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`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, LTD. 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’ RESPONSE TO
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`PATENT OWNER’S MOTION FOR OBSERVATIONS ON THE
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`TESTIMONY OF DR. JUSTIN DOUGLAS TYGAR
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`INTRODUCTION
`In accordance with the Scheduling Order (Paper No. 16), as modified by Paper 26,
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`IPR2013-00391
`U.S. Patent No. 6,857,067
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`I.
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`Petitioners present the following response to the Motion for Observations on the
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`testimony of Dr. Justin Douglas Tygar submitted by Patent Owner on June 11, 2014.
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`Paper 29.
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`Below, Petitioners request that the Board refuse to enter certain Observations
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`made by Patent Owner as improper under the Patent Trial Practice Guide.
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`Specifically, Petitioners request that the Board refuse to enter the Observations in
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`Section I as improper because they do not relate to Petitioners’ reply declarant.
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`Second, Petitioners ask the Board to refuse to enter the Observations made in Section
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`II.B.1. as argumentative and as an improper attempt to characterize the prior art that
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`amounts to an improper surreply (in addition to being overly-lengthy).
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`II.
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`PATENT OWNER’S OBSERVATIONS IN SECTION I. RELATING
`TO THE MARCH 6, 2014 TESTIMONY ARE IMPROPER AND
`SHOULD NOT BE ENTERED BY THE BOARD
`In its May 29, 2014 Order, the Board authorized Patent Owner to file a motion
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`for observation on the “cross-examination of Petitioner’s reply declarant.” Paper 26 at
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`4. Patent Owner has exceeded the scope of this authorization. Specifically, Sections I.A.
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`and I.B. of Patent Owner’s Observations are directed to the cross-examination that
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`occurred on March 6, 2014 of Petitioners’ petition declarant. As the Board is aware,
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`observations are contemplated “[i]n the event that cross-examination occurs after a party
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`1
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`IPR2013-00391
`U.S. Patent No. 6,857,067
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`has filed its last substantive paper on an issue” and are “not an opportunity to raise new
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`issues, re-argue issues, or pursue objections.” 77 Fed. Reg. 48756, 48767-68, Office Patent
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`Trial Practice Guide, §II. L “Observations on Cross-Examination.” Patent Owner had its
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`opportunity to address Dr. Tygar’s original testimony in its Response and, in fact, did.
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`See Paper 22. As such, Patent Owner’s “observations” of Dr. Tygar’s March 6, 2014
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`testimony in Section I are improper and should not be entered.
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`III. RESPONSE TO PATENT OWNER OBSERVATIONS IN SECTION II
`A.
`Responses to Observations in Section II. A.
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`1.
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`Response to Observation II. A.1.
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`Petitioners respond that Dr. Tygar testified on more than one occasion that
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`Deluca discloses: “two-way communication protocols that are used with the portable
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`communication device, which in my opinion would include cellular telephones.” Ex.
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`2005, Tygar Dep. Tr. at 37:17-20, 38:6-9, 47:24-48:2. This testimony is relevant to
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`Petitioners position that Deluca discloses a cellular telephone.
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`2.
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`Response to Observation II. A.2.
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`Petitioners respond that Dr. Tygar testified: “ I do not see any requirement that
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`[Deluca’s] portable communication device is limited to a paging device, although such an
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`embodiment
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`is discussed.
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` In fact, Deluca expressly contemplates
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`two-way
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`communication protocols that are used with the portable communication device, which
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`in my opinion would include cellular telephones.” Ex. 2005, Tygar Dep. Tr. at 37:14-20.
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`2
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`IPR2013-00391
`U.S. Patent No. 6,857,067
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`This testimony is relevant to Patent Owner’s Observation that Deluca only discloses
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`pagers and does not mention cellular telephones. Paper 29 at 3.
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`3.
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`Response to Observation II. A.3.
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`Petitioners respond that Dr. Tygar testified: “I knew that the Aloha protocol was
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`used in cellular phone communications. My memory is that it was used as far back as the
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`late 1980s, when the GSM standard was being developed.” Ex. 2005, Tygar Dep. Tr. at
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`47:24-48:2, 50:10-12. This is relevant to Patent Owner’s Observation that Deluca’s
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`reference to the Aloha protocol doesn’t teach a cellular telephone as the two-way
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`portable communication device. Paper 29 at 3-4.
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`4.
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`Response to Observation II. A.4.
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`Petitioners respond that Dr. Tygar testified: “I knew that the Aloha protocol was
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`used in cellular phone communications. My memory is that it was used as far back as the
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`late 1980s, when the GSM standard was being developed.” Ex. 2005, Tygar Dep. Tr. at
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`47:24-48:2, 50:10-12. This is relevant to Patent Owner’s Observation that Deluca’s
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`reference to the Aloha protocol doesn’t teach a cellular telephone as the two-way
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`portable communication device. Paper 29 at 3-4.
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`5.
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`Response to Observation II. A.5.
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`Petitioners respond that Dr. Tygar indeed did not opine on whether Deluca
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`discloses a licensing medium comprising a memory installed in a cellular telephone.
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`Rather, Dr. Tygar opined and testified that Deluca discloses: “two-way communication
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`3
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`IPR2013-00391
`U.S. Patent No. 6,857,067
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`protocols that are used with the portable communication device, which in my opinion
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`would include cellular telephones.” Ex. 2005, Tygar Dep. Tr. at 37:17-20, 38:6-9, 47:24-
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`48:2. This testimony is relevant because it supports Petitioners’ position that Deluca
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`discloses a two-way portable communication device that is a cellular telephone.
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`B. Response to Observations in Section II.B
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`1.
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`Response to Observation II. B.1.
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`Patent Owner’s Observation is improper for multiple reasons. It is not a concise
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`statement (over two pages) and is argumentative. Patent Owner’s Observation includes
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`five bullet points, all of which include improper characterization and argument as to what
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`Deluca purportedly does or does not teach. Paper 29 at 5-6. The bullet points refer only
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`tangentially to the testimony of Dr. Tygar, if at all. Taken together, Patent Owner is
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`improperly manipulating this Observation to characterize the prior art, which amounts to
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`an improper surreply to Petitioners’ Reply. As such, this Observation is improper and
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`should not be entered or considered by the Board. 77 Fed. Reg. 48756, 48768, Office
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`Patent Trial Practice Guide, §II. L “Observations on Cross-Examination.” (“The Board
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`may refuse entry of excessively long or argumentative observations[.]”).
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`Petitioners will not respond to Patent Owner’s mischaracterization of Deluca
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`contained in the five bullet points because to do so would also result in improper
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`argument. Rather, Petitioners properly point the Board to the testimony in which Dr.
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`Tygar testified with resepect to Deluca: “Q: Is it your opinion that the check that occurs
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`4
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`IPR2013-00391
`U.S. Patent No. 6,857,067
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`at Box 636 includes a check of the expiration time? … THE WITNESS: It can.” Ex.
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`2005, Tygar Dep. Tr. at 89:4-7. Dr. Tygar further testified that this check occurs
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`“whenever a process execution is requested by the user.” See id. at at 89:11-18; see also id.
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`at 89:9-90:23, 94:2-95:14. This testimony is relevant because it contradicts Patent
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`Owner’s position that Deluca does not include such a check.
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`2.
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`Response to Observation II. B.2.
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`Petitioners respond that Patent Owner fails to identify why this testimony is
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`relevant and, therefore, the Board should not enter this observation. To the extent that
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`the Board considers Patent Owner’s citation to the testimony, Petitioners respond that
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`Dr. Tygar testified: “I explicitly discuss the case in which when the expiration time passed
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`or the authorization has been found not to be valid, there then is a request sent on the
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`subsequent request for the execution of a process to a transmitter, which then causes the
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`updated authorization, external authorization request to be stored in the internal
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`authorization record, overriding [sic], and thus deleting, the internal record.” Ex. 2005,
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`Tygar Dep. Tr. at 104:13-21. This testimony is relevant because it contradicts Patent
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`Owner’s position that Deluca does not disclose deleting an internal authorization record
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`in response to an expired expiration time.
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`3.
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`Response to Observation II. B.3.
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`Petitioners respond that Patent Owner fails to identify why this testimony is
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`relevant and, therefore, the Board should not enter this observation. Further, to the
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`5
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`IPR2013-00391
`U.S. Patent No. 6,857,067
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`extent that the Board considers Patent Owner’s Observation, Petitioners respond that
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`Dr. Tygar testified in part: “Whenever a process execution is requested by the user, the
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`expiration time 390 is compared to the real time clock 399 to determine if authorization
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`of the hardware or software process has expired. … The entire process described here in
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`Figure 7 relates to a user requesting execution of a process, and we now have an explicit
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`statement by the inventor that whenever a process execution is requested by the user. I
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`don’t see how Deluca could possible have been more explicitly in making this passage
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`directly relevant to Fig. 7. It’s clear on its face.” Ex. 2005, Tygar Dep. Tr. at 89:11-90:23.
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`This testimony is relevant because it contradicts Patent Owner’s Observation that Dr.
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`Tygar testified that a check of the expiration time is optional.
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`4.
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`Response to Observation II. B.4.
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`Petitioners respond that Dr. Tygar testified that: “I explicitly discuss the case in
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`which when the expiration time passed or the authorization has been found not to be
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`valid, there then is a request sent on the subsequent request for the execution of a
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`process to a transmitter, which then causes the updated authorization, external
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`authorization request to be stored in the internal authorization record, overriding [sic],
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`and thus deleting, the internal record.” Ex. 2005, Tygar Dep. Tr. at 104:13-21. Dr. Tygar
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`also testified that: “Deletion is discussed in other portions of the – of the specification.
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`As I’ve explained several times, you need to read the Deluca patent in total to understand
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`it, because Deluca talks about things functionally. It doesn’t lay things out as linearly as
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`6
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`IPR2013-00391
`U.S. Patent No. 6,857,067
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`you could.” Ex. 2005, Tygar Dep. Tr. at 106:11-16. This testimony is relevant because it
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`contradicts Patent Owner’s position that Deluca does not teach deleting invalid internal
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`authorization records.
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`Date: June 18, 2014
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`Respectfully submitted,
`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
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`ATTORNEYS FOR PETITIONERS
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`7
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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 June 18, 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:
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`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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`BY:
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`Respectfully submitted,
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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
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`ATTORNEYS FOR PETITIONERS
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