UNITED STATES PATENT AND TRADEMARK OFFICE
______
BEFORE THE PATENT TRIAL AND APPEAL BOARD
______
ACTIVISION BLIZZARD, INC., ELECTRONIC ARTS INC., TAKE-TWO INTERACTIVE SOFTWARE, INC., 2K SPORTS, INC., and ROCKSTAR GAMES, INC., Petitioners,
v.
ACCELERATION BAY, LLC, Patent Owner. ______
Case No. IPR2015-01951 Patent 6,714,966 B1 ______
PATENT OWNER PRELIMINARY RESPONSE TO PETITION PURSUANT TO 37 C.F.R. § 42.107
Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
TABLE OF CONTENTS Page
I. INTRODUCTION ...... 1
II. THE ‘966 PATENT IS DIRECTED TO A COMPUTER NETWORK WITH AN m-REGULAR, INCOMPLETE GRAPH TOPOLOGY ...... 8
III. CLAIM CONSTRUCTION ...... 13
IV. THE PETITION SHOULD BE DENIED – THERE IS NO REASONABLE LIKELIHOOD THAT PETITIONERS WILL PREVAIL ...... 14
A. Petitioners Are Aware Of The Fatal Defect In Their Petition: Lin Is Not Prior Art ...... 14
1. A Reference Is Not Prior Art If It Post-Dates Actual Reduction To Practice ...... 15
2. The Effective Date of Lin Is No Earlier Than November 23, 1999 ...... 16
3. Boeing’s Actual Reduction to Practice Disqualifies Lin As Prior Art ...... 17
B. Even If Lin Were Prior Art, There Is No Reasonable Likelihood That Claims 1-17 Are Obvious In View Of DirectPlay, Taken Alone Or Combined With Lin ...... 21
1. DirectPlay Teaches Only Routing Tables And A Complete Graph Rather Than The Claimed Computer Network With “Non-Complete Graph”...... 25
2. DirectPlay Teaches Away From The Invention Of The ‘966 Patent ...... 27
3. DirectPlay And Lin Are Not Combinable ...... 31
C. Petitioners Improperly Incorporate Dr. Karger’s Declaration By Reference ...... 34
i Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
D. Even If Lin Were Prior Art, There Is No Reasonable Likelihood That Claims 1-7, 10, 11, 16 And 17 Are Anticipated By Lin Or That Claims 6-10 and 17 Are Obvious In View Of Lin And What A POSITA Would Have Known ...... 36
E. Petitioners’ Cumulative Grounds Should Also Be Denied For Failing To Explain Any Meaningful Distinction Between Lin and Shoubridge ...... 38
V. PETITIONERS’ OBVIOUSNESS ARGUMENTS FAIL AS A MATTER OF LAW BECAUSE THEY DID NOT CONDUCT A COMPLETE OBVIOUSNESS ANALYSIS ...... 39
VI. CONCLUSION ...... 41
ii Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
TABLE OF AUTHORITIES
Page(s)
Cases ActiveVideo Networks, Inc. v. Verizon Commc'ns, Inc., 694 F.3d 1312 (Fed. Cir. 2012) ...... 4, 6
Apple Inc. v. Int'l Trade Comm'n, 725 F.3d 1356 (Fed. Cir. 2013) ...... 39
Ariosa Diagnostics v. Verinata Health, Inc., IPR2013-00276, Paper No. 43 (P.T.A.B. Oct. 23, 2014) ...... 5
Brown v. Barbacid, 276 F.3d 1327 (Fed. Cir. 2002) ...... 15
Cisco Sys., Inc. v. C-Cation Techs., LLC, IPR2014-00454, Paper No. 12 (P.T.A.B. Aug. 29, 2014) ...... 35
Cooper v. Goldfarb, 154 F.3d 1321 (Fed. Cir. 1998) ...... 16
Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294 (Fed. Cir. 2010) ...... 41
In re Cyclobenzaprine Hydrochloride Extended–Release Capsule Patent Litig., 676 F.3d 1063 (Fed. Cir. 2012) ...... 40
DeSilva v. DiLeonardi, 181 F.3d 865 (7th Cir. 1999) ...... 5, 35
Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., IPR2013-00131, Paper No. 42 (P.T.A.B. Sept. 12, 2014) ...... 16
Dynamic Drinkware LLC v. Nat’l Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015) ...... 16
EMC Corp. v. Secure Access, LLC, IPR2014-00475, Paper No. 10 (P.T.A.B. Sept. 9, 2014) ...... 24
iii Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
Fox Group, Inc. v. Cree, Inc., 700 F.3d 1300 (Fed. Cir. 2012) ...... 15, 16
Ex Parte Ian Hector Frazer, Appeal No. 2012-002760, Decision on Appeal (P.T.A.B. Jan. 9, 2014) ...... 24
Ex Parte Taro Fujii, Appeal No. 2009-011862, 2012 WL 370584 (B.P.A.I. Jan. 31, 2012) ...... 30
Funai Elec. Co. v. Daewoo Elecs. Corp., 616 F.3d 1357 (Fed. Cir. 2010) ...... 13
Graham v. John Deere Co., 383 U.S. 1 (1966) ...... 39
In re Gurley, 27 F.3d 551 (Fed. Cir. 1994) ...... 30
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007) ...... 3, 23, 34
Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346 (Fed. Cir. 2013) ...... 40, 41
Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co., CBM-2012-00003, Paper No. 7 (P.T.A.B. Oct. 25, 2012) ...... 7, 39
Loral Fairchild Corp. v. Matsushita Elec. Indus Co., 266 F.3d 1358 (Fed. Cir. 2001) ...... 16, 18
Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572 (Fed. Cir. 1996) ...... 16
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157 (Fed. Cir. 2006) ...... 30
OpenTV, Inc. v. Cisco Tech., Inc., IPR2013-00328, Paper No. 13 (P.T.A.B. Nov. 29, 2013) ...... 23
iv Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343 (Fed. Cir. 2013) ...... 40
Rambus Inc. v. Teresa Stanek Rea, 731 F.3d 1248 (Fed. Cir. 2013) ...... 41
In re Ratti, 270 F.2d 810 (C.C.P.A. 1959) ...... 31
Ruiz v. A.B. Chance Co., 234 F.3d 654 (Fed. Cir. 2000) ...... 40
Scott v. Finney, 34 F.3d 1058 (Fed. Cir. 1994) ...... 16, 19
Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352 (Fed. Cir. 2011) ...... 3, 22
Statutes 35 U.S.C. § 102(a) ...... 2, 14, 17
35 U.S.C. § 325(d) ...... 42
Other Authorities 37 C.F.R. § 42.20(c) ...... 4, 25
37 C.F.R. § 42.22(a)(2) ...... 4, 25
37 C.F.R. § 42.24(a)(1)(i) ...... 34
37 C.F.R. § 42.65(a) ...... 6
37 C.F.R. § 42.104(b)(4) ...... 4, 25
v Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
I. INTRODUCTION Petitioners, in two parallel petitions, seek inter partes review of all of the
claims (i.e., claims 1-17) in U.S. Patent No. 6,714,966 B1 (the “’966 patent”),
which issued to The Boeing Company on March 30, 2004, based on an application
filed in the USPTO on July 31, 2000. The ‘966 patent is one of several patents obtained by Boeing directed to novel computer network technology, developed by inventors Fred Holt and Virgil Bourassa more than sixteen years ago, that solved critical scalability and reliability problems associated with the real-time sharing of information among multiple widely distributed computers.1 This innovative technology enabled large-scale, unlimited online collaborations with numerous participants continually joining and leaving -- with applications ranging from aircraft design development to multi-player online games. A core feature of the patented technology as claimed in the ‘966 patent is the m-regular, incomplete
1 In addition to the instant Petition and the related petition (IPR2015-01953), which also targets the ‘966 patent, Petitioners filed two other sets of dual petitions seeking inter partes review of two other patents obtained by Boeing that concern the computer network technology invented by Fred Holt and Virgil Bourassa: U.S.
Patent No. 6,701,344 (IPR2015-01970 and IPR2015-01972) and U.S. Patent No.
6,829,634 (IPR2015-01964 and IPR205-01996). All six petitions filed by
Petitioners in their three sets of dual petitions rely on the same three references.
1 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
graph network topology. This obviates the need for routing tables, as each node
can send received messages to its neighbors.
The Petition attacks the validity of the ‘966 patent variously on obviousness
and anticipation grounds based on two alleged prior art references, i.e., the
DirectPlay and Lin references, and the alleged knowledge of a POSITA. None of
Petitioners’ grounds for unpatentability are viable for a fundamental reason, which
Petitioners presage: Lin is not prior art to the ‘966 patent. Boeing actually
reduced the invention claimed in the ‘966 patent to practice in the United States
prior to Lin’s effective date as prior art under pre-AIA 35 U.S.C. § 102(a). This
fact is fatal to the Petition as Lin is the linchpin of all of Petitioners’ invalidity
arguments -- all of the grounds for unpatentability asserted by Petitioners require
Lin to be prior art.
In addition to the fatal defect that Lin is not prior art, Grounds 1 and 3 of the
Petition, which allege obviousness based on (i) the combination of DirectPlay and
Lin, and (ii) the combination of Lin and the alleged knowledge of a POSITA, fail
because they violate the law regarding obviousness. Federal Circuit precedent
dictates that “obviousness requires more than a mere showing that the prior art
includes separate references covering each separate limitation in a claim under examination … [r]ather, obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined
2 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966) those prior art elements in the normal course of research and development to yield the claimed invention.” Unigene Labs., Inc. v. Apotex, Inc., 655 F.3d 1352, 1360
(Fed. Cir. 2011) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007))
(emphasis added). The Petition provides no reason to combine references in the manner claimed without hindsight assistance from the disclosure of the ‘966 patent itself.
The ‘966 patent is directed to a novel computer network and information delivery service where participants are immediately updated as to data broadcast on the network using an incomplete graph. In stark contrast, DirectPlay, which
Petitioners acknowledge was considered by the USPTO Examiner as part of another reference overcome during prosecution of the ‘966 patent, teaches that networks should exclusively rely on a complete graph topology to facilitate network communications (for games) -- this is the antithesis of (and teaches away from) the m-regular, incomplete graph topology recited in all of the ‘966 patent claims. As to Lin, it has nothing to do with real-time networks of the type described and claimed in the ‘966 patent. Rather, Lin is concerned with messaging systems where reliability is of utmost importance -- even if this means longer and inconsistent broadcast delivery times. In contrast to the dynamic environment of the network according to the ‘966 patent, Lin discloses that its Harary graphs are not “concerned with attaining a minimum broadcast delivery time.” Exhibit
3 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
1004 at 10 (emphasis added). In light of this disclosure, no POSITA would select the Harary graphs described in Lin as a replacement for DirectPlay’s complete graph and routing tables.
Notably, Petitioners never attempt to explain how the various elements of
DirectPlay, Lin and the alleged knowledge of a POSITA would operate to reach the invention described and claimed in the ‘966 patent, which is contrary to the law. See ActiveVideo Networks, Inc. v. Verizon Commc'ns, Inc., 694 F.3d 1312,
1327 (Fed. Cir. 2012) (the proper obviousness analysis must “explain how specific references could be combined…or how any specific combination would operate or read on the asserted claims.”). Indeed, Petitioners inappropriately leave it up to the
Board to divine how entirely different network topologies (e.g., DirectPlay’s complete graph with routing tables and Lin’s particular Harary graphs) can be arranged to meet the patented computer network. See 37 C.F.R. §§ 42.20(c),
42.22(a)(2) and 42.104(b)(4) (explaining that it is a petitioner’s burden to
“establish that it is entitled to the requested relief” and to do so “[t]he petition must specify where each element of the claim is found in the prior art” and provide “a detailed explanation of the significance of the evidence.”)(emphasis added).
Because the Petition fails to explain how the cited references would operate to disclose the patented invention, it fails to make the threshold showing for institution of inter partes review.
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Furthermore, in addition to the fatal defect that Lin is not prior art, Ground 2 of the Petition, which alleges that Lin anticipates claims 1-7, 10, 11, 16 and 17 of the ‘966 patent, fails because Lin is admittedly not concerned with minimizing data delivery times in an information delivery service. The patented invention is directed to embodiments of an information delivery service where participants are immediately updated with broadcast data. Because the large diameter canonical
Harary graphs disclosed in Lin use locally-connected nodes that are spaced far apart, data delivery times are slow and inconsistent. This makes the Lin broadcast topology suboptimal for use with multiple participants in the dynamic broadcast environment contemplated by the ‘966 patent. This is fatal to Ground 2 of the
Petition.
Recognizing that the Petition plainly lacks adequate explanation and support for the allegations presented, Petitioners rely on numerous bare citations to a 149 page declaration from their expert, Dr. Karger. But Petitioners cannot make their case within the declaration of an expert then state in the Petition itself that readers simply should refer to the presentation in the declaration. See Ariosa Diagnostics v. Verinata Health, Inc., IPR2013-00276, Paper No. 43 at 16–17 (P.T.A.B. Oct. 23,
2014) (“A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.”) (citing DeSilva v. DiLeonardi, 181
5 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
F.3d 865, 866–67 (7th Cir. 1999)). Thus, Dr. Karger’s arguments should be ignored because they are not presented in the Petition itself.
Furthermore, 37 C.F.R. § 42.65(a) requires that Dr. Karger’s opinion be given little or no weight as it simply substitutes his conclusory statements in place of actual facts or data described in DirectPlay or Lin. 37 C.F.R. § 42.65(a)
(“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.”). For example, with DirectPlay,
Dr. Karger reads into it more than is actually there. He grossly mischaracterizes portions of DirectPlay as suggesting the patented solution. However, a plain reading of DirectPlay fails to describe the claimed network with its m-regular, incomplete graph topology. Moreover, Dr. Karger’s declaration suffers from the same deficiencies as the Petition as he also fails to “explain how specific references could be combined… or how any specific combination would operate or read on the asserted claims.” See ActiveVideo Networks, 694 F.3d at 1327.
The inescapable conclusion is that, whether Lin is taken alone or combined with DirectPlay, Petitioners’ grounds for unpatentability fail to demonstrate a reasonable likelihood of success on the merits. As a result, the Board should decline to institute inter partes review.
Also, in the Petition, Petitioners acknowledge the vulnerability of their arguments due to their reliance on Lin. Petitioners hedge against Lin not being
6 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966) prior art by taking a second bite at the apple via their admitted fallback, second petition (i.e., IPR2015-01953), which relies on a different reference to allege obviousness -- an IEEE paper by Peter Shoubridge and others. This tactic is inimical to the inter partes review process under the present circumstances and should not be condoned. In their two petitions attacking the ‘966 patent,
Petitioners challenge the same claims (not different subsets of claims); and both petitions rely on DirectPlay. Indeed, in their second petition, Petitioners apply the
Shoubridge reference against the same claims in combination with DirectPlay and the alleged knowledge of a POSITA in the same manner as they do with Lin in the instant Petition. Petitioners, however, do not provide, in either of their dual petitions, the requisite meaningful distinction between Lin and Shoubridge in terms of relative strengths and weaknesses with respect to the asserted grounds for unpatentability. See, e.g., Liberty Mutual Ins. Co. v. Progressive Casualty Ins. Co.,
CBM-2012-00003, Paper No. 7 at 2 (P.T.A.B. Oct. 25, 2012).
Given Petitioners’ failure to establish a reasonable likelihood that they would prevail with respect to at least one of the challenged ‘966 patent claims, and given the tactical liberties taken by Petitioners, Patent Owner respectfully requests that the Board deny inter partes review as to all grounds for unpatentability alleged in both petitions.
7 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
II. THE ‘966 PATENT IS DIRECTED TO A COMPUTER NETWORK WITH AN m-REGULAR, INCOMPLETE GRAPH TOPOLOGY As discussed in the Background of the Invention section of the ‘966 patent
(the “Background”), point-to-point network protocols, such as UNIX pipes,
TCP/IP, and UDP, allow processes on different computers to communicate via
point-to-point connections. Ex. 1001 at 00042, 1:44-46. However, the
interconnection of all participants using point-to-point connections, while theoretically possible, does not scale well as the number of participants grows. Id. at 1:46-49. Because each participating process needs to manage its direct connections to all other participating processes, the number of possible participants is limited to the number of direct connections a given machine, or process, can support. Id. at 1:49-55.
On the other end of the connectivity spectrum are client/server middleware systems that have a single server that does not communicate with any other server and coordinates all communications between various clients who are sharing the information. Id. at 1:58-60. These systems rely on the sole server to function as a central authority for controlling access to shared resources. Id. at 1:60-62. Such systems are also not well suited to sharing of information among many participants, but for different reasons than point-to-point networks. When a client stores information to be shared at the server, every other client must poll the server to determine that the new information is being shared, which places a very high
8 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
overhead on the communications network. Id. at 1:65-2:4. Alternatively, each
client can register a callback with the server, which the server then invokes when
new information is available to be shared. Id. at 2:4-6. However, such callback
techniques create a performance bottleneck. A single server needs to effect a
callback to each and every client whenever new information is to be shared. In
addition, the reliability of the entire information sharing depends upon that of a
single server; failure at the single server prevents all communications between any
clients. Id. at 2:7-13.
The ‘966 patent is one of several patents obtained by Boeing directed to its
novel computer network technology that solved the central bottleneck problem of
client/server networks, as well as the problems of management complexity and
limited supported connections of point-to-point networks. More particularly, the
‘966 patent describes using a computer network and information delivery service
that overlay a point-to-point network where each node (participant) is connected to
some -- but not all -- neighboring network nodes. For example, Fig. 2 of the ‘966 patent, reproduced below, shows a network of twenty participants, where each participant is connected to four other participants:
9 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
Ex. 1001 at 00004.
Such a network arrangement, where each node in the network, is connected
to the same number of other nodes, is known as an m-regular network. Id. at
00043, 4:38-39. That is, a network is m-regular when each node is connected to m other nodes and a computer would become disconnected from the information delivery service only if all m of the connections to its neighbouring nodes fail. Id.
at 4:40-42. In Fig. 2 above, m=4 because each node is connected to four other
nodes of the network. A network is said to be m-connected when it would take a
failure of m computers to divide the graph into disjoint sub-graphs, i.e., separate
information delivery services. Id. at 4:42-45.
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A key attribute of the computer network claimed in the ‘966 patent is that the number of network participants N (in Fig. 2, this is twenty) is always greater than the number of connections m to each participant (in Fig. 2, this is four). Id. at
00004, Fig. 2. In fact, under the ‘966 patent claims, N must always be m+2 or greater: N ≥ m+2. This network topology, where no node is connected to every other node, is an incomplete graph.
Figs. 3A and 3B of the ‘966 patent, reproduced below, illustrate the process of breaking connections between nodes (i.e., “edges”) in a primitive, complete graph network to add new node Z to build the inventive incomplete graph.
Ex. 1001 at 00005.
11 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
As described in the ‘966 patent:
Thus, some connections between computers need to be broken so that the seeking computer can connect to four computers. In one embodiment, the broadcast technique identifies two pairs of computers that are currently connected to each other. Each of these pairs of computers breaks the connection between them, and then each of the four computers (two from each pair) connects to the seeking computer. FIGS. 3A and 3B illustrate the process of a new computer Z connecting to the information delivery service. FIG. 3A illustrates the information delivery service before computer Z is connected. The pairs of computers B and E and computers C and D are the two pairs that are identified as the neighbors for the new computer Z. The connections between each of these pairs is broken, and a connection between computer Z and each of computers B, C, D, and E is established as indicated by FIG. 3B.
Ex. 1001 at 00044, 5:55-6:3.
The incomplete graph topology relies on participants to disseminate information to other participants, thus avoiding the bottleneck of a single central server node. See id. at 000042, 1:58-2:13. Also, the incomplete graph avoids the inherent limitations on scaling and the management of N connections (i.e., a connection to every other participant) at every network node. See id. at 1:44-56.
As described in the ‘966 patent, to broadcast a message, the originating computer sends the message to each of its neighbors using its point-to-point
12 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
connections. Id. at 00045, 7:26-32. A computer that receives the message then
sends the message to its neighbors (but not to the computer that provided the
message) using the point-to-point connections. Id. at 7:33-45. In this way, the
message is propagated to each computer using the underlying network, thus
broadcasting the message to each computer over a logical broadcast channel.
It should be appreciated that the invention as described and claimed in the
‘966 patent leverages the weaving together of (i) a fabric of point-to-point
connections into an m-regular network with (ii) an incomplete graph topology to achieve scalable and reliable, wide-area, peer-to-peer communications among computer processes with high connectivity and minimal latency.
III. CLAIM CONSTRUCTION
Patent Owner respectfully submits, without prejudice, that, for purposes of this Patent Owner Preliminary Response, it is not generally necessary to dispute
Petitioners’ proposals for construing the ‘966 patent claims -- especially, given that all of Petitioners’ alleged grounds for unpatentability fail for at least the reason that
Lin is not prior art. However, Patent Owner does point out that Petitioners’ proposed construction for “means for identifying a broadcast channel for a topic of interest” is incorrect as it improperly zones in on only one exemplary embodiment to the exclusion of others. See Funai Elec. Co. v. Daewoo Elecs.
Corp., 616 F.3d 1357, 1371 (Fed. Cir. 2010) (rejecting claim construction that
13 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966) excluded an example embodiment). It is more correct to identify the structure that performs the recited function as the information delivery service application. As set forth in the ‘966 patent:
In one embodiment, an information delivery service application is implemented using the broadcast channel. The information delivery service allows participants to monitor messages as they are broadcast on the broadcast channel.
Ex. 1001 at 00049, 16:25-28.
Accordingly, the proper structure of “means for identifying a broadcast channel for a topic of interest” is an “information delivery service application.” Patent
Owner also notes for the record its disagreement with Petitioners’ suggestion that the elements of claim 13 recited in means-plus-function terms are indefinite.
IV. THE PETITION SHOULD BE DENIED – THERE IS NO REASONABLE LIKELIHOOD THAT PETITIONERS WILL PREVAIL
A. Petitioners Are Aware Of The Fatal Defect In Their Petition: Lin Is Not Prior Art Petitioners have seen the writing on the wall. The Lin reference, which is critical to all of Petitioners’ grounds for unpatentability in the Petition, is, as
Petitioners feared, not prior art to the ‘966 patent under pre-AIA 35 U.S.C. §
14 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
102(a).2 The invention claimed in the ‘966 patent was actually reduced to practice by Boeing engineers before Lin’s effective date. This alone is sufficient basis for the Board to deny the Petition.
1. A Reference Is Not Prior Art If It Post-Dates Actual Reduction To Practice The Patent Rules provide three independent ways to establish prior invention relative to a claimed prior art reference. The first is to establish actual reduction to practice of the invention prior to the effective date of the reference. See, e.g., Fox
Group, Inc. v. Cree, Inc., 700 F.3d 1300, 1304 (Fed. Cir. 2012) (citations omitted); see also Brown v. Barbacid, 276 F.3d 1327, 1337 (Fed. Cir. 2002) (citations omitted). As recognized by the Board, to establish an actual reduction to practice,
“[t]he essential inquiry . . . is whether the advance in the art represented by the
2 On page 5 of the Petition, Petitioners acknowledge that Lin is vulnerable to being antedated and, as a hedge, ask the Board to institute trial based on their backup, parallel petition (IPR2015-01953):
Lin … is prior art under § 102(a). If Patent Owner seeks to antedate
Lin by trying to show prior invention, Petitioners respectfully request
that the Board also institute trial for the petition based on the
DirectPlay/Shoubridge combination, as DirectPlay and Shoubridge are
prior art under § 102(b).
15 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
invention . . . was embodied in a workable device that demonstrated that it could
do what it was claimed to be capable of doing.” Dynamic Drinkware, LLC v.
Nat’l. Graphics, Inc., No. IPR2013-00131, Paper No. 42 at 7 (P.T.A.B. Sept. 12,
2014)(emphasis in original), aff’d Dynamic Drinkware LLC v. Nat’l. Graphics,
Inc., 800 F.3d 1375 (Fed. Cir. 2015) (quoting Scott v. Finney, 34 F.3d 1058, 1063
(Fed. Cir. 1994)); see also Fox Group, 700 F.3d at 1305; Loral Fairchild Corp. v.
Matsushita Elec. Indus. Co., 266 F.3d 1358, 1362-63 (Fed. Cir. 2001) (citing
Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572, 1578 (Fed. Cir. 1996)); Cooper v.
Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998). Here, the Board need not reach the other two ways to establish prior invention (which require conception prior to the effective date of the reference coupled with diligence from prior to the reference date to a subsequent (i) actual or (ii) constructive reduction to practice).
Boeing’s actual reduction to practice of the subject matter described and claimed in the ‘966 patent clearly antedates Lin.
2. The Effective Date of Lin Is No Earlier Than November 23, 1999 The Lin reference is an article titled “Gossip versus Deterministic Flooding:
Low Message Overhead and High Reliability for Broadcasting on Small Networks” written by Meng-Jang Lin and others. Ex. 1004, Ex. B. While the article itself does not appear to include a publication date, the Declaration of Glenn Little, pp.
00001-00003 of Exhibit 1004 to the Petition, identifies November 23, 1999 as the
16 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
date that the Lin reference was first made publicly available via the Technical
Reports Library of the Computer Science and Engineering department of the
University of California, San Diego. Ex. 1004 at 00003, ¶14. Without conceding
the actual effective date of Lin as a printed publication, for purposes of this
Preliminary Response, based on Exhibit 1004, Patent Owner assumes that the Lin
reference is a “printed publication” within the meaning of pre-AIA 35 U.S.C. §
102(a) and that its effective date is no earlier than November 23, 1999.
3. Boeing’s Actual Reduction to Practice Disqualifies Lin As Prior Art Boeing’s research and development efforts more than sixteen years ago
directed to supporting easy, quick and reliable large-scale information sharing
around the globe yielded not only the ‘966 patent and several other patents, but an actual working solution that was implemented by Boeing in the United States -- namely, Boeing's Small-World Wide Area Networking (“SWAN”) technology.
Ex. 2001 at 1 (certain confidential information not necessary to establish Boeing’s actual reduction to practice has been redacted). SWAN, which embodied the invention claimed in the ‘966 patent, was an enabling technology that enhanced numerous computing, networking and communications functions. The sophisticated mathematics and software architecture underlying SWAN provided peer-to-peer communications for virtual communities anywhere in the world. Id. at 2. It further supported large-scale, unlimited online collaborations with
17 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966) participants continually joining and leaving, and even failing. It achieved this with high reliability and low latency, scaling from a single process to thousands of participating processes. Id. SWAN thus had many applications ranging from collaborative airplane design development involving scores of engineers to massive multi-player online games, for example.
Patent Owner’s Exhibit 2001 includes a Boeing Invention Disclosure form that relates to the invention claimed in the ‘966 patent. The form is the cover page of a nineteen page document that describes in detail the technology embodying the invention described and claimed in the ‘966 patent and actually realized in SWAN.
The document was provided by the ‘966 patent inventors, Fred Holt and Virgil
Bourassa, for consideration and use by Boeing’s patent counsel in connection with the preparation of several U.S. patent applications, including the application that issued as the ‘966 patent.
The Boeing Invention Disclosure form establishes at least two significant dates that disqualify Lin as prior art. The first date, September 16, 1999, is the date that SWAN was tested in an intended use environment and successfully fulfilled its intended purpose; the second date is November 11, 1999, which is the date that SWAN was put to use at Boeing. Id. at 1. These dates demonstrate actual reduction to practice of SWAN. See, e.g., Loral Fairchild Corp., 266 F.3d at 1362-63 (“Once the invention has been shown to work for its intended purpose,
18 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966) reduction to practice is complete.”). Patent Owner notes that both of these dates recorded on the Boeing Invention Disclosure form are prior to Lin’s submission on
November 18, 1999 to the Technical Reports Library of the Computer Science and
Engineering department of the University of California, San Diego, for publication, and Lin’s subsequent publication on November 23, 1999 (i.e., Lin’s effective date).
Patent Owner’s Exhibit 2001 further establishes that the invention described and claimed in the ‘966 patent was embodied in a workable device that could actually effect its claimed capabilities. See, e.g., Scott, 34 F.3d at 1063. Exhibit
2001 includes a page from the Boeing Invention Disclosure document that presents an actual SWAN screen shot (i.e., “Figure 2” reproduced below) depicting an exemplary computer network topology for a “SWAN session with 100 participants.” Ex. 2001 at 2. Figure 2 captures the essence of the SWAN technology, which maps to the ‘966 patent claims -- all of which require a network:
(i) where each participant has connections to at least three neighbor participants;
(ii) that is m-regular (where m is the exact number of neighbor participants of each participant); and (iii) that forms an incomplete graph.
19 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
Ex. 2001 at 2.
The window in the upper right corner of the screen indicates that SWAN provided a virtual channel with nodes each having a connectivity of four.
Moreover, the network nodes were connected such that the maximum distance
between any two of them was six or less. That is, the graph had a diameter of six.3
3 Fig. 2 of the ‘966 patent (reproduced on p. 10 above) shows an analogous graph with twenty nodes and a diameter of four. Ex. 1001 at 00004, 00044, 5:6-8.
20 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
As demonstrated above, SWAN was an actual reduction to practice of the
invention as claimed in the ‘966 patent prior to Lin’s effective date. As a result,
Lin is not prior art.4 Consequently, all of Petitioners’ alleged grounds for unpatentability, which all rely on Lin qualifying as prior art, fail.
B. Even If Lin Were Prior Art, There Is No Reasonable Likelihood That Claims 1-17 Are Obvious In View Of DirectPlay, Taken Alone Or Combined With Lin Petitioners’ primary reference for Ground 1, DirectPlay, whether taken alone
or combined with Lin or any other reference, fails as a reference against the ‘966
patent on several levels. As demonstrated below, DirectPlay relies on routing
tables and a complete graph network topology. Petitioners attempt to circumvent
the fact that DirectPlay does not even consider Lin’s specific approach of flooding
over Lin’s Harary graphs by relying on ex post facto reasoning and inaccurate
allegations.
Petitioners allege three reasons why a POSITA would have been motivated
to somehow combine Lin’s specific approach with DirectPlay. As described
4 Patent Owner provides documentary evidence herein demonstrating that Lin is not prior art. If, prior to deciding whether or not to institute inter partes review proceedings, the Board deems it appropriate for Patent Owner to also provide testimony evidence antedating Lin to summarily dispose of the Petition (and two others filed by Petitioners), Patent Owner is prepared to do so.
21 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
below, all of these alleged reasons are premised on the illogical rationale that a
person of ordinary skill at the time of the invention would have selected Lin to fix
that which is not broken in DirectPlay.
First, Petitioners allege a POSITA would have reason to combine because
Lin teaches a communications channel -- flooding over specific Harary graphs --
on which DirectPlay can be used. Petition at 23. But this alleged rationale is
insufficient as it does not explain why a POSITA at the time of the invention
would have selected Lin’s specific approach and combined it with DirectPlay to
yield the claimed invention -- an m-regular network with an incomplete graph topology. See Unigene Labs., 655 F.3d at 1360 (dictating that “obviousness requires the additional showing that a person of ordinary skill at the time of the invention would have selected and combined those prior art elements in the normal course of research and development to yield the claimed invention.”)(emphasis added). In fact, DirectPlay recognizes “there are many different ways to implement a networked application.” Ex. 1003 at 00020. Thus, it would be unreasonable to presume that a POSITA would know of Lin or even be motivated to look to Lin, simply because it describes specific Harary graphs.
Second, Petitioners allege that both references describe similar systems of
“broadcasting information to multiple participants in a computer network.” See
Petition at 23 (alleging that a POSITA would have reason to combine because both
22 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
Lin and DirectPlay address broadcasting information to multiple participants in a
network.). But many ways of broadcasting information to multiple participants in
a network exist. Alleging that DirectPlay and Lin describe “broadcasting
information to multiple participants in a computer network” is not sufficient
rationale for combining them. See OpenTV, Inc. v. Cisco Tech., Inc., IPR2013-
00328, Paper No. 13 at 21-22 (P.T.A.B. Nov. 29, 2013) (citing KSR Int’l Co., 550
U.S. at 418) (“The mere fact that [the cited references] describe similar [] systems is not, by itself, a sufficient rationale for a person of ordinary skill in the art to have made the asserted combination.”).
Third, Petitioners allege that a POSITA would have reason to combine because “DirectPlay teaches the need for a reliable network.” Petition at 25. But no such “need” is recited in DirectPlay. At most, Petitioners assert that
“DirectPlay teaches a future of computer gaming ‘with hundreds or even thousands of players participating in a single gaming universe.’” Id. But this rationale is defective as it is premised on mischaracterizing a partial quotation from
DirectPlay. The full quotation reveals that DirectPlay is not teaching a need but rather what is already embodied in DirectPlay. See Ex. 1003 at 00019
(“DirectPlay embodies our vision of where the future of computer gaming lies–in a networked world, with hundreds or even thousands of players participating in a single gaming universe.”)(emphasis added). Thus, DirectPlay’s statement is meant
23 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
to identify the benefits that DirectPlay already embodies -- not what DirectPlay
lacks or needs. As described below, DirectPlay provides these benefits by relying
on a complete graph and routing tables. Thus, because the features of DirectPlay
work for their stated purposes, and in fact, are taught as having beneficial effects, it
is unreasonable to suggest that a POSITA would seek to apply to DirectPlay the
teachings of Lin in order to achieve what is already embodied in DirectPlay alone.
See Ex Parte Ian Hector Frazer, Appeal No. 2012-002760 for App. No.
10/475,203, Decision on Appeal at 4-5 (P.T.A.B. Jan. 9, 2014) (rejecting motivation to combine rationale that proposes to fix that which is not broken.).
Petitioners also state that DirectPlay “teaches that developers should consider factors such as the reliability of message delivery.” Petition at 25. But
Petitioners never explain how anything disclosed in DirectPlay supports this conclusory statement, let alone how it supports that “DirectPlay teaches the need for a reliable network.” Id. (emphasis added). Nor is this self-evident as
Petitioners merely provide bare citations to numerous pages of DirectPlay. Id.
(citing “see, e.g., id. at 24-26, 75, 122”). As a result, Petitioners are effectively inviting the Board to “play archaeologist with the record” to cure their deficiencies.
EMC Corp. v. Secure Access, LLC, IPR2014-00475, Paper No. 10 at 14-16
(P.T.A.B. Sept. 9, 2014) (explaining how providing citations without quotations improperly circumvents “the page limits imposed on petitions for inter partes
24 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966) review and, rather than making the cited evidence accessible, imposes on us to re- construct Petitioner’s arguments and generally ‘play archaeologist with the record.’”). To the contrary, it is Petitioners’ burden to “establish that [they are] entitled to the requested relief” and to do so “[t]he petition must specify where each element of the claim is found in the prior art” and provide “a detailed explanation of the significance of the evidence.” See 37 C.F.R. §§ 42.20(c),
42.22(a)(2), and 42.104(b)(4) (emphasis added). Because Petitioners have not done so in the Petition, it should be denied.
Moreover, Petitioners never explain how Lin’s specific technique of flooding over Lin’s specific Harary graphs could be combined with DirectPlay to reach the claimed invention. This further suggests that Petitioners rely on impermissible hindsight.
1. DirectPlay Teaches Only Routing Tables And A Complete Graph Rather Than The Claimed Computer Network With “Non-Complete Graph” DirectPlay does not teach the network topology of the ‘966 patent. Thus, there is no likelihood of success on the Petition based on DirectPlay. DirectPlay, on its own, discloses no claim of the ‘966 patent.
As depicted in Fig. 18-3(a) of DirectPlay (reproduced below), DirectPlay offers nothing more than the conventional complete graph topology, and the concomitant burdens on network capacity (i.e., traffic load), not the novel
25 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966) computer network and information delivery service utilizing an incomplete graph claimed in the ‘966 patent.
Ex. 1003 at 00023.
DirectPlay’s complete graph and reliance on routing tables shown in Fig. 18-
3(a) represents what was, at the time, the pinnacle of possible network topologies contemplated by its creator, Microsoft:
Although still in its infancy, DirectPlay embodies our vision of where the future of computer gaming lies–in a networked world, with hundreds or even thousands of players participating in a single gaming universe.
Ex. 1003 at 00019 (emphasis added).
26 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
To overcome the severe limitations associated with a complete graph topology as taught by DirectPlay, the m-regular computer network as described and claimed in the ‘966 patent requires that any complete graph structure be avoided and replaced with an incomplete graph by adding new nodes and connections thereto. Thus, DirectPlay neither teaches nor suggests the possibility of breaking any connections in its complete graph (even to make new and more efficient ones) and wholly fails to describe or suggest the claimed incomplete graph topology.
In fact, because DirectPlay teaches that its complete graph and routing tables work for their stated purposes and have beneficial effects, such as the ability to send messages between all nodes (Ex. 1003 at 00023), a skilled artisan would not select an approach that breaks the connections of DirectPlay’s complete graph -- at least not without impermissible hindsight assistance from the disclosure of the ‘966 patent itself. Further, a skilled artisan would never try to modify DirectPlay using
Lin, as discussed below.
2. DirectPlay Teaches Away From The Invention Of The ‘966 Patent
The fundamental aspect of DirectPlay’s operation -- use of an N participant complete graph -- is antithetical to the claims of the ‘966 patent. DirectPlay’s Fig.
18-3(a) (previously shown above) depicts a gaming session where each player is connected to every other player. This is arranged before the game begins: “[i]f
27 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966) these players all decide they want to participate in this session, their DirectPlay objects connect to the DirectPlay object functioning as the session host.” Ex. 1003 at 00023. Moreover, importantly, DirectPlay relies heavily on pre-arranged routing tables to send messages between all objects (nodes) directly:
For network service providers, each newly connected DirectPlay object receives a list of the other DirectPlay objects when it connects to the session host, and this list is maintained during the session. Because each DirectPlay object knows about the other objects, they route messages directly to one another rather than through the session host. So the resulting session is peer-to-peer . . . .
Ex. 1003 at 00023.
Thus, DirectPlay cannot handle a highly dynamic network where participants regularly leave and new participants join. The invention described and claimed in the ‘966 patent, in stark contrast, can. The ‘966 patent describes use of a network with an incomplete graph, which is maintained by complex “edge pinning” algorithms. These algorithms manage the highly dynamic number and identity of participants and the creation of connections to new network participants as they join, while breaking existing connections between current network participants to accommodate the newcomers. This ensures an incomplete graph and that when new network nodes are added a minimum diameter of the network is preserved so as to facilitate minimum broadcast delivery times. Ex. 1001 at 00044,
28 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
5:53-6:7; id. at 00005, Figs. 3A and 3B (previously shown above); id. at 00045,
7:51-54.
Unlike the solution of the ‘966 patent, Microsoft’s DirectPlay does not embrace dynamism. Rather, DirectPlay utilizes a simple, sub-optimal technique.
It leans heavily on the crutch of routing tables for direct connections between all
nodes provided via a pre-game meeting place -- the DirectPlayLobby -- in which
all players to a game are identified ab initio:
For local play, someone could just lean over into the next office or cubicle and throw down the gauntlet, but the Internet is a big place, and some help is needed. We created the DirectPlayLobby object for this purpose. The DirectPlayLobby object mimics the function of a physical lobby by providing a virtual meeting place for players and spectators. A player can search for players of similar skill, chat with them, and set up a game. The lobby takes it from there, orchestrating the process by notifying participants and launching the application simultaneously on everyone’s computer.
Ex. 1003 at 00024.
The above text makes clear that DirectPlay contemplates only that the N participants to an Internet-based network gaming session first meet in the
DirectPlayLobby, and agree to participate. Id. Given these N participants, a peer- to-peer network is created where every participant is connected to every other participant (i.e., a complete graph), and the application is launched simultaneously
29 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
on everyone’s computer. Ex. 1003 at 00023. The list of participants is maintained
during the session, and this list is used at all times during the session to route
messages between all participants. Id.
Indeed, Microsoft’s DirectPlay, with its requirements of a complete graph structure, would discourage a POSITA from even contemplating the path leading to the invention described and claimed in the ‘966 patent, which completely eschews the use of complete graphs for a system that contains regular, incomplete graphs. As the Federal Circuit has recognized:
A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. . . . [I]n general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (citation omitted), accord Ex
Parte Taro Fujii, Appeal No. 2009-011862, 2012 WL 370584, at *4 (B.P.A.I.
Jan. 31, 2012); see also Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165
(Fed. Cir. 2006).
As such, Petitioners’ Ground 1, which relies on DirectPlay as a primary reference, is fatally flawed.
30 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
3. DirectPlay And Lin Are Not Combinable
DirectPlay also cannot be combined with Lin to create the patented dynamic network implemented in the ‘966 Patent. Such a combination would require changing the core principles under which Microsoft designed DirectPlay to operate
-- in fact, it would eviscerate them. Thus, the proposed combination cannot be sufficient to render the claims prima facie obvious. See In re Ratti, 270 F.2d 810,
813 (C.C.P.A. 1959) (dictating that if the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious).
As discussed above, DirectPlay relies on a conventional complete graph and routing tables to connect all nodes directly to each other. This is because the primary goal of DirectPlay is to provide a consistent interface. Ex. 1003 at 00020.
As DirectPlay acknowledges “there are many different ways to implement a networked application,” and its goal was to avoid inflicting a specific approach that would stifle the creative developer. Id. As such, DirectPlay teaches that the only thing that game developers need to concern themselves with in order to utilize the
DirectPlay architecture is the simple complete graph, as shown in Figures 18-2 and
18-3. Id. at 00022-23.
31 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
In contrast, Lin provides a very specific approach that relies on a network
topology that superimposes specific types of Harary graphs having numerous
complex properties. Ex. 1004 at 00016, Figure 4 (reproduced below); 00014.
Ex. 1004 at 00016.
This is because Lin is not concerned with maintaining a minimal and consistent
data broadcast delivery time. Id. at 00010. Rather, Lin is directed towards
attaining the utmost reliability, which Lin calls the “desired target reliability.” Id. at 0009. To attain the desired reliability, Lin requires the construction of specific large diameter canonical Harary graphs, and implementation of a broadcast protocol that floods messages over such graphs to only immediate neighbors. Id. at
00009 and 00012. As described in the ‘966 patent, the largest distance between any two network nodes in a broadcast channel is the “diameter” of that channel.
Ex. 1001 at 00044, 5:1-3. Therefore, in Lin’s specific Harary graphs, where no
32 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966) node is directly connected to any other node on the other side of the graph, but only to neighbors and near neighbors along the perimeter of the graph, the diameter is large. Ex. 1004 at 00016, Figure 4. In contrast, with a complete graph, such as taught by DirectPlay, where every node is connected to every other node, the diameter is one. Because Lin’s multi-hop (i.e., large diameter) Harary graphs are the antithesis of DirectPlay’s complete graph (where every node is one edge away from any other node, and therefore the diameter is one), the proposed combination would necessarily eviscerate one of the basic principles in which
DirectPlay was designed to operate, namely the complete graph network of Fig.
18-3(a). Thus, Lin is not suited for combination with DirectPlay.
Lin itself suggests against such combination. Lin describes a leaner modification of “rumor mongering” network protocols. Ex. 1004 at 00009. Lin intentionally seeks “a minimal number of links.” Id. Therefore, Lin superimposes its canonical Harary graphs on top of the processors comprising nodes in a network, and sends messages only along the edges of the graphs. Id. In fact, the
Harary graphs chosen as examples by Lin all have links t less than one half the number of nodes n, or, for a Harary graph, Hn,t, t is less than or equal to n/2 (see, e.g., “Figure 4” of Lin below). Id. at 00016. In contrast, the complete graphs of
DirectPlay actually have maximum connectivity, where t = n. Ex. 1003 at 00023,
33 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
Fig. 18-3(a) (reproduced on p. 26 above). This makes DirectPlay and Lin wholly
incompatible. Their respective network topologies are antithetical.
Moreover, neither DirectPlay nor Lin contemplates such transformative
modifications. It is thus not surprising that the Petition fails to provide any
guidance as to how to accomplish them. Rather than explaining how to combine
DirectPlay and Lin, Petitioners opt to repeat the mantra: “a POSITA would have
been motivated to combine the teachings of Lin and DirectPlay.” See, e.g.,
Petition at 31-33, 35, 36, 46 and 50. This glaring omission only further
demonstrates Petitioners’ reliance on impermissible hindsight. KSR Int’l Co., 550
U.S. at 421. Viewed through the lens of objective evidence, as opposed to the hindsight lens used by Petitioners, the ‘966 patent is not obvious over DirectPlay in combination with Lin.
C. Petitioners Improperly Incorporate Dr. Karger’s Declaration By Reference The Board should also reject Petitioners attempt to incorporate Dr. Karger’s declaration by reference because this technique is nothing more than an attempt to circumvent the 60 page limit, and thus should be disregarded. See 37 C.F.R. §
42.24(a)(1)(i). For example, Petitioners’ claim charts routinely employ citations to
multiple paragraphs from Dr. Karger’s expert declaration, many of which, in turn,
internally reference other sections of his declaration. See Petition at 27-57. Case
in point, Petitioners’ claim charts on pages 33, 35, 36, 38, 39, 41, 42 and 43 of the
34 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
Petition (which allegedly map Lin to claims 2-12 of the ‘966 patent) cite to
paragraphs 92-114 of Dr. Karger’s declaration. Ex. 1019 at 00048-00055. These
paragraphs consist of eight pages -- really many more pages when taking into
account internal incorporation by reference of various other sections of the
declaration. Id.
Petitioners’ tactic of incorporation by reference serves not only to circumvent the page limits imposed on the Petition, it also is an improper imposition on the Board’s and Patent Owner’s time by requiring each to “play archeologist with the record” and sift through nearly 150 pages of Dr. Karger’s declaration to locate the specific arguments corresponding to the numerous paragraphs cited to support Petitioners’ assertions. See, e.g., Cisco Sys., Inc. v. C-
Cation Techs., LLC, IPR2014-00454, Paper No. 12 at 7-10 (P.T.A.B. Aug. 29,
2014) (quoting DeSilva, 181 F.3d at 866-67 (“Incorporation ‘by reference amounts to a self-help increase in the length of the [] brief[,]’ and ‘is a pointless imposition on the court’s time. A brief must make all arguments accessible to the judges, rather than ask them to play archeologist with the record.’”)). The Board should not condone the tactical liberties taken by Petitioners and should deny trial on the
Petition because of them.
35 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
D. Even If Lin Were Prior Art, There Is No Reasonable Likelihood That Claims 1-7, 10, 11, 16 and 17 Are Anticipated By Lin Or That Claims 6-10 And 17 Are Obvious In View Of Lin And What A POSITA Would Have Known Lin describes a number of specific large diameter Harary graphs. Ex. 1004 at 00016. The graph examples provided in Lin would not work to implement a real-time, synchronized network where participants are immediately updated as to any data broadcast on the network. The reason is simple. Because, as discussed above (see IV.B.3.), the large diameter canonical Harary graphs disclosed in Lin use locally-connected nodes that are spaced far apart, data delivery times are slow and inconsistent. This makes the Lin broadcast topology suboptimal for use with multiple participants in the dynamic broadcast environment contemplated by the
‘966 patent.
By way of example, Figure 4 of Lin (see Ex. 1004 at 00016) presents two specific canonical Harary graphs having twenty-two nodes each. Given the way they are connected, each node is connected to adjacent and near-adjacent (i.e., locally-connected) nodes. There is therefore no way that a message sent by a given node would reach its opposing node in enough time to avoid wait states. As discussed above, this is due to the large number of hops that must be taken to traverse the distance between nodes on opposite sides of the network (i.e., the diameter). Given the symmetry of these canonical Harary graphs, every node is a
36 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966) full network diameter away from its opposing node. This distance is just too large to support large-scale synchronized broadcasts.
Notably, in stark contrast, Figure 2 of SWAN (reproduced below again for ready reference), although having 100 nodes (versus the twenty-two of the Harary graphs above), preserves a minimal diameter of six, which is only two greater than the diameter of these Harary graphs (which is either four or five, depending on the nodes), while serving a network about five times larger.
Ex. 2001 at 2.
37 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
Thus, Lin’s Harary graphs vitiate the very purpose of a synchronized information delivery service. Lin therefore teaches away from Boeing’s SWAN approach, which preserves minimal diameter across a network even with large numbers of network nodes.
Accordingly, Ground 2 of the Petition, which alleges that Lin anticipates claims 1-7, 10, 11, 16 and 17 of the ‘966 patent, fails because Lin is admittedly not concerned with minimizing data delivery times in an information delivery service.
In contrast, the patented invention is directed to embodiments of an information delivery service where participants are immediately updated with broadcast data.
This is fatal to Ground 2 of the Petition.
Similarly, a POSITA would not be inclined, let alone equipped, to reach the network topology of the ‘966 patent, which could service very large numbers of participants without wait states, looking to the specific, large diameter Harary graphs of Lin’s Figure 4. This is fatal to Ground 3 of the Petition.
E. Petitioners’ Cumulative Grounds Should Also Be Denied For Failing To Explain Any Meaningful Distinction Between Lin and Shoubridge Patent Owner also requests that the Board deny Petitioners’ cumulative grounds. Here, Petitioners have failed to articulate any meaningful substantive distinction across their parallel petitions with respect to the application of Lin and its substitute, Shoubridge, against the ‘966 patent claims. The Board has
38 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966) consistently made clear that it will decline to institute post-grant proceedings based on petitions that present multiple prior art references as alternatives without meaningful distinction (so-called “horizontal redundancy”). See, e.g., Liberty
Mutual Ins. Co., CBM-2012-00003, Paper No. 7 at 2 (explaining that, given the regulatory and statutory mandates for “just, speedy, and inexpensive” resolution of proceedings, “multiple grounds, which are presented in a redundant manner by a petitioner who makes no meaningful distinction between them, are … not all entitled to consideration.”). Accordingly, Petitioners’ horizontally redundant grounds are not entitled to consideration.
V. PETITIONERS’ OBVIOUSNESS ARGUMENTS FAIL AS A MATTER OF LAW BECAUSE THEY DID NOT CONDUCT A COMPLETE OBVIOUSNESS ANALYSIS The Petition relies heavily on obviousness to challenge the ‘966 patent.
Thus, it is shocking that Petitioners made no effort to present a complete obviousness analysis. As the United States Supreme Court and the Federal Circuit have repeatedly stated, any obviousness analysis must address (1) the scope and content of the prior art, (2) the differences between the prior art and the claims at issue, (3) the level of ordinary skill in the pertinent art, and (4) relevant secondary considerations of non-obviousness. See Graham v. John Deere Co., 383 U.S. 1,
17–18 (1966)). Failure to address any one of these criteria is fatal to a challenger’s obviousness argument as a matter of law. See, e.g., Apple Inc. v. Int’l Trade
39 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
Comm’n, 725 F.3d 1356, 1365–66 (Fed. Cir. 2013) (vacated and remanded ITC’s
ruling of obvious, as ITC failed to consider all obviousness factors, including
objective evidence of secondary considerations); Ruiz v. A.B. Chance Co., 234
F.3d 654, 662-63 (Fed. Cir. 2000) (vacated a conclusion of obviousness because
the fact-finder failed to make Graham factor findings). Petitioners’ failure to
present the Board with a complete obviousness analysis in the Petition is, as a
matter of law, enough to deny the institution of a trial on Section 103 grounds.
In this case, Petitioners’ failure to even consider the objective indicia of
nonobviousness in support of their obviousness allegations is fatal to their
obviousness arguments. Plantronics, Inc. v. Aliph, Inc., 724 F.3d 1343, 1355 (Fed.
Cir. 2013) (“This court has consistently pronounced that all evidence pertaining to
the objective indicia of nonobviousness must be considered before reaching an
obviousness conclusion.”). In fact, the Federal Circuit dictates that “[w]hether
before the Board or a court, . . . consideration of the objective indicia is part of the
whole obviousness analysis, not just an afterthought.” Leo Pharm. Prods., Ltd. v.
Rea, 726 F.3d 1346, 1357–58 (Fed. Cir. 2013). In other words, objective indicia of nonobviousness must always be considered as it “serve[s] to resist the temptation to read into the prior art teachings of the invention in issue.” Plantronics, Inc., 724
F.3d at 1355 (quoting In re Cyclobenzaprine Hydrochloride Extended–Release
Capsule Patent Litig., 676 F.3d 1063, 1076 (Fed. Cir. 2012)). Indeed, Petitioners’
40 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966) failure to consider objective indicia of nonobviousness only serves to further highlight the fact that Petitioners’ proposed combination of DirectPlay and Lin was colored by hindsight. Leo Pharm., 726 F.3d at 1358 (quoting Crocs, Inc. v. Int’l
Trade Comm’n, 598 F.3d 1294, 1310 (Fed. Cir. 2010)) (“Here, the objective indicia of nonobviousness are crucial in avoiding the trap of hindsight when reviewing, what otherwise seems like, a combination of known elements.”).
The fact that Petitioners did not address this important component of the obviousness analysis, and chose to provide the Board with an incomplete obviousness analysis is basis alone for denying their obviousness arguments. See
Rambus Inc. v. Teresa Stanek Rea, 731 F.3d 1248, 1257 (Fed. Cir. 2013)
(overturning Board because it failed to consider objective indicia of nonobviousness).
VI. CONCLUSION
All the grounds for unpatentability asserted in the Petition require Lin to be prior art; but, Patent Owner has demonstrated that it is not. For this reason alone, the Petition fails to give rise to a reasonable likelihood of success with respect to any of the patent claims of the ‘966 patent. Furthermore, Patent Owner has demonstrated that Petitioners’ alleged grounds for unpatentability are substantively without merit. Accordingly, Patent Owner earnestly requests that the Board decline to institute inter partes review on the Petition. Patent Owner also
41 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
respectfully requests that the Board exercise its discretion under 35 U.S.C. §
325(d) to also deny review of Petitioners’ parallel petition (IPR2015-01953) by
reason of the various tactical liberties taken by Petitioners resulting in profligate,
horizontally redundant petitions.
Respectfully submitted,
Dated: January 19, 2016 /James Hannah/ James Hannah (Reg. No. 56,369) [email protected] Michael Lee (Reg. No. 63,941) [email protected] Kramer Levin Naftalis & Frankel LLP 990 Marsh Road Menlo Park, CA 94025 Tel: 650.752.1700 Fax: 212.715.8000
Shannon Hedvat (Reg. No. 68,417) [email protected] Kramer Levin Naftalis & Frankel LLP 1177 Avenue of the Americas New York, NY 10036 Tel: 212.715.7502 Fax: 212.715.8302
(Case No. IPR2015-01951) Attorneys for Patent Owner
42 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
ACTIVISION BLIZZARD, INC., ELECTRONIC ARTS INC., TAKE-TWO INTERACTIVE SOFTWARE, INC., 2K SPORTS, INC., ROCKSTAR GAMES, INC., v. ACCELERATION BAY, LLC,
Case IPR2015-01951 Patent 6,714,966
PATENT OWNER’S EXHIBIT LIST
Exhibit No. Exhibit Description
2001 Boeing Invention Disclosure Document (cover page and page 6)
43 Patent Owner’s Preliminary Response IPR2015-01951 (U.S. Patent No. 6,714,966)
CERTIFICATE OF SERVICE
Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that a true and correct copy of the foregoing Patent Owner’s Preliminary Response was served on
January 19, 2016, by filing this document through the Patent Review Processing
System as well as delivering it via electronic mail upon the following counsel of record for Petitioner:
J. Steven Baughman Gene Lee ROPES & GRAY LLP ROPES & GRAY LLP 2099 Pennsylvania Ave., NW 1211 Avenue of the Americas Washington, DC 20005-3948 New York, NY 10036-8704 [email protected] [email protected]
Andrew Thomases ROPES & Gray LLP 1900 University Ave., 6th Floor East Palo Alto, CA 94303 [email protected]
/James Hannah/ James Hannah (Reg. No. 56,369) Kramer Levin Naftalis & Frankel LLP 990 Marsh Road, Menlo Park, CA 94025 (650) 752-1700
44