UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` ____________
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`DISTINCTIVE DEVELOPMENT, INC. ET AL.
`Petitioners
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.
`Patent Owner
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`____________
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`Case No. IPR2013-00391
`Patent 6,857,067
` ____________
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`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
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`PURSUANT TO 37 C.F.R. § 42.120
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`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` ____________
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`DISTINCTIVE DEVELOPMENT, INC. ET AL.
`Petitioners
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.
`Patent Owner
`
`____________
`
`Case No. IPR2013-00391
`Patent 6,857,067
` ____________
`
`
`
`PETITIONERS’ REPLY TO PATENT OWNER’S RESPONSE
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`PURSUANT TO 37 C.F.R. § 42.120
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`IPR2013-00391
`U.S. Patent No. 6,857,067
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`
`Table of Contents
`I. INTRODUCTION ......................................................................................... 1
`II. CRONCE ANTICIPATES CLAIMS 1, 20, 31, 67, 107 AND 108 ...................... 1
`A. PATENT OWNER RELIES ON IMPROPERLY NARROW INTERPRETATION OF
`“VERIFICATION DATA FOR VERIFYING THE LICENSE DATA” ................................ 1
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`B. CRONCE DISCLOSES “VERIFICATION DATA FOR VERIFYING THE LICENSE
`DATA” AS RECITED IN CLAIMS 1, 20, 31, 67, 107 AND 108 ....................................... 4
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`C. CRONCE DISCLOSES “WHEREIN THE LICENSING MEDIUM IS A RANDOM ACCESS
`MEMORY” AS RECITED IN CLAIM 20 .......................................................................... 9
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`D. REGARDING CLAIMS 107 AND 108, CRONCE DISCLOSES THAT “CODE FOR
`VERIFYING THE LICENSE DATA” TO PREVENT UNAUTHORIZED ACCESS TO
`ELECTRONIC DATA STORED ON AN ELECTRONIC DEVICE IS EXECUTABLE ON
`THE ELECTRONIC DEVICE ON WHICH THE ELECTRONIC DATA IS STORED .......... 9
`
`
`III. DELUCA ANTICIPATES CLAIMS 1, 20-22, 30, 31, 67, 107 AND 108 .......... 10
`A. PATENT OWNER RELIES ON AN IMPROPERLY NARROW INTERPRETATION OF
`“PROVIDING UPDATED LICENSE DATA” ............................................................... 10
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`B. DELUCA DISCLOSES “PROVIDING UPDATED LICENSE DATA” AS RECITED IN
`CLAIMS 1, 20, 31, 67, 107 AND 108 ........................................................................... 13
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`C. DELUCA DISCLOSES “WHEREIN THE LICENSING MEDIUM COMPRISES A
`MEMORY INSTALLED IN A CELLULAR TELEPHONE” AS RECITED IN CLAIMS 21
`AND 22 ........................................................................................................................ 15
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`
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`
`
`INTRODUCTION
`Rather than amending the Challenged Claims, Patent Owner (PO) is attempting to
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`IPR2013-00391
`U.S. Patent No. 6,857,067
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`I.
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`rely on improperly narrow interpretations of the claim language in order to distinguish
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`the prior art. As shown below, PO’s interpretations are inconsistent with the plain
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`language of the claims and the ‘067 Patent specification. As such, PO’s proposed
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`constructions are inconsistent with the broadest reasonable interpretation of the terms,
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`and the Challenged Claims are anticipated under the broadest reasonable interpretation.
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`II. CRONCE ANTICIPATES CLAIMS 1, 20, 31, 67, 107 AND 108
`A.
`Patent Owner Relies on Improperly Narrow Interpretation of
`“Verification Data for Verifying the License Data”
`While PO does not affirmatively offer claim constructions, PO is nevertheless
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`attempting to construe the claims terms “verification data for verifying the license data”
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`so narrowly that embodiments disclosed in the ‘067 Patent specification are excluded.
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`Specifically, PO contends that “verification data” cannot be an authorized identifier, and
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`that “[t]he electronic device may verify the validity of the licensing medium by comparing
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`a digest of the licensing data to the verification data, by comparing a digest of the
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`licensing data to the verification data, or comparing an encrypted digest of the licensing
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`data to an encrypted digest in the verification data.” Paper No. 22 at p. 3, p. 5; see also, Ex.
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`2002 at ¶¶ 13, 15. PO also contends that “verifying the license data” must “verify the
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`entirety of the license data, either directly or though the use of digests, to prevent a user
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`from tampering with the licensing data.” Paper No. 22 at p. 6; see also, Ex. 2002 at ¶ 13.
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`PO’s requirement to verify the entirety of the licensing data to prevent user tampering is
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`entirely absent from the claims. Collectively, PO’s construction of this phrase excludes
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`embodiments disclosed in the ‘067 Patent specification where the “verification data for
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`verifying the license data” is a list of authorized identifiers:
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`The electronic device may send registration information to the registration
`authority. The registration information may include a random identifier
`associated with the electronic data. The verification data stored in the
`registration authority database may include a
`list of authorized
`identifiers that allow access to the electronic data. The registration
`authority may provide updated license data to the licensing medium when the
`identifier sent with the registration information corresponds to one of the
`authorized identifiers.
`
`Ex. 1001 at 4:34-42 (emphases added); see also Verizon Servs. Corp. v. Vonage Holdings Corp.,
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`503 F.3d 1295, 1305 (Fed. Cir. 2007) (noting that courts “normally do not interpret claim
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`terms in a way that excludes disclosed examples in the specification”).
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`PO’s expert, Dr. Goodrich, attempted to distinguish this embodiment over the
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`claimed verification data by stating that the authorized identifier “may be something that
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`is included as part of the verification data but would not exclusively be the whole of
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`verification data.” Ex. 1013 at 32:11-14. Dr. Goodrich explained that additional
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`verification data is required, in his opinion, because the “verification data” must be able
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`to verify fully that the license data has not been tampered with. Id. at 27:3-13. This
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`interpretation contradicts both the specification and the claims that expressly include an
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`embodiment where “verification data” is a list of identifiers. For example, claim 13,
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`which ultimately depends from claim 1, recites, “wherein the verification data
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`comprises a list of authorized identifiers that allow access to the electronic data.” Ex.
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`1001 at Claim 13 (emphasis added); see also id. at 4:37-39. Thus, the embodiment in the
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`‘067 Patent where the verification data comprises a list of authorized identifiers is
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`necessarily within the scope of claim 1 since a dependent claim further limits the scope of
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`the claims from which it depends. See AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234,
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`1242 (Fed. Cir. 2003) (noting that “dependent claims are presumed to be of narrower
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`scope than the independent claims from which they depend” and finding that limitation
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`in dependent claim must necessarily be present in independent claim).
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`Contrary to Dr. Goodrich’s testimony, there is nothing in the claims or the
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`specification of the ‘067 Patent requiring the “verification data” to be anything more than
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`a list of authorized identifiers. In fact, Dr. Goodrich confirmed that the identifiers may
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`constitute verification data (Ex. 1013 at 31:7-10, “Q: So you would agree with me that the
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`verification data of claim 1 can include authorized identifiers? A: Yes.”) and, further, that
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`the identifiers are used to verify license data. Id. at 33:8-25 (“Q: . . . I’m simply asking,
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`would the authorized identifier be used for verifying license data? A: It’s possible that it
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`could be included in such a verification . . . .”). While Dr. Goodrich attempted to qualify
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`this admission on the grounds that license data must include other information, PO
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`cannot avoid the conclusion that authorized identifiers are “verification data” and that
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`they are used for “verifying the license data.”
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`3
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`B.
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`U.S. Patent No. 6,857,067
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`Cronce Discloses “Verification Data for Verifying the License Data”
`as Recited in Claims 1, 20, 31, 67, 107 and 108
`Cronce discloses
`two complementary verification processes
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`that each
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`
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`independently anticipates the authorized identifier embodiment of the ‘067 Patent. In one
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`process, the parties agree that Cronce discloses a verification process where an identifier
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`associated with the authorization information/dynamic key selector 171 is transmitted
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`from the information authority 185 through the host system 110 to the portable
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`authorization device 140. Ex. 1002 at 15:39-45; see also, Ex. 1013 at 20:17-23. The
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`identifier “uniquely identifies an item of protected information 115 authorized by the
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`dynamic key selector 171.” Ex. 1002 at 15:45-48; see also, Ex. 1013 at 20:24-21:5. The
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`portable authorization device 140 compares the
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`identifier associated with the
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`authorization information 171 to a fixed key ID 151, which is stored on the portable
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`authorization device 140. Ex. 1002 at 15:48-55; see also, Ex. 1013 at 21:6-22:7. The result
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`of this comparison determines “whether the item of protected information 115 identified
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`by the identification information is authorized for use with the portable authorization
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`device.” Ex. 1002 at 15:55-58; see also, Ex. 1013 at 22:8-15.
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`Despite this, PO relies on its flawed claim interpretations to argue that the above
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`disclosure of Cronce does not disclose “verifying the license data” because “[a] person of
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`ordinary skill in the art . . . would understand that ‘verification data for verifying the
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`license data’ is data that allows the license data itself to be independently verified. . . .
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`Cronce, however, fails to teach a registration authority having such verification data
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`4
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`for performing such an integrity check . . . .” Paper No. 22 at pp. 16-17 (citations
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`omitted). As discussed above, PO’s argument ignores the embodiment in the ‘067 Patent
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`and dependent claim 13 where “verification data” comprises a list of authorized
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`identifiers that are compared to identifiers stored on the portable licensing medium. The
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`disclosure of Cronce cited above is directly analogous to the “authorized identifier”
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`embodiment disclosed in the ‘067 Patent. In Cronce, the “verification data” is the
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`“identification information” associated with the authorization information/dynamic key
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`selector 171 (i.e., “authorized identifier”) stored on the information authority 185.
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`License data stored on the portable authorization device 140 is verified if the identifier
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`associated with the authorization information/dynamic key selector 171 corresponds to a
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`fixed key ID 151 (i.e., “identifier”). In other words, there is a comparison between two
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`pieces of information that, if successful, results in verified and updated license
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`information being transmitted to the portable authorization device.
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`
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`The complementary verification process found in Cronce is also initiated and
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`controlled by the access control program 117 resident on the host system 110. Ex. 1002
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`at 14:35-38, Fig. 9; see also, Ex. 1013 at 15:6-16:20. Here, the verification process is a
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`similar challenge and response transaction where the portable authorization device 140
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`generates and transmits a challenge message consisting of a large, randomly generated
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`number, to the information authority 185. Ex. 1002 at 15:17-25; see also, Ex. 1013 at
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`16:21-17:11. The information authority 185 generates and sends back a response message
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`that reflects a fixed secret key 152 that is stored in the information authority 185. Ex.
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`1002 at 15:25-28; see also, Ex. 1013 at 17:12-18:4. The portable authorization device 140
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`verifies that the response message is correct based on the fixed secret key 152, which is
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`also stored on the portable authorization device 140. Ex. 1002 at 15:29-35; see also, Ex.
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`1013 at 18:5-19:2. Only if a comparison of these two messages based on the fixed secret
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`key 152 is successful, will the information authority transmit the authorization
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`information to the portable device. Ex. 1002 at 16:15-18; Ex. 1013 at 18:9-19:2.
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`
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`In this embodiment, the “verification data” is the fixed secret key 152 stored in the
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`information authority. The fixed secret key 152 stored on the portable authorization
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`device is compared to the fixed secret key 152 stored in the information authority and,
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`assuming a successful comparison, the verified license data is transmitted to the portable
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`authorization device. This process is also directly analogous to the authorized identifier
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`embodiment of the ‘067 Patent. Thus, Cronce discloses two complementary processes
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`involving different pieces of “verification data,” but both of which are analogous to the
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`authorized identifier embodiment disclosed in the ‘067 Patent and that independently
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`anticipate the claims of the ‘067 Patent.
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`PO also argues that dynamic key selector/authorization information 171 (i.e.,
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`“license data”) is transmitted to the portable device only after a successful comparison
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`and that the dynamic key selector/authorization information 171 not itself verified in any
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`way. Paper No. 22 at pp. 19-20. However, this argument again relies on PO’s flawed
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`claim interpretation requiring “verifying the license data” to entail verifying the entirety of
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`the license data itself. Paper No. 22 at p. 6 (“[V]erifying the license data involves verifying
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`the entirety of the licensing data . . . .”). This reasoning also ignores the embodiment
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`described in the ‘067 Patent specification where verified license data is transmitted after a
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`successful correspondence between the authorized identifier stored on the registration
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`authority and the randomly generated identifier transmitted by the electronic device. Ex.
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`1001 at 4:34-42; see also, Ex. 1013 at 24:16-26:2. As stated above, according to the ‘067
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`Patent, it is sufficient if there is a correspondence between an identifier contained in the
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`registration authority and an identifier contained on the portable authorization device,
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`and that the transmitted license data is verified thereby.
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`Additionally, the ‘067 Patent broadly defines “license data” as data that is used to
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`determine whether or not to allow access to electronic data. See e.g., Ex. 1001 at 3:65-67;
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`see also Ex. 2002 at ¶12. In Cronce, the fixed key ID 151 is one piece of data stored on
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`the portable authorization device 140 used in the process illustrated in Figure 9 to
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`determine whether or not to allow access to an item of protected information 115. Ex.
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`1002 at 14:27-29 (“FIGS. 9 and 10 show the details of the process illustrated in FIG. 2
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`for selectively authorizing the host system 110 to use an item of protected information
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`115.”); Fig. 9. In other words, the fixed key ID 151 is “license data” since it is used (in
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`addition to other data) to “selectively authoriz[e] the host system 110 to use an item of
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`protected information 115.” Moreover, the comparison between the identification
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`information in Cronce and the fixed key ID 151 determines whether an item of protected
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`information is authorized for use. Ex. 1002 at 15:50-55. This is similar to the
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`embodiment of the ‘067 Patent because the fixed key ID 151 stored on the portable
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`authorization device is compared for correspondence using another identifier stored on
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`the information authority 185 before additional license data is provided to the portable
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`authorization device. Id. at 15:55-58. Thus, Cronce is within the broadest reasonable
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`interpretation of the claims even under POs flawed interpretation.
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`Finally, PO relies on misleading citations from the deposition transcript of
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`Petitioners’ expert, Dr. Tygar, in order to suggest that Dr. Tygar supports PO’s
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`arguments with regard to Cronce’s disclosure of “verifying the license data.” However,
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`PO fails to mention that Dr. Tygar repeatedly stated that he was not asked to and did not
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`provide an opinion on the disclosure of Cronce with regard to this limitation. Ex. 2003 at
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`30:11-20; 31:20-24; 32:1-4; 39:6-23; 47:1-15; 52:13-54:15; 64:4-65:4; 68:5-24; 70:18-72:14.1
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`Similarly, Dr. Tygar’s declaration notes that he only offered an opinion with regard to
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`Cronce’s disclosure of the “providing updated license data” limitation because that is the
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`limitation for which he was considering an obviousness combination. Ex. 1008 at ¶¶ 24-
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`25. Thus, PO’s misleading citations should be given no weight.
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`1 For this same reason, counsel for Petitioners repeatedly objected to this line of questioning
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`as being outside the scope of Dr. Tygar’s direct testimony. Petitioners reserve the right to
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`exclude this line of questioning.
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`8
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`C.
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`U.S. Patent No. 6,857,067
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`Cronce Discloses “Wherein the Licensing Medium is a Random
`Access Memory” as Recited in Claim 20
`PO again takes a limited and conclusory approach in interpreting claim 20,
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`specifically requiring that the licensing medium be only RAM. However, the use of the
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`term “is” in claim 20 is not exclusionary. See Entegris, Inc. v. Pall Corp., 2008 WL 886034, at
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`*5 (D. Mass. Mar. 31, 2008) (“The use of the word ‘is’ does not necessarily convey
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`exclusivity.”). Instead, the broadest reasonable interpretation of claim 20 requires that the
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`licensing medium must be RAM but that it may also be other components, such as ROM
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`and EEPROM. Under this broadest reasonable construction, Cronce clearly anticipates
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`because it discloses a portable authorization device that is RAM, ROM and EEPROM.
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`Ex. 1002 at 8:46-60, Fig. 3 (item 143). Therefore, claim 20 is unpatentable.
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`D. Regarding Claims 107 and 108, Cronce discloses that “Code for
`Verifying the License Data” to Prevent Unauthorized Access to
`Electronic Data Stored on an Electronic Device is Executable on the
`Electronic Device on which the Electronic Data is Stored
`PO offers no formal claim constructions with regard to claims 107 and 108, but
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`inappropriately narrows claims 107 and 108. First, PO’s arguments are premised on the
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`assumptions that the preambles of claims 107 and 108 are limiting. Paper No. 22 at p. 22.
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`PO does not offer any explanation as to why the preambles of these claims are limiting,
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`but PO nevertheless uses these assumptions to allege that the verification of license data
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`(e.g., a comparison) must be performed entirely by code on the electronic device. Paper
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`No. 22 at pp. 22-24; see also Ex. 1013 at 45:8-11; Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d
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`1354, 1358 (Fed. Cir. 2010) (“[G]enerally . . . the preamble does not limit the claims.”).
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`Even assuming the preambles of claims 107 and 108 do limit their scope, the plain
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`language of the claim limitation requires “code for verifying the license data stored on the
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`licensing medium by communicating with a registration authority having
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`verification data.” Thus, the claim limitation itself requires the electronic device to have
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`code for communicating with a registration authority. There is no requirement in the
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`claims for the electronic device itself to have code for performing every step of the
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`comparison (i.e., verification). It is sufficient to participate in verifying the license data
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`“by communicating with a registration authority.” Cronce discloses that the access
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`control program 117, which is executable on the host system 110 (i.e., electronic device),
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`communicates with the information authority 185, satisfying this limitation. Further,
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`even if POs position is assumed correct, the “access control program 117” on the
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`electronic device in Cronce both “initiates and controls” the verification process depicted
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`in Figure 9 and discussed above. Ex. 1002 at 14:27-15:60, 18:27-30; see also, Ex. 1013 at
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`15:6-16:20, 41:21-42:9. Thus, even under PO’s narrow interpretation, Cronce anticipates
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`by having code on the electronic device that controls the entire verification process.
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`III. DELUCA ANTICIPATES CLAIMS 1, 20-22, 30, 31, 67, 107 AND 108
`A.
`Patent Owner Relies on an Improperly Narrow Interpretation of
`“Providing Updated License Data”
`Both parties agree that Deluca discloses both creating new and deleting old
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`authorization records (i.e., license data). Petitioners note that Deluca also discloses a
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`process for removing an outdated authorization record and replacing it with a current
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`record, as discussed below. However, creating new or deleting old authorization
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`records satisfy the broadest reasonable interpretation of “providing updated license
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`data.” To avoid Deluca’s teachings, PO relies on an improperly narrow interpretation
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`to contend that “updated license data” should be construed as “a defined group of
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`data bits that must be generated or stored by the registration authority so that those
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`data bits may then be provided to the licensing medium. . . .” Paper No. 22 at p. 26
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`(citations omitted). PO further submits that “a ‘deletion command’ does not meet the
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`definition of “provid[ing] updated license data,” and that the ‘067 Patent teaches that
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`old license data must not be deleted so that a licensing history can be maintained. Id.
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`at p. 27, pp. 28-29. However, this “construction” is not supported by and is directly
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`contrary to the specification. The ‘067 Patent discloses deleting the license data as one
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`way of updating the license data:
`
`The registration authority sends new smart card data to the user reflecting the
`removal of the software license. Rather than deleting the entry on the
`smart card, the registration authority may change the software license
`expiration date to a date in the past.
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`Ex. 1001 at 11:29-33 (emphases added). In the first sentence, removal (or deletion) is
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`expressly contemplated as one form of update. The second sentence provides an
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`alternative to deletion, and it is an alternative that is expressly permissive. A
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`permissive alternative does not teach away from the option of removing license data
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`as PO suggests. Dr. Tygar agrees that a person having ordinary skill in the art would
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`11
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`not have thought that that the ‘067 Patent teaches away from deleting license data as
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`alleged by PO and PO’s expert. Ex. 1015 at ¶ 5. The ‘067 Patent specification and
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`claims do not suggest that deleting an expired license would not constitute an update.
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`Although PO repeatedly advocates the importance of maintaining a licensing history,
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`none of the Challenged Claims mention a license history or in any way require such to
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`be maintained. See, e.g., Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 904, 906 (Fed.
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`Cir. 2004) (noting that “it is improper to read a limitation from the specification into
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`the claims . . . unless the patentee has demonstrated a clear intention to limit the claim
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`scope using words or expression of manifest exclusion or restriction”).
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`PO further attempts to limit the phrase “provides updated license data” to
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`mean: “modify existing data with new data in such a way that the existing data is
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`brought up to date or made more current.” Paper No. 22 at p. 27. However, deleting
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`and creating license records does modify existing license data on the licensing medium
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`with new data in order to bring the licensing data more up to date, such as by
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`removing a licensing record that is no longer current. Ex. 1015 at ¶ 6. Similarly,
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`creating a license record where none previously existed also brings the entry more up
`
`to date. A person having ordinary skill in the art at the time of the ‘067 Patent would
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`have recognized that adding and deleting licensing records on the licensing medium
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`would make the licensing data more current. Ex. 1015 at ¶ 7. Since the Applicant did
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`not act as his own lexicographer to redefine “updating” to exclude inserting new and
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`deleting old license data, PO’s construction does not comport with the broadest
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`reasonable interpretation.
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`Further indicative of the commonly understood meaning of “updating” is PO’s
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`expert’s own use of that concept in U.S. Patent No. 7,257,711 (“Goodrich Patent”).
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`The Goodrich Patent was cited in Dr. Goodrich’s declaration, and he admitted it is
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`relevant to the ‘067 Patent. Ex. 2002 at ¶ 5. The Goodrich Patent explains that a list
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`of elements is brought up to date by performing “insertion updates” and “deletion
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`updates.” Ex. 1014, Goodrich Patent at 12:44-46 (“FIG. 9 shows the logic of the
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`update algorithm executed by the source computer. We describe an insertion
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`update. A deletion update is performed in a similar matter.” (emphases added)); see
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`also claim 2, claim 3. Thus, skilled computer scientists, even those engaged by PO,
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`view the plain and ordinary meaning of “updating” to include adding new and
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`deleting old elements. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed.
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`Cir. 1996) (noting that references may be “indicative of what all those skilled in the art
`
`generally believe a certain term means . . . [and] can often help to demonstrate how a
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`disputed term is used by those skilled in the art”).
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`B. Deluca Discloses “Providing Updated License Data” as Recited in
`Claims 1, 20, 31, 67, 107 and 108
`As noted above, both parties agree that Deluca discloses inserting and deleting
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`authorization records (i.e., “license data”) to make the authorization records on the
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`portable communication device more current, and for reasons cited above, this
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`disclosure anticipates the broadest reasonable interpretation of the claim. Paper No.
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`22 at p. 13; see also, Paper No. 11 at pp. 38-40; Ex. 1013 at 58:24-59:2.
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`However, even under PO’s inappropriately narrow construction, Deluca
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`discloses “providing updated license data.” The process depicted in Figure 7 of
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`Deluca discloses updating an authorization record stored on
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`the portable
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`communication device by replacing an expired authorization record with an
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`authorization record having a new expiration time directed to the same software. Ex.
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`1015 at ¶¶ 7, 8. When the user requests execution of software, the portable
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`communication device checks for the presence of an internal authorization record
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`and, if a record exists, determines whether the record is valid. Ex. 1004 at 15:5-9,
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`15:12-15, 15:66-16:5, 10:2-9, Fig. 7 (steps 604, 612, 636). The determination of
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`whether a record is valid includes multiple checks, including whether an expiration
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`time has expired. Ex. 1004 at 10:2-29. If the record is valid, then the software is
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`executed. Ex. 1004 at 16:3-5, Fig. 7 (step 638). If the record is found to be invalid, the
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`software is denied execution and the internal authorization record is subsequently
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`deleted. Ex. 1004 at 16:9-13, 6:53-58, Fig. 7 (steps 640, 642); Ex. 1013 at 58:24-59:4,
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`65:8-66:2. An alert is provided and the user may again request execution. Ex. 1004 at
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`16:9-13. Because the expired authorization record has been deleted, this time an
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`external authorization request message is sent to the base station. Ex. 1004 at 16:19-
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`27, Fig. 7 (step 614). If a response message is received indicating that the software
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`IPR2013-00391
`U.S. Patent No. 6,857,067
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`remains authorized, an internal authorization record is created that includes the
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`software name and expiration time, and the software is executed. Ex. 1004 at 16:42-
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`65, Fig. 7 (steps 622, 624, 626). Thus, the authorization record (i.e., license data) for
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`an expired piece of software existing on the portable communication device is
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`updated to indicate that the software is again authorized for use.
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`C. Deluca Discloses “Wherein the Licensing Medium Comprises a
`Memory Installed in a Cellular Telephone” as Recited in Claims 21
`and 22
`PO contends that claims 21 and 22 require a cellular telephone that has a
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`microphone and allows for two-way voice communications. Paper No. 22 at 32-33.
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`Neither the specification nor the claims mention voice communications in any way.
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`Even if PO is correct that claims 21 and 22 require two-way voice communication
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`through a cellular
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`telephone having a microphone and
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`two-way voice
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`communications, Deluca discloses the same. First, Deluca discusses voice paging and
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`notes that technological improvements in communication protocols that provide two-
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`way communication have significantly increased. Ex. 1004 at 1:18-22. Deluca further
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`expressly discloses the use of the ALOHA protocol in connection with its portable
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`communication device. Ex. 1004 at 13:52-55, 14:2-5; Ex. 1015 at ¶ 10. It was known
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`at the time of Deluca that the ALOHA protocol could be utilized in two-way voice
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`cellular communications. Ex. 1015 at ¶ 10. Deluca, therefore, contemplates the use of
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`two-way voice portable communications devices.
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`Date: May 14, 2014
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`Respectfully submitted,
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`ERISE IP, P.A.
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`BY: /Eric A. Buresh
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`Eric A. Buresh, Reg. No. 50,394
`Mark C. Lang, Reg. No. 55,356
`6201 College Blvd., Suite 300
`Overland Park, KS 66211
`P: (913) 777-5600
`F: (913) 777-5601
`eric.buresh@eriseip.com
`mark.lang@eriseip.com
`
`ATTORNEYS FOR PETITIONERS
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`IPR2013-00391
`U.S. Patent No. 6,857,067
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`IPR2013-00391
`U.S. Patent No. 6,857,067
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`UPDATED EXHIBIT LIST
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`Previously Filed
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`Exhibit 1001 U.S. Patent No. 6,857,067 to Edelman
`Exhibit 1002 U.S. Patent No. 7,032,240 to Cronce et al.
`Exhibit 1003 U.S. Patent No. 5,910,987 to Ginter et al.
`Exhibit 1004 U.S. Patent No. 6,008,737 to DeLuca, et al.
`Exhibit 1005 U.S. Patent No. 7,036,011 to Grimes et al.
`Plaintiffs’ Disclosures Pursuant to Patent Rules 3-1 and 3-2
`Exhibit 1006
`Exhibit 1007 U.S. Patent No. 6,857,067 File History
`Exhibit 1008 Expert Declaration of Dr. Justin Douglas Tygar
`Exhibit 1009 Curriculum Vitae of Dr. Justin Douglas Tygar
`Bill Rosenblatt, Bill Trippe, and Stephen Mooney, Digital Rights
`Exhibit 1010
`Management Business and Technology, M&T Books (2002)
`Exhibit 1011 Mark Stefik, “Letting Loose the Light: Igniting Commerce in Electronic
`Publication” published in Internet Dreams: Archetypes, Myths, and Metaphors,
`MIT Press (1996)
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`Currently Filed
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`Exhibit 1012 Deposition Notice of Michael T. Goodrich
`Exhibit 1013 Michael Goodrich Deposition Transcript
`Exhibit 1014 U.S. Patent No. 7,257,711 to Goodrich et al.
`Exhibit 1015 Declaration of Dr. Justin Douglas Tygar
`Exhibit 1016 Michele Zorzi and Silvano Pupolin, Slotted ALOHA for High-Capacity
`Voice Cellular Communications, IEEE Trans. On Vehicular Technology,
`vol. 43, no. 4 (Nov. 1994) (“Zorzi”).
`Exhibit 1017 U.S. Patent No. 5,612,682 to Deluca, et al. filed on May 30, 1995, and
`issued on March 18, 1997 (“Deluca Parent”)
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`IPR2013-00391
`U.S. Patent No. 6,857,067
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`CERTIFICATE OF SERVICE ON PATENT OWNER
`UNDER 37 C.F.R. § 42.105(a)
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(b), the undersigned certifies that
`on May 14, 2014, a complete and entire copy of Petitioners’ Reply was served by
`electronic mail to Counsel for Patent Owner at the e-mail addresses identified below:
`
`Gregory S. Cordrey
`Jeffer Mangels Butler & Mitchell LLP
`3 Park Plaza, Suite 1100
`Irvine, CA 92614
`gxc@jmbm.com
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`Sean D. Burdick
`Uniloc USA, Inc.
`Legacy Town Center
`7160 N. Dallas Parkway, Suite 380
`Plano, Texas 75024
`sean.burdick@uniloc.com
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`Respectfully submitted,
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`BY:
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`ERISE IP, P.A.
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` /Eric A. Buresh/
`Eric A. Buresh, Reg. No. 50,394
`Mark C. Lang, Reg. No. 55,356
`6201 College Blvd., Suite 300
`Overland Park, KS 66211
`P: (913) 777-5600
`F: (913) 777-5601
`eric.buresh@eriseip.com
`mark.lang@eriseip.com
`
`ATTORNEYS FOR PETITIONERS
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