9-10—contending that

those Claims are also subject to means-plus-function treatment and indefinite.

3

Once again, the Petition offers no obviousness arguments for these Claims under

the narrower district court-type construction, and does not even attempt to identify

corresponding means-plus-function structures in the specification. Therefore,

according to Petitioner’s own positions under the same legal standards as here,

Claims 2-3 & 9-10 should be denied institution.

Finally, even if the Petition had used the applicable claim construction

standard and had not alleged that Claims 1-3 & 9-10 are indefinite, the Petition’s

obviousness arguments still fail on their own terms, because Petitioner’s references

lack key limitations of the Claims, and Petitioner fails to demonstrate an adequate

motivation to make the proposed combination.

II. PETITIONER CONTENDS THAT CLAIMS 1-3 AND 9-10 ARE INDEFINITE BECAUSE THEY ARE MEANS-PLUS-FUNCTION WITHOUT CORRESPONDING STRUCTURE.

The Petition is unusual because (with the exception of Claim 8) it is directed

towards claims that Petitioner itself contends are indefinite under the governing

Phillips claim construction standard, on the basis that they all allegedly contain one

or more limitations subject to means-plus-function treatment and lack a

corresponding structure in the specification.

In just Claim 1 alone, for instance, Petitioner contends in litigation that

every limitation of Claim 1 is indefinite under the Phillips construction standard:

4

Ex. 1001 [’371 Patent] at cl. 1, compare with Ex. 2003 [Joint Claim Construction

Chart] at 3-4.

Claims 2-3 & 9-10 contain the further limitation, “[said time stamp is

generated as a function of a] time stamp counter.” Outside this Proceeding, but

under the same legal standard, Petitioner contends that this limitation is a means-

plus-function limitation without a corresponding structure and is, therefore,

indefinite. Ex. 2003 [Joint Claim Construction Chart] at 4; see also Ex. 2004

[Mar. 20, 2017 Joint Letter re Markman Terms] at 6 (stipulating in court that if the

“time stamp counter” limitation is “construed as [Petitioner] asks, asserted

claims 2-3 and 9-10 would be invalid.”); Ex. 2002 [Joint Claim Construction Brief]

at 22 (same).

In litigation, Petitioner states its position as follows for each of the

“controller” (Claims 1-3) and “time stamp counter” (Claims 2-3 & 9-10) terms:

This term is subject to 35 U.S.C. §112(f) (formerly § 112, ¶ 6).

5

Function: …

Structure: The specification fails to disclose a corresponding structure

and algorithm for performing the recited function, rendering this

phrase indefinite. See, e.g., Williamson v. Citrix Online, LLC, 792 F.

3d 1339 (Fed. Cir. 2015) (en banc); Media Rights Techs., Inc. v.

Capital One Financial Corp., 800 F. 3d 1366 (Fed. Cir. 2015).

Ex. 2003 [Joint Claim Construction Chart] at 3-5.

What is more, as to the “controller” terms of Claim 1 (and Claims 2-3 by

dependency), Petitioner confirms this view in the Petition itself. According to the

Petition:

Under the narrower Phillips claim construction standard applicable in

litigation the ‘controller’ terms would be subject to § 112, ¶ 6

treatment and are indefinite.

Pet. at 7 n.1.

As noted above, Petitioner takes the same indefiniteness position, under the

same construction standard, as to the “time stamp counter” term of Claims 2-3 &

9-10. The only difference is that, this time, Petitioner does not confirm this

position expressly in the Petition.

The Petition includes extensive arguments concerning the significance of the

applicable claim construction standard to Petitioner’s indefiniteness and means-

plus-function positions. Pet. at 2-7. Petitioner is obviously aware that the Board

does not institute inter partes review of claims that are deemed to be indefinite, or

6

whose scope has not been sufficiently demonstrated.

If the scope of the claims cannot be determined without speculation,

the differences between the claimed invention and the prior art cannot

be ascertained. In other words, without ascertaining the proper claim

scope, we cannot conduct a necessary factual inquiry for determining

obviousness—ascertaining differences between the claimed subject

matter and the prior art.

Samsung Display v. Gold Charm Ltd., IPR2015-01452, Paper 12 at 5-6 (Nov. 13,

2015) (citations and alterations omitted) (denying institution on this basis).

In the absence of any sufficient demonstration that [the claim]

indicates the scope of the claimed invention, [the Board] do[es] not

attempt to apply [the claim] to the asserted prior art.

Medshape v. Cayenne Medical, Inc., IPR2015-00848, Paper 9 at 11-12 (PTAB

Sept. 14, 2015).

When this practice is coupled to Petitioner’s burden of establishing a

reasonable likelihood of prevailing on the merits, Petitioner’s indefiniteness

position has fatal implications for this Petition. To avoid these implications, the

Petition expressly seeks refuge in the BRI claim construction standard.

As Petitioner puts it, the BRI standard that ordinarily applies in IPR is

“different from the manner in which the scope of a claim is determined in

litigation.” Pet. at 3. On the same basis, the Petition argues that, under BRI, the

Board need not find any Claims to be means-plus-function. Id. All this is true,

7

according to the Petition, if, and only if, the Claims are analyzed under BRI instead

of Phillips. Id. at 3 & 7 n.1.

Furthermore, according to the Petition, the reason Petitioner’s positions that

these Claims are means-plus-function and indefinite under district court-type claim

construction need not foreclose institution of review in this Proceeding, is because

“‘neither party [will] argue[] for means-plus-function interpretation’” under BRI,

so, if the Board analyzes these Claims under BRI, there will be “‘insufficient

evidence in th[e] record’” that the claim elements are means-plus-function.

Petitioner provides a detailed explanation of its reasoning in this regard:

The Petitioner does not contend, under the broadest reasonable

interpretation standard . . . , that the “controller” terms should be

treated as means-plus-function limitations under 35 U.S.C. § 112, ¶ 6.

The patent owner for its part has taken the same position in the

concurrent litigation and . . . will maintain that position here. Because

the Petitioner and . . . the Patent Owner [] will not seek in this IPR

proceeding to rebut the presumption against means-plus-function

treatment [under the BRI standard] at the Board should find that §

112, ¶ 6 does not apply in this proceeding. See, e.g., Silicon Labs.,

Inc., v. Cresta Tech. Corp., IPR2014-00809, Final Written Decision,

Paper No. 56 at 12, n.11 (PTAB Oct. 21, 2015) (finding that “there is

insufficient evidence in this record to overcome the presumption”

where neither party argued for means-plus-function interpretation);

Sierra Wireless v. M2M Solutions LLC, IPR2015-01823, Decision on

Institution, Paper 16 at 7 (PTAB Mar. 8, 2016) (“[B]oth parties argue

8

that the limitation should not be interpreted as a means-plus-function

limitation under 35 U.S.C. § 112, ¶ 6… Based on the current record,

we are not persuaded that the presumption against application of 35

U.S.C. § 112, ¶ 6 has been overcome, and we determine that the

limitation need not be construed further at this time.”); Elbit Sys. of

Am., LLC, v. Thales Visionix, Inc., IPR2015-01095, Decision on

Institution, Paper No. 10 at 8, n.8 (PTAB Oct. 26, 2015) (“On the

present record, and for purposes of this decision, we have not been

presented with analysis challenging this presumption, and we

therefore do not apply 35 U.S.C. § 112, paragraph 6.”).

Pet. at 6-7 (emphases added).

In short, according to the Petition, so long as district court-type claim

construction does not apply, the Board need not construe the Claims as means-

plus-function and may ignore Petitioner’s litigation position that the Claims are

indefinite. Pet. at 7 n.1.

Petitioner’s argument fails for at least three reasons, as discussed below.

A. Phillips, Not BRI, Applies.

Petitioner’s argument that the Petition may go forward, notwithstanding

Petitioner’s express position that the Claims are indefinite, expressly rests on the

assumption that BRI rather than Phillips is the applicable claim construction

standard in this Proceeding. But Petitioner’s premise is incorrect. The Patent is

about to expire, so Phillips does apply.

9

If a challenged patent in an IPR will expire within 18 months from the

petition’s notice of filing date, the patent owner may move for district court-type

claim construction. 37 C.F.R. § 42.100(b). The Notice of Filing Date in this case

was entered March 6, 2017. The ’371 Patent will expire less than 6 months after

that. Paper 6. Accordingly, Patent Owner has moved for district court-type claim

construction. Id. Petitioner filed no opposition. Patent Owner respectfully

requests that its unopposed motion be granted. Consequently, Petitioner’s premise

that Phillips does not apply is simply incorrect.

Given that Phillips does apply, Petitioner expressly argues, in the Petition,

that at least Claims 1-3 are indefinite:

Under the narrower Phillips claim construction standard applicable in

litigation the ‘controller’ terms would be subject to § 112, ¶ 6

treatment and are indefinite.

Pet. at 7 n.1.

Petitioner does not expressly address its position regarding the construction

of “time-stamp counter” limitations of Claims 2-3 & 9-10 in the Petition, but

Petitioner also views those claims as means-plus-function and indefinite under

Phillips. It has taken that position in the parallel district court case. Ex. 2003

[Joint Claim Construction Chart] at 4; see also Ex. 2004 [Mar. 20, 2017 Joint

Letter re Markman Terms] at 6 (stipulating in court that if the “time stamp

counter” limitation is “construed as [Petitioner] asks, asserted claims 2-3 and 9-10

10

would be invalid.”); Ex. 2002 [Joint Claim Construction Brief] at 22 (same). The

only difference is that, unlike for the “controller” limitations of Claims 1-3,

Petitioner does not expressly confirm this position in the Petition, but there is no

reason that should make any difference.

Consequently, Petitioner has not satisfied its burden of demonstrating that

granting its Petition is proper as to Claims 1-3, or as to Claims 9-10.

B. Even If BRI Did Apply, It Would Not Change The Effect Of Petitioner’s Indefiniteness And Means-Plus-Function Positions.

Not only is Petitioner’s major premise (that Phillips does not apply in this

proceeding) wrong, its secondary premise is also wrong. Petitioner contends that

the Claims, if indefinite in litigation, would not be indefinite here under BRI.

That contention rests on a misapprehension of the law.

Petitioner’s position rests on the assumption that BRI can convert claims that

are, according to Petitioner itself, indefinite means-plus-function limitations

without a corresponding structure into non-means-plus-function limitations

reviewable in IPR. Pet. at 3-7. Petitioner does not explain why this could be so,

nor provide any authority to support it. In fact, the law is to the contrary. The

notion that a claim could be indefinite in district court, yet reasonably certain

before the Board, has been firmly rejected. A limitation that is indefinite in

district court is necessarily indefinite before the Board.

The Board “employs a lower threshold of ambiguity when reviewing a

11

pending claim for indefiniteness than those used by post-issuance reviewing

courts.” Ex parte Miyazaki, 89 U.S.P.Q.2d 1207, 1211 (BPAI 2008)

(precedential). Therefore, “[a] claim term that does not satisfy the definiteness

requirement under Nautilus likewise fails to satisfy the definiteness requirement

of Miyazaki,” Medshape, Inc. v. Cayenne Med., Inc., IPR2015-00848, Paper 9 at

8 (PTAB Sept. 14, 2015) (denying institution in relevant part); see also MPEP

§ 2173.02(I) (noting that application of BRI instead of court claim construction

standard “may effectively result in a lower threshold for ambiguity than a Court’s

determination”).

Similarly, if a limitation is subject to means-plus-function treatment in

district court, it is also subject to means-plus-function treatment before the Board.

There is no difference between the means-plus-function claim construction

analysis in the two forums. “[B]ecause no distinction is made in [§ 112]

paragraph six between prosecution in the PTO and enforcement in the courts, or

between validity and infringement, . . . [§ 112] paragraph six applies regardless of

the context in which the interpretation of means-plus-function language arises,

i.e., whether as part of a patentability determination in the PTO or as part of a

validity or infringement determination in a court.” In re Donaldson Co., 16 F.3d

1189, 1193 (Fed. Cir. 1994). Accordingly, “the ‘broadest reasonable

interpretation’ that an examiner may give means-plus-function language is that

12

statutorily mandated in [§ 112] paragraph six.” Id. at 1194-95.

Consequently, Petitioner’s attempt to excuse its shift in position on “BRI”

has no basis in law. Petitioner’s assertion that the Claims are indefinite under

Phillips, if true, necessarily means those Claims are equally indefinite under BRI.

For this additional reason, Petitioner has not carried its burden of demonstrating

that institution is appropriate as to Claims 1-3 & 9-10.

C. Petitioner Fails To Meet Its Burden To Construe The Claims And Apply The Construed Claims To The Prior Art.

As discussed in the preceding sections, Petitioner takes the position that

limitations in each of Claims 1-3 & 9-10 are means-plus-function limitations

without a corresponding structure and, therefore, are indefinite under Phillips.

And Petitioner’s suggestion that it may shed these positions in this Proceeding

because of BRI is simply wrong because: (i) Phillips applies; and (ii) even if

Phillips did not apply, any differences between the two standards would not make

the claims less indefinite or less subject to means-plus-function treatment.

Therefore, even if Petitioner is not held to its position that the Claims are

indefinite, under Petitioner’s own positions Claims 1-3 & 9-10 are subject to the

requirement to identify corresponding structure in the specification under 37

C.F.R. § 42.104(b)(3). And Petitioner has failed to satisfy that requirement.

“In an IPR, the petitioner has the burden from the onset to show with

particularity why the patent it challenges is unpatentable.” Harmonic, Inc. v. Avid

13

Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) (affirming confirmation of

claims in IPR). “[T]hat burden never shifts to the patentee.” In re Magnum Oil

Tools Int’l, Ltd., 829 F.3d 1364, 1375 (Fed. Cir. 2016) (citation omitted)

(reversing Board’s cancellation of claims in IPR for improperly shifting burden to

patent owner). The regulations governing the contents of the petition place the

burden squarely on the petitioner to set forth “how the challenged claim is to be

construed,” and “[w]here the claim to be construed contains a means-plus-

function” limitation, “the construction of the claim must identify the specific

portions of the specification that describe the structure.” 37 C.F.R.

§ 42.104(b)(3).

Petitioner has not complied with this obligation. Petitioner contends that

each of Claims 1-3 & 9-10 contain means-plus-function limitations under Phillips

(the construction that applies here), but has failed to identify a corresponding

structure in the specification for any of these limitations. While Petitioner

attempts to excuse this failure by pointing to BRI, there is no legal support for that

position, for the reasons discussed in Section II.B, supra.

Although the Petition contends that the “controller” limitations of Claims 1-

3 are “subject to § 112, ¶ 6 treatment” under the “Phillips claim construction

standard applicable in litigation,” Pet. at 7 n.1, and it is uncontested that Phillips

applies in this case, the Petition forgoes any attempt to construe the “controller”

14

limitations or identify what particular structure corresponds to the recited function

for each, as § 42.104(b)(3) requires. Pet. at 4-7. “In short, “Petitioner failed to . . .

address the possibility that 35 U.S.C. § 112, ¶ 6 applies, let alone identify, for

purposes of applying the statute, what particular structure corresponds to the

recited function” for each limitation it deemed means-plus-function. Panel Claw,

Inc. v. Sunpower Corp., IPR2014-00388, Paper 14 at 7 (PTAB Aug. 7, 2014). The

Board should accordingly deny institution for that reason. See id.

The Board has repeatedly underscored the importance of petitioner’s burden

to identify in the Petition the corresponding structures in the specification that

execute the claimed function if a means-plus-function construction applies:

This statement also does not fulfill Petitioner’s obligation to identify

the corresponding structure for each means-plus-function limitation.

First, as already discussed, it is the Petition . . . that must set forth an

identification of the corresponding structure. See 37 C.F.R.

§ 42.104(b)(3) . . . . Second, by requiring an identification of the

corresponding structure be set forth in the Petition, the rule squarely

places the burden to fulfill the requirement on Petitioner.

Apple, Inc. v. Contentguard Holdings, Inc., IPR2015-00455, Paper 9 at 7 (PTAB

Jul. 6, 2015) (denying institution). The Board has consistently declined to institute

review on Petitions that fail to meet 37 C.F.R. § 42.104(b)(3). See id.; Gracenote,

Inc. v. Iceberg Indus., LLC, IPR2013-00551, Paper 6 at 44 (PTAB Feb. 28, 2014)

(denying institution). Indeed, on at least sixteen occasions, the Board has rejected

15

petitions and declined to institute on grounds that fail to make this showing for

limitations deemed to be subject to § 112 ¶ 6.2

The Board has stated that it is not its job to address petitioners’ means-plus-

function contentions sua sponte on their behalf, and when petitioners fail to

identify corresponding structure it is not the Board’s job to fill in the blanks:

Petitioners essentially are asking the Board to construe the “means-

plus-function” limitations of the claims sua sponte, and then apply the

art. It is Petitioners, however, who must demonstrate a reasonable

likelihood that a claim is unpatentable. Thus, we decline to construe

2 In addition to the decisions cited above, see, e.g., SAS Institute, Inc. v.

Complementsoft, LLC, IPR2013-00226, Paper 9 at 11 (PTAB Aug. 12, 2013);

Under Armour, Inc. v. ADIDAS AG, IPR2015-00698, Paper 9 at 12 (PTAB Aug.

14, 2015) (same); Fieldcomm Group v. Sipco, LLC, IPR2015-00659, Paper 13 at

10 (PTAB Aug. 11, 2015); Lindsay Corp. v. Valmont Indus., Inc., IPR2015-01039,

Paper 7 at 11 (PTAB Sept. 24, 2015); Apple, Inc. v. Core Wireless Licensing

S.A.R.L., IPR2015-01902, Paper 7 at 28 (PTAB Feb. 17, 2016); Toyota Motor

Corp. v. Blitzsafe Tex., LLC, IPR2015-00421, Paper 13 at 25-26 (PTAB Jul. 7,

2016).

16

the “means-plus-function” limitations, which clearly required further

analysis that Petitioners failed to provide.

Adobe Sys., Inc. v. Afluo, LLC, IPR2014-00154, Paper 9 at 14 (PTAB Apr. 29,

2014).

To the extent Petitioner is held to its own arguments, and these Claims are

taken to be subject to means-plus-function treatment under the governing Phillips-

style claim construction standard, as Petitioner itself insists, it is therefore well

settled that institution must be denied. Petitioner insists that Claims 1-3 & 9-10

contain means-plus-function limitations, yet has failed to identify their function

and corresponding structure as required by 37 C.F.R. § 42.104(b)(3), or to compare

the corresponding structures in the specification to the alleged prior art.

To be clear, Patent Owner does not agree with Petitioner’s position that

these Claims are means-plus-function or indefinite. And since the Petition was

filed, the District Court has declined to accept Petitioner’s argument that the

“controller” limitations of Claims 1-3 are means-plus-function and indefinite,

although it has not yet addressed Petitioner’s argument that the “counter”

limitations of Claims 2-3 and 9-10 are indefinite. Ex. 2001 [Markman Order] at

10-12. That the District Court has not adopted some of Petitioner’s positions,

however, does not salvage Petitioner’s position. Petitioner itself has chosen to

base its Petition on the premise that Phillips construction does not apply and

17

expressly has taken the position that if Phillips does apply, Claims 1-3 should be

deemed means-plus-function and indefinite. The Board is empowered to “rely[] on

arguments made by a party and do[] its job, as adjudicator, of drawing its own

inferences and conclusions from those arguments.” Rovalma, S.A. v. Bohler-

Edelstahl GmbH & Co. KG, 856 F.3d 1019, 1027 (Fed. Cir. 2017). But it cannot

disregard the arguments made by Petitioner. See id. Petitioner, as a party, is

bound by its arguments.

The Board’s ruling in Toyota Motor Corp. v. Blitzsafe Texas, LLC,

IPR2016-00422, Paper 12 (PTAB Jul. 6, 2016), is instructive:

The “construction” referred to by 37 C.F.R. § 42.104(b)(3) is

the construction proposed by the Petitioner, one that Petitioner

believes is the correct construction under applicable law and should

apply in the involved proceeding. Here, Petitioner did not comply

with 37 C.F.R. § 42.104(b)(3).

For each means-plus-function recitation in claim 92, Petitioner

provided the construction of the United States District Court for the

District of New Jersey. Pet. at 16–20. However, Petitioner does

not take ownership of the district court’s constructions by

indicating, in some way, that it agrees with, proposes, or adopts the

construction of this district court.

Id. at 27 (denying institution where Petitioner failed to identify corresponding

structures for means-plus-function limitations).

In this case, as in Toyota, Petitioner has not provided what it believes to be

18

the “correct construction under applicable law.” In Petitioner’s view, in the

Phillips construction standard that applies in this Proceeding, each of Claims 1-3 &

9-10 are subject to means-plus-function treatment, lack a corresponding structure,

and are indefinite, and, as to Claims 1-3, it has expressly said so in the Petition

itself. There is no indication that the Petitioner “takes ownership” of the District

Court’s ruling declining to adopt part of its position. Indeed, there is no indication

that Petitioner has abandoned its indefiniteness positions at all.

Because Petitioner expressly argues in the Petition that Claims 1-3 are

means-plus-function under the applicable claim construction standard, and

expressly argues in litigation that Claims 2-3 & 9-10 are means-plus-function for

still other reasons under the same standard, yet identifies no corresponding

structure consistent with its positions, the Petition should be denied as to those

Claims.

III. THE PETITION ARGUES OBVIOUSNESS ONLY UNDER AN INAPPLICABLE CLAIM CONSTRUCTION STANDARD.

Even setting aside the Petition’s contention that the controller limitations of

Claims 1-3 are indefinite and means-plus-function, and Petitioner’s litigation

position that the “counter” limitations of Claims 2-3 & 9-10 are indefinite and

means-plus-function, the Board should deny institution as to all Claims (1-3 & 8-

10) for an additional reason. Every obviousness argument in the Petition is

expressly predicated on the applicability of BRI claim construction, which it is

19

now undisputed should not apply. The Petition contains no arguments that any

Claim is obvious under Phillips district court-type construction and expressly

contends that the Claims’ scope under Phillips is narrower than the scope on which

the Petition’s obviousness arguments all rely. Therefore, for this additional reason,

the Petition has failed to meet its burden of proof under 35 U.S.C. § 316(e).

The Petition emphasizes repeatedly that its constructions of the Claims

“represent the broadest reasonable interpretation that one of ordinary skill in the art

would assign to the terms,” and that “[t]he ‘broadest reasonable interpretation’

standard is different from the manner in which the scope of a claim is determined

in litigation.” Pet. at 3 (emphasis added). Every obviousness argument in the

Petition, concerning every Claim, is expressly predicated on the Board employing

“the broadest reasonable construction of” the Claims, and not the “claim

construction standard applicable in litigation.” Pet. at 3, 6, & 7.

Moreover, the Petition expressly contends that the “Phillips claim

construction standard applicable in litigation” is “narrower” for these Claims, and

expressly relies on the assertion that the two constructions will yield “different”

scope. Pet. at 3 & 7 n.1 (emphases added). Thus, the Petition expressly bases its

obviousness arguments on a different, broader scope of the Claims than under the

narrower district court-type claim construction standard. Id.

20

“The more narrowly a claim is construed, the more likely the claim may be

upheld in light of the prior art.” Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757,

767 (Fed. Cir. 1988). That is particularly so when the difference is between a

“broad structural” scope and a “means-plus-function” scope. Apple, Inc. v.

Motorola, Inc., 757 F.3d 1286, 1297 (Fed. Cir. 2014). Accordingly, for the

Petition to carry its burden to show obviousness for these Claims, it was incumbent

upon the Petition to argue, and demonstrate, that the Claims are obvious under the

narrower scope of district court-type claim construction that actually applies in this

proceeding. The Petition nowhere does so. In fact, the Petition does not argue that

a single Claim is obvious under the narrower Phillips claim construction standard.

As noted above, the Petition expressly relies on BRI construction of the

“controller” limitations, and insists that they cannot be construed at all, let alone

applied to the Claims to show obviousness, under district court-type construction.

Pet. at 3, 5-7, & 7 n.1. However, the Petition expressly bases its arguments for all

of the challenged Claims, not just Claims 1-3, on the applicability of BRI.

For example, all the challenged independent Claims (1 and 8), and therefore

all the challenged Claims, include an “update transactions” limitation. Ex. 1001

[’371 Patent] at cls. 1, 8. The Petition proposes that this limitation be construed to

mean “transactions that modify portions of the database.” Pet. at 4. But the

Petition expressly requests this construction “as the broadest reasonable

21

construction of the term.” Id. The Petition does not take any position at all on

how this term should be construed under the “narrower” Phillips standard. Pet. at

7 n.1.

Because it is undisputed that the Board should analyze the Claims under

Phillips and not BRI, see Paper 6, it follows that the Petition does not meet its

burden to argue, let alone prove, obviousness of any of the Claims under applicable

law. For this additional reason, review as to all Claims should be denied.

IV. EVEN IF THE PETITION HAD ARGUED UNPATENTABILITY UNDER THE CORRECT STANDARD, IT STILL FAILS TO MEET ITS BURDEN TO DEMONSTRATE OBVIOUSNESS.

As explained above, the Petition fails because Petitioner insists that the

controller limitations of Claims 1-3 are indefinite and has not identified means-

plus-function structure under the claim construction standard that applies in this

case; Petitioner insists that the counter limitations of Claims 2-3 & 9-10 are

indefinite and lack any identified means-plus-function structure under the same

Phillips standard that should apply here; and Petitioner does not argue that any of

the Claims are unpatentable under the applicable Phillips standard. But even if all

of these facts did not foreclose institution of review, and the Board were to

consider the Petition as if it had argued unpatentability under Phillips, it still would

not meet its burden to demonstrate that the Claims are obvious under the proposed

combination, for multiple reasons, including those discussed below.

22

A. The Petition Fails To Show That Its References, Either Alone Or In Combination, Disclose A “Time Stamping Controller,” “Versioning Controller,” Or “Aging Controller” (Claims 1-3).

As the Petition points out, the solution of Claim 1 is subdivided into three

controllers: a “time stamping controller,” a “versioning controller,” and an “aging

controller.” Pet. at 4; Ex. 1001 [’371 Patent] at cl. 1. The sole ground of review

proposed in the Petition is Bernstein in view of Rubin. Pet. at 7. However, the

Petition fails to point out the existence of such controllers anywhere in either the

Bernstein reference or the Rubin reference.

It is important to recall that the Petition takes the express position in

litigation, elaborately and at length, that it need not identify the structure for these

“controllers” and that the only way the Board may construe the Claims so as to

identify these controllers is if: (i) BRI applies; (ii) Petitioner does not base its

arguments on the Claims being subject to Phillips construction or being means-

plus-function; and (iii) Patent Owner also refrains from arguing that the Claims are

means-plus-function. Pet. at 4-7. Perhaps as a result, the Petition fails to present

any satisfactory proof that any of the three “controllers” are present in the prior art

references.

“[O]bviousness determinations cannot be sustained by merely conclusory

statements; instead, there must be some articulated reasoning with some rational

underpinning to support the legal conclusion of obviousness.” Wasica Fin. GmbH

23

v. Cont'l Auto. Sys., Inc., 853 F.3d 1272, 1286 (Fed. Cir. 2017). However, the

Petition addresses its burden to show the presence of the “controller” limitations in

the references so gingerly that it effectively reduces its arguments to a mere

mantra—“combination of hardware and/or software”—a phrase that it repeats for

each of the three controllers recited in Claim 1.

According to the Petition, it was “obvious to provide the timestamp

assignment functionality described in Bernstein through a combination of hardware

and/or software that qualifies as a ‘time stamping controller’ as recited in the

claim.” Pet. at 21. Next, the Petition repeats the same perfunctory mantra for the

next controller limitation: “it would have been obvious to provide the new version

creation functionality in Bernstein through a combination of hardware and/or

software that performs the function of the ‘versioning controller.’” Pet. at 22-23

(original emphasis omitted). Finally, “it would have been obvious to provide the

functionality described above in Bernstein and Rubin through a combination of

hardware and/or software that performs the function of the ‘aging controller’ as

recited in the claim.” Pet. at 23.

Petitioner’s repetition of its conclusory “combination of hardware and/or

software” mantra is not illuminating. Such ipse dixit assertions of obviousness are

not accompanied by the reasoning required by law to establish obviousness,

namely motivation to combine and a reasonable expectation of success. Compare,

24

e.g., Wasica, 853 F.3d at 1286 (citations omitted) (“[T]he expedited nature of IPRs

bring with it an obligation for petitioners to make their case in their petition to

institute. Here, [Petitioner] did not make out its obviousness case in its petition. It

merely pointed to [one embodiment of the reference] and presented a conclusory

allegation that any differences between [it] and [the claim] would have been

obvious.”).

As the Petition concedes, Bernstein divides its software into different

components. Pet. at 24 (citing Ex. 1003 [Bernstein] at 18-20). As depicted in

Bernstein’s Figure 1-1, Bernstein’s division is into: a Transaction Manager, a

Scheduler, a Recovery Manager, and a Cache Manager.

Bernstein Figure 1-1 (Ex. 1003 [Bernstein] at 18)

25

Ex. 1003 [Bernstein] at 18. These are not the same as the software components

described in the ’371 Patent, as just listed above. It was therefore incumbent upon

Petitioner to point out clearly to the Board how Bernstein’s division of its software,

into its four components, should supposedly map to the ’371 Patent’s division of

its functionality, into the different components described above. However, the

Petition makes no effort to reconcile this division taught by Bernstein with the

categorization of the three controllers in ’371 Claim 1, or even to relate them to

each other or render any differences compatible or insignificant. Petitioner simply

offers no discernible arguments explaining how the two different software

component structures are supposed to map to each other.

The Petition does note in passing that Bernstein’s “Transaction Manager”

assigns timestamps, noting that they are used by Bernstein’s “Scheduler.” The

Petition fails, however, to tie the disclosure of these timestamping functionality to

any of the three “controllers” recited in the Claim. Pet. at 19.3 It is not the job of

3 The Petition does not rely upon the other reference in the combination,

Rubin, to teach or render obvious these three controllers. The petition relies on

Rubin only for teachings relating to certain claimed functions of the “aging”

controller. Pet. at 17-23.

26

the Board, or of the Patent Owner, to figure out for themselves how this

functionality, involving at least two of Bernstein’s components, is supposed to

correspond to a different component, or components, of the ’371 Patent’s claims.

Because of this disconnect in the Petition’s conclusory obviousness

arguments between the claimed controllers in the ’371 Patent and the disclosure of

the purported obviousness combination, the Petition fails to show a case of prima

facie obviousness against Claim 1. Because all the other Claims are argued to be

obvious based on the same reasoning, see Pet. at 34-37, obviousness fails with

respect to the remaining Claims for the same reason.

B. The Combination Of Bernstein And Rubin Lacks Motivation And Reasonable Expectation Of Success.

1) The Petition’s Ordinary Artisan Would Lack Significant Database Management System Implementation Experience.

This Preliminary Response takes as correct, arguendo, the Petition’s asserted

level of ordinary skill in the art. Under this relatively low standard of knowledge

and experience, however, the relatively obscure and difficult disclosures of the

cited references do not support a motivation to combine or a reasonable

expectation of success.

The Petition asserts that a person having ordinary skill in the art of the

Patent (“PHOSITA”) would have had a bachelor’s degree or equivalent, plus “at

least two years of experience in the design and/or development of database and

27

record management systems.” Pet. at 7 n.2. This appears to include two years’

experience in either setting up or adapting database management systems

(“DBMSs”) to serve the needs of a particular enterprise. A person with such

experience would have exposure to DBMS transactions as a user of such systems,

but there is no apparent reason he or she would have a working understanding of

how they are implemented “beneath the hood.” Indeed, the implementation of the

systems may well be a proprietary secret, and such a PHOSITA would not

ordinarily be designing or implementing such systems.

The Petition specifically refers to “record management systems.” Id. There

is no apparent reason to believe, and the Petition offers no more than a conclusory

and unsupported assertion by its declarant, that record managers in particular

would be expected to have DBMS implementation experience. Id. (citing Ex.

1002 [Klausner Declaration] at ¶ 10). According to Wikipedia’s entry for Records

Management, “The ISO 15489-1:2001 standard (‘ISO 15489-1:2001’) defines

records management as ‘[the] field of management responsible for the efficient

and systematic control of the creation, receipt, maintenance, use and disposition of

records, including the processes for capturing and maintaining evidence of and

information about business activities and transactions in the form of records.’” Ex.

2005 [Wikipedia Entry on Records Management]. Thus, record managers might

set up and adapt commercially available DBMSs to maintain “evidence of and

28

information about business activities and transactions in the form of records,” id.,

but there is no apparent reason to expect that they would themselves write DBMSs,

because that would not be the focus of their work.

This limited experience of a PHOSITA in the creation, writing, or

fundamental implementation of DBMSs means that the cited prior art references’

challenging disclosures, which do not explain how such writing or implementation

is accomplished, would not give such a PHOSITA a motivation to combine them

when such rewriting and implementation would be needed to accomplish the

combination, or a reasonable expectation of success in doing so, as discussed

below.

2) The Combination Would Change The Function Rubin Performs.

In attempting to show a motivation to combine Bernstein and Rubin to meet

the Claims, the Petition asserts that “[i]t would have been obvious to a person of

ordinary skill in the art to combine Bernstein with Rubin, with no change in their

respective functions.” Pet. at 28 (emphasis added). The problem with this

statement is not just that it is wrong. It is also irreconcilable with the combination

the Petition actually proposes. In the proposed combination, Rubin would not

perform the same function that it previously performed.

The Petition tacitly concedes that Bernstein “does not expressly” disclose

the element of “monitor[ing] a measurable characteristic of said memory” as

29

recited in the Claims. Pet. at 24-25. The Petition therefore proposes to modify

Bernstein to add disclosure from Rubin to meet this4 limitation. Pet. at 25.

The Petition quotes the following teaching in Rubin:

“The program may automatically delete the oldest versions of some

programs to obtain more disk space. The program may send mail to

4 The Petition also argues briefly that it would be obvious over Bernstein

alone to add this critical limitation, because such a feature was “standard and well-

known” and “[t]herefore, it would have been obvious that th[e] functionality

[disclosed in Bernstein] discloses the ability to ascertain the amount of available

space for storing items . . . .” Pet. at 24-25. However, important limitations

missing from obviousness references cannot be added simply on the basis of

artisans’ common knowledge or sense. See Arendi S.A.R.L. v. Apple Inc., 832 F.3d

1355, 1362-63 (Fed. Cir. 2016) (only appropriate if missing limitation is

“unusually simple and the technology particularly straightforward” and “evidently

and indisputably within the common knowledge,” and not at the “heart of [the]

invention”), cert. denied, 137 S. Ct. 1329 (2017); In re NuVasive, Inc., 842 F.3d

1376, 1383 (Fed. Cir. 2016) (findings “cannot rely solely on common knowledge

or common sense”).

30

users using significant disk space and ask them to clean-up [sic] their

databases and remove unnecessary data.”

Pet. at 27 (emphasis deleted, “[sic]” in original) (quoting Ex. 1004 [Rubin] at 5:24-

32). Evidently, this is a disclosure of the function this portion of Rubin performs.

None of this, however, is what the combination with Bernstein needs in order to

meet the Claims.

The Claims are drawn to operating processing systems using a database

stored in a memory. Ex. 1001 [’371 Patent] at 9:10-11 (cl. 1), 9:44-46 (cl. 8).

Therefore, for the proposed combination of Bernstein and Rubin to supply the

missing limitation of “monitor[ing] a measurable characteristic of said memory,”

the added teachings of Rubin would, first, need to provide monitoring that informs

a running program or set of processes, the DBMS, what it is monitoring, and

second, in response to such monitoring the running program would need to

“delete . . . versions of . . . data records in response to . . . said measurable

characteristic thereby to increase a capacity of said memory.” Id. at 1:17-22, 9:54-

58.

For the proposed combination of Bernstein with Rubin to practice the

Claims, the process of cutting back on memory usage would not be done by a

simple function of “remov[ing] unnecessary data,” i.e., the function, as just quoted

above, that is, according to the Petition, the function Rubin performs. Rather, in

31

the combination the deletion of stored data would not depend on whether the data

is needed any longer. It would depend only on whether the data is in the oldest

existing version.

Bernstein teaches that when the Schedule “run[s] out of space for storing

intervals,” “[a]t this point, old versions and their corresponding intervals must be

deleted.” Ex. 1003 [Bernstein] at 154. Furthermore, it explains, elimination of a

version may result in a situation where “the [DBMS] has deleted the version that

r1[x] [a read command on record x] has to read, so the scheduler must reject r1[x].”

Ex. 1003 [Bernstein] at 154. In contrast, if the version had not been eliminated, the

read could have executed without difficulty, so the data removed was not

unnecessary. Id. Thus, when “old versions and their corresponding versions must

be deleted[,] [t]o avoid incorrect behavior, it is essential that versions be deleted

from oldest to newest”—not based on whether their content is no longer

“necessary.” Pet. at 27 (quoting Ex. 1004 [Rubin] at 5:24-32).

Thus, if the proposed combination were made, the Rubin portion of the

combination would no longer be deleting stored data based on whether it is still

“[]necessary” to keep it stored. Id. It would simply be deleting data because it is

the oldest stored data, whether or not it is still considered by someone to be

“[]necessary” to have.

For all of these reasons, Rubin is not performing the same function in the

32

combination. This difference undermines the Petition’s motivation to combine

Bernstein and Rubin as proposed.

V. CONCLUSION

For the foregoing reasons, Petitioner has failed to meet its burden to show

that it has a reasonable likelihood of success with respect to at least one Claim.

The Petition should be denied.

Respectfully submitted,

____/ Kenneth J. Weatherwax /_________

Kenneth J. Weatherwax, Reg. No. 54,528 Lowenstein & Weatherwax LLP

Date: June 6, 2017

CERTIFICATE OF COMPLIANCE WITH TYPE-VOLUME LIMITS

This Patent Owner Preliminary Response (the “POPR”) consists of 6,946

words, excluding table of contents, table of authorities, certificate of service, this

certificate, or table of exhibits. The POPR complies with the type-volume

limitation of 14,000 words as mandated in 37 C.F.R. § 42.24. In preparing this

certificate, counsel has relied on the word count of the word-processing system

used to prepare the paper (Microsoft Word).

Respectfully submitted,

/ Kenneth J. Weatherwax /

Date: June 6, 2017

CERTIFICATE OF SERVICE

The undersigned hereby certifies that the following documents were served by electronic service, by agreement between the parties, on June 6, 2017:

PATENT OWNER SOUND VIEW INNOVATIONS, LLC’S

PRELIMINARY RESPONSE TO PETITION FOR INTER PARTES REVIEW OF UNITED STATES PATENT NO. 6,125,371

PURSUANT TO 35 U.S.C. § 311 AND 37 C.F.R. § 42.107

The names and address of the parties being served are as follows:

Heidi L. Keefe hkeefe@cooley.com Phillip Morton pmorton@cooley.com Andrew C. Mace amace@cooley.com Facebook FB_SoundView_PTAB_IPR@cooley.com

Respectfully submitted,

/ Kenneth J. Weatherwax /

Date: June 6, 2017