UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`UNIFIED PATENTS INC.,
`Petitioner
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
`
`
`
`
`
`
`
`
`IPR2017-00184
`PATENT 7,069,293
`
`
`
`
`
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`UNIFIED PATENTS INC.,
`Petitioner
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
`
`
`
`
`
`
`
`
`IPR2017-00184
`PATENT 7,069,293
`
`
`
`
`
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
`
`
`
`
`
`
`
`
`I.
`II.
`
`
`
`
`
`
`
`1.
`2.
`
`INTRODUCTION
`BACKGROUND OF THE '293 PATENT
`Prosecution History of the '293 Patent
`
`Overview of the '293 Patent
`
`III. THE PETITION PRESENTS REDUNDANT AND CUMULATIVE
`GROUNDS AND RELIES ON AT LEAST ONE REFERENCE THAT
`DOES NOT QUALIFY AS PRIOR ART
` Grounds Asserted in the Petition
`The ITSO Handbook Does Not Qualify as Prior Art and is
`
`5
`Cumulative
`Petitioner Does Not Justify its Horizontal and Vertical Redundancy 8
`1.
`IBM’s ITSO Handbook is Vertically Redundant with Collins 9
`2.
`Grounds 1 and 2 of the Petition are Horizontally Redundant 12
`3.
`Hesse is Vertically Redundant with Gupta
`13
`IV. THE PETITION FAILS TO ESTABLISH A REASONABLE
`LIKLIHOOD THAT AT LEAST ONE OF THE CHALLENGED
`CLAIMS IS UNPATENTABLE
`Claim Construction
`
`1.
`“registration operations”
`2.
`“a target on-demand server”
`3.
`“source directory” and “target directory”
`4.
`“import data file”
`5.
`“means for …” terms
`Overview of Collins (Ex. 1003)
`Ground 1: Independent Claims 1, 12, and 17 are Not Obvious Over
`24
`the Proposed Collins-Handbook Combination
`25
`Overview of Applicable Law
`No prima facie case for “distribution of application programs to
`a target on-demand server”
`26
`
`IPR2017-00184
`U.S. Patent 7,069,293
`
`Tables of Contents
`
`1
`2
`2
`2
`
`5
`5
`
`14
`15
`16
`18
`21
`22
`22
`23
`
`ii
`
`
`
`IPR2017-00184
`U.S. Patent 7,069,293
`No prima facie case for “preparing a file packet associated with
`the application program and including a segment configured to
`initiate registration operations for the application program at the
`target on-demand server”
`31
`No prima facie case for a “target directory” and a “source
`34
`directory”
`No prima facie case for “distributing the file packet to the target
`on-demand server to make the application program available for
`use by a user at a client”
`35
`The Dependent Claims Challenged in Ground 1 are not
`Obvious
` Ground 2: Independent Claims 1, 12, and 17 are Not Obvious Over
`the Redundantly Proposed Gupta-Hesse Combination
`No prima facie case for “specifying a source directory and a
`target directory for distribution of the application program” and
`“distributing the file packet to the target on-demand server to
`make the application program available for use by a user at a
`37
`client”
`No prima facie case for “preparing a file packet associated with
`the application program and including a segment configured to
`initiate registration operations for the application program at the
`target on-demand server”
`43
`The Dependent Claims Challenged in Ground 2 are not
`Obvious
`CONCLUSION
`
`3.
`
`4.
`
`5.
`
`6.
`
`1.
`
`2.
`
`3.
`
`36
`
`36
`
`46
`46
`
`
`
`
`
`iii
`
`V.
`
`
`
`
`
`
`
`
`
`IPR2017-00184
`U.S. Patent 7,069,293
`Table of Exhibits for Patent Owner Preliminary Response to Petition
`
`Exhibit
`Ex. 2001
`
`Ex. 2002
`Ex. 2003
`
`Ex. 2004
`
`Ex. 2005
`
`Ex. 2006
`
`Description
`Vervante website selling IBM ITSO’s WorkSpace On-Demand
`Handbook, published December 17, 1997
`U.S. Copyright Office website “Publication”
`IBM Actual Publication Dates - Latest Redbooks (published
`January 8, 1997 through March 20, 2000)
`IBM Redbooks Webpages for:
` NetFinity V5.0 Database Support
` AS/400 TCP/IP Autoconfiguration: DNS and DHCP Support
` Business Intelligence Certification Guide
` Migrating IBM Netfinity Servers to Microsoft Windows 2000
` Lotus Domino for S/390 Release 5: Problem Determination
`Guide
`Copyright Registration Records for:
` NetFinity V5.0 Database Support
` AS/400 TCP/IP Autoconfiguration: DNS and DHCP Support
` Business Intelligence Certification Guide
` Migrating IBM Netfinity Servers to Microsoft Windows 2000
` Lotus Domino for S/390 Release 5: Problem Determination
`Guide
`Excerpt of first four pages of:
` NetFinity V5.0 Database Support
` AS/400 TCP/IP Autoconfiguration: DNS and DHCP Support
` Business Intelligence Certification Guide
` Migrating IBM Netfinity Servers to Microsoft Windows 2000
` Lotus Domino for S/390 Release 5: Problem Determination
`Guide
`
`iv
`
`
`
`IPR2017-00184
`U.S. Patent 7,069,293
`
`I.
`
`INTRODUCTION
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107(a), Uniloc Luxembourg
`
`S.A. (“Patent Owner”) submits this Preliminary Response to the Petition for Inter
`
`Partes Review (“the Petition”) of U.S. Patent No. 7,069,293 (“the '293 Patent”) filed
`
`by Unified Patents, Inc. (“Petitioner”).
`
`The Board should deny the Petition in its entirety because of procedural and
`
`substantive defects. First, the Petition has several instances of both horizontal and
`
`vertical redundancy. Second, the Petition commits three-part error in relying on a
`
`secondary reference that (1) has a publication date within the one-year grace period
`
`and therefore is not qualified as prior art under pre-AIA 35 U.S.C. § 102(b); (2) is
`
`offered as a horizontally redundant reference with respect to the primary reference;
`
`and (3) was considered by the Examiner during prosecution and is cumulative under
`
`35 U.S.C. § 325(d). Third, the Petition relies on faulty claim constructions that
`
`Petitioner fails to even apply. Finally, due in part to the faulty claim constructions,
`
`the Petition fails to “specify where each element of the claim is found in the prior art
`
`patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4).
`
`In view of the reasons presented herein, the Petition should be denied in its
`
`entirety as failing to meet the threshold burden of proving there is a reasonable
`
`likelihood that at least one challenged claim is unpatentable.1
`
`
`1 Should the Board institute proceedings in this matter, Patent Owner does not
`
`1
`
`
`
`IPR2017-00184
`U.S. Patent 7,069,293
`
`II. BACKGROUND OF THE '293 PATENT
`
`Prosecution History of the '293 Patent
`
`The '293 Patent is titled “Methods, Systems and Computer Program Products
`
`for Distribution of Application Programs to a Target Station on a Network.” Ex.
`
`1001 at [54], [22]. The '293 Patent issued from U.S. Patent Application No.
`
`09/870,608, which is a divisional of U.S. Patent Application No. 09/211,528 (now
`
`U.S. Patent No. 6,510,466). Ex. 1001 at [62]. Thus, the effective filing date for the
`
`'293 Patent is December 14, 1998, which is the filing date of its parent application.
`
`Ex. 2007 at [22]. The '293 Patent issued on June 27, 2006 and was originally
`
`assigned to the International Business Machines Corporation (“IBM”). Ex. 1001 at
`
`[45], [73].
`
` Overview of the '293 Patent
`
`The '293 Patent recognizes that in certain heterogenous networks “[t]he
`
`combinations of network connections, differing hardware, native applications and
`
`network applications makes portability of preferences or operating environment
`
`characteristics which provide consistency from workstation to workstation
`
`difficult.” Ex. 1001 2:22-26. The '293 Patent further observes that “[e]fforts to
`
`address mobility of users in a network” are encumbered with various technical
`
`
`concede the legitimacy of any arguments in the Petition that are not specifically
`addressed herein. Patent Owner expressly reserves the right to rebut any such
`arguments in its Patent Owner Response.
`
`2
`
`
`
`IPR2017-00184
`U.S. Patent 7,069,293
`limitations. Id. at 2:39-54. For example, the '293 Patent expressly disparages those
`
`systems that “require pre-installation of software at the workstation to support their
`
`services” and identifies specific examples within both “Novell’s Z.E.N. and IBM’S
`
`Workspace On Demand.” Id.
`
`The '293 Patent addressed those technological problems (among others), in
`
`part, by enabling “development and deployment of managed applications which are
`
`deployed to servers rather than to individual clients” and by making those managed
`
`applications accessible “on-demand to users independent of the [client] device used
`
`to access the server.” Id. at 16:63-66 and 4:10-12; see also 5:62-67 (“Accordingly,
`
`the present invention provides for management of application programs in a network
`
`environment from a central location while allowing for user preferences to be
`
`maintained independent of hardware location of the user along with centralized
`
`distribution of new and/or updated application programs.”).
`
`Claims 1, 12, and 17 are the independent claims of the '293 Patent. For the
`
`convenience of the Board, Claim 1 is reproduced below:
`
`A method for distribution of application programs
`1.
`to a target on-demand server on a network comprising the
`following executed on a centralized network management
`server coupled to the network:
`providing an application program to be distributed
`to the network management server;
`specifying a source directory and a target directory
`for distribution of the application program;
`the
`preparing a file packet associated with
`application program and including a segment configured
`
`3
`
`
`
`IPR2017-00184
`U.S. Patent 7,069,293
`to initiate registration operations for the application
`program at the target on-demand server; and
`distributing the file packet to the target on-demand
`server to make the application program available for use
`by a user at a client.
`While the independent claims recite analogous limitations and largely use the
`
`same claim language, there are significant enough differences to preclude the
`
`argument that Claim 1 is perfectly representative of all claims. Nevertheless, Patent
`
`Owner has endeavored to show how Petitioner has not met its threshold burden with
`
`respect to claim language that appears in all the challenged claims.
`
`Figure 1 (reproduced below) of the '293 Patent illustrates certain features
`
`recited in the independent claims.
`
`
`
`4
`
`
`
`
`
`
`
`
`
`IPR2017-00184
`U.S. Patent 7,069,293
`III. THE PETITION PRESENTS REDUNDANT AND CUMULATIVE
`GROUNDS AND RELIES ON AT LEAST ONE REFERENCE THAT
`DOES NOT QUALIFY AS PRIOR ART
` Grounds Asserted in the Petition
`
`Petitioner challenges the patent ability of the claims of the '293 Patent under
`
`35 U.S.C. § 103(a) over the following horizontally and vertically redundant
`
`combinations of references:
`
`Ground
`1
`
`2
`
`
`
`Claims
`
`1-21
`
`Reference(s)
`U.S Patent No. 5,845,090 to Collins, III et al.
`(“Collins”) in view of WorkSpace On-Demand
`Handbook by IBM International Technical Support
`Organization (“ITSO Handbook”).
`U.S. Patent No. 6,446,109 to Gupta (“Gupta”) in
`view of U.S. Patent No. 5,950,010 to Hesse et al.
`(“Hesse”).
`The ITSO Handbook Is Not Prior Art and is Cumulative
`
`1-2, 6-7, 12-13,
`15-18, and 20-21
`
`As a preliminary matter, the ITSO Handbook cited in Ground I of the Petition
`
`does not qualify as prior art because the only reliable evidence before the Board
`
`confirms that the reference was published within the one-year grace period. A
`
`printed publication cannot be considered prior art under pre-AIA § 102(b) unless it
`
`is published at least one year prior to the effective filing date, which for the '293
`
`Patent is December 14, 1998. The ITSO Handbook states on its face that it was
`
`published (i.e., first made available to the public) on December 17, 1997, which is
`
`less than one year prior to the effective filing date of the '293 Patent. Ex. 2001.
`
`5
`
`
`
`IPR2017-00184
`U.S. Patent 7,069,293
`Although the application for registering a copyright for the ITSO Handbook
`
`reference lists December 1, 1997 as the date of publication, the US. Copyright Office
`
`website states “[i]f you do not know the exact date of first publication, give the
`
`approximate month, day, and year.” Ex. 2002. Consistent with that instruction, IBM
`
`had a pattern of first providing an approximate date of publication to the U.S.
`
`Copyright Office and then, shortly thereafter, officially publishing its documents.
`
`Ex. 2003. That is precisely what happened here, with the official publication date
`
`being December 17, 1997, as recorded on the reference itself.
`
`Even if the Board somehow deemed the ITSO Handbook as prior art
`
`(notwithstanding its actual publication date), that reference is cumulative with what
`
`was disclosed by the Applicant and considered by the Examiner during prosecution
`
`of the '293 Application. The Information Disclosure Statement filed on May 31,
`
`2001 lists the ITSO Handbook. Ex. 1030. The record confirms the Examiner
`
`considered this reference as early as September 8, 2004 and ultimately found the
`
`'293 Patent to be allowable over all references of record, included the ITSO
`
`Handbook. See Ex. 1024 (Office Action mailed September 8, 2004) at 2; Ex. 1031
`
`(Examiner’s Consideration) at 2. Under Section 35 U.S.C. § 325(d), the Board need
`
`not and should not second-guess issues of patentability that the Office addressed
`
`before issuing this patent. Specifically, Section 325(d) authorizes the Office to reject
`
`grounds for inter partes review that seek to reargue positions previously lost:
`
`6
`
`
`
`IPR2017-00184
`U.S. Patent 7,069,293
`In determining whether to institute or order a proceeding under
`this chapter, chapter 30, or chapter 31, the Director may take
`into account whether, and reject the petition or request because,
`the same or substantially the same prior art or arguments
`previously were presented to the Office.
`
`
`35 U.S.C. § 325(d) (emphasis added). Accordingly, Section 325(d) confirms the
`
`Petitioner’s reliance on the ITSO Handbook should be rejected as cumulative at
`
`best.2
`
`Additionally, the Background section of the '293 Patent differentiates IBM’s
`
`WorkSpace On DemandTM initiative from the claimed invention, at least in part,
`
`because those solutions required “pre-installation of software at the workstation to
`
`support their services. For example, … IBM’s Workspace On Demand utilize[s] a
`
`designer-supplied support layer in the operating system to enable their services.”
`
`Ex. 1001 at 2:39-49. The challenged claims reflect technical improvements upon
`
`those solutions. It would be inappropriate, therefore, to conclude that the very
`
`technology expressly differentiated in the Specification somehow reads on the
`
`claims. See Openwave Systems, Inc v Apple Inc, 808 F.3d 509 (Fed. Cir. 2015)
`
`(upholding a district court finding that a patent specification disparaging prior art
`
`constituted a disavowal sufficient to exclude that specific prior art from the scope of
`
`the claims).
`
`
`2 The Handbook is also cumulative of Collins, for reasons discussed infra.
`
`7
`
`
`
`IPR2017-00184
`U.S. Patent 7,069,293
`
`Petitioner Does Not Justify its Horizontal and Vertical Redundancy
`The Board has noted that “multiple grounds, which are presented in a
`
`redundant manner by a petitioner who makes no meaningful distinction between
`
`them, are contrary to the regulatory and statutory mandates, and therefore are not all
`
`entitled to consideration.” Liberty Mutual Insurance Co. v. Progressive Casualty
`
`Insurance Co., CBM2012-00003, Paper 7 (P.T.A.B. October 25, 2012) at 2. This is
`
`because “numerous redundant grounds would place a significant burden on the
`
`Patent Owner and the Board, and would cause unnecessary delays,” contrary to 37
`
`C.F.R. §42.1(b), which calls for the “just, speedy, and inexpensive resolution of
`
`every proceeding.” Id.
`
`The Board has ruled in a similar manner in other decisions. See Berk-Tek LLC
`
`v. Belden Techs. Inc., No. IPR2013-00057, Paper No. 21, Decision on Request for
`
`Rehearing at 4-5 (P.T.A.B. May 14, 2013) (“If the petitioner makes no meaningful
`
`distinction between certain grounds, the Board may exercise discretion by acting on
`
`one or more grounds and regard the others as redundant”... “allowing multiple
`
`grounds without meaningful distinction by the petitioner is contrary to the
`
`legislative intent”); Oracle Corp. v. Clouding IP, LLC, No. IPR2013-00075, Paper
`
`No. 8, Decision Institution of Inter Partes Review at 13-14 (P.T.A.B. May 3, 2013)
`
`(denying various grounds of unpatentability because they were redundant); Amkor
`
`8
`
`
`
`IPR2017-00184
`U.S. Patent 7,069,293
`Tech., Inc. v. Tessera, Inc., No. IPR2013-00242, Paper No. 37, Decision Institution
`
`of Inter Partes Review at 32-33 (P.T.A.B. Oct. 11, 2013) (same).
`
`It is Petitioner’s obligation to explain why the Board should institute trial on
`
`multiple redundant grounds of rejection. Liberty Mut., CBM2012-00003, Paper 7 at
`
`3. As discussed herein, not only has Petitioner not met that obligation, it has not
`
`even attempted to provide explanations which would justify dedication of the
`
`Board’s resources toward analyzing references in a cumulative and redundant
`
`manner.
`
`The Board has recognized at least two types of impermissible redundancy:
`
`horizontal redundancy and vertical redundancy. Id. at 3. The Petition presents
`
`multiple unjustified instances of both types of redundancy. The requirement of
`
`providing relevant strengths and weaknesses of those redundant arguments applies
`
`to the Petition itself.
`
`1.
`IBM’s ITSO Handbook is Vertically Redundant with Collins
`Evidently recognizing the weakness of the obviousness theory with respect to
`
`Collins, Petitioner repeatedly attempts to argue in the alternative (no less than four
`
`times) that the ITSO Handbook cures any deficiency “[t]o the extent one could argue
`
`that Collins does not disclose this limitation.” See, e.g., Pet. at 26, 30, 43, and 51.
`
`Petitioner’s alternative argument violates the Board’s prohibition against vertical
`
`redundancy.
`
`9
`
`
`
`IPR2017-00184
`U.S. Patent 7,069,293
`Vertical redundancy “involves a plurality of prior art applied both in partial
`
`combination and in full combination. In the former case, fewer references than the
`
`entire combination are sufficient to render a claim obvious, and in the latter case the
`
`entire combination is relied on to render the same claim obvious.” Liberty Mut.,
`
`CBM2012-00003, Paper 7 at 3. In such instances where a larger group of relied-
`
`upon references and a subset thereof are both alleged to be sufficient to render a
`
`claim obvious, “[t]here must be an explanation of why the reliance in part may be
`
`the stronger assertion as applied in certain instances and why the reliance in whole
`
`may also be the stronger assertion in other instances.” Id. (emphasis in original).
`
`If one of the alternative grounds is better from all perspectives, then the Board
`
`should only consider the stronger ground and not burden the Patent Owner and the
`
`Board with the weaker ground. Further, if there is no difference in the grounds, the
`
`Petitioner should only assert one of the grounds. Id. at 12. “Only if the Petitioner
`
`reasonably articulates why each ground has strength and weakness relative to the
`
`other should both grounds be asserted for consideration.” Id.
`
`The Petition has vertical redundancy because it relies on Collins alone as
`
`allegedly disclosing each limitation of the independent claims, but then repeatedly
`
`argues, in the alternative, that “[t]o the extent one could argue that Collins does not
`
`10
`
`
`
`IPR2017-00184
`U.S. Patent 7,069,293
`disclose this limitation,” then Collins allegedly could be modified according to the
`
`teachings of the ITSO Handbook. See, e.g., Pet. at 26, 30, 43, and 51.3
`
`Petitioner makes no effort to explain why “the reliance in part [i.e., on Collins
`
`alone] may be the stronger assertion as applied in certain instances and why the
`
`reliance in whole [i.e., Collins as modified by the ITSO Handbook] may also be the
`
`stronger assertion in other instances.” Id. Rather, in every instance the ITSO
`
`Handbook is cited, Petitioner simply suggests that if the Board does not buy
`
`Petitioner’s admittedly tenuous theory with respect to Collins, then the ITSO
`
`Handbook provides a backup argument (albeit one that is equally tenuous and
`
`vertically redundant).
`
`The Board in Eizo Corp. v. Barco N.V.4 flatly rejected a similar attempt to
`
`hedge bets and unnecessarily multiply the work of both the Patent Owner and the
`
`Board. The Board there found insufficient the petitioner’s “conclusory assertion”
`
`that “[t]o the extent [the first prior art reference] may not explicitly teach” the
`
`limitation, the second prior art reference “explicitly teaches this limitation.” The
`
`Board explained that “such an assertion fails to resolve the exact differences sought
`
`
`3 To the extent Petitioner has, instead, offered the ITSO Handbook as an alternative
`theory of obviousness independent of Collins, such an attempt amounts to
`impermissible horizontal redundancy.
`4 IPR2014-00358, Paper 11 (P.T.A.B. July 23, 2014).
`
`11
`
`
`
`IPR2017-00184
`U.S. Patent 7,069,293
`to be derived from” the second prior art reference. Id. (finding that petitioner had not
`
`shown a reasonable likelihood of prevailing on that ground).
`
`Even if the Board were to consider Petitioner’s facially redundant theories,
`
`the ITSO Handbook fails to cure the tacitly admitted deficiencies of Collins, for
`
`reasons explained below.
`
`2. Grounds 1 and 2 of the Petition are Horizontally Redundant
`Horizontal redundancy occurs when multiple references are relied upon to
`
`“provide essentially the same teaching to meet the same claim limitation, and the
`
`associated arguments do not explain why one reference more closely satisfies the
`
`claim limitation at issue in some respects than another reference, and vice versa.”
`
`Liberty Mut., CBM2012-00003, Paper 7 at 3 (emphasis original).
`
`The Board’s unwillingness to consider references presented in a horizontally
`
`redundant manner demonstrates its aversion to art that is cumulative of other art
`
`presented to it, where the multiple references are essentially interchangeable and
`
`used to allegedly disclose the same claim features.
`
`The Petition has impermissible horizontal redundancy at least because
`
`Grounds 1 and 2 present redundant challenges against the same claims, without
`
`explaining why the obviousness theory for Ground 1 more closely satisfies a given
`
`claim in some respects than the redundant obviousness theory for the same claim
`
`challenged in Ground 2, and vice versa. Specifically, Ground 1 challenges Claim 1-
`
`12
`
`
`
`IPR2017-00184
`U.S. Patent 7,069,293
`21, while Ground 2 relies on different references in challenging a subset of those
`
`same claims (i.e., Claims 1-2, 6-7, 12-13, 15-18, and 20-21). Petitioner offers
`
`Ground 2, therefore, simply as a second bite at the same apple without providing the
`
`requisite comparative analysis, presumably to avoid having to admit any relative
`
`weaknesses in its patentability challenges. The law does not permit such
`
`redundancy; and because Ground 2 merely challenges a subset of the same claims
`
`challenged in Ground 1, at a minimum, Ground 2 should not be entitled to
`
`consideration.
`
`3. Hesse is Vertically Redundant with Gupta
`Petitioner’s Ground 2 is not only horizontally redundant with Ground 1, it also
`
`violates the Board’s prohibition against vertical redundancy. Ground 2 has vertical
`
`redundancy because it relies on Gupta alone as allegedly disclosing each limitation
`
`of the independent claims, but then argues, in the alternative, that “[t]o the extent
`
`one could argue that Gupta does not disclose this limitation,” then Gupta allegedly
`
`could be modified according to the teachings of the Hesse. See, e.g., Pet. at 59.5
`
`Petitioner makes no effort to explain why “the reliance in part [i.e., on Gupta
`
`alone] may be the stronger assertion as applied in certain instances and why the
`
`reliance in whole [i.e., Gupta as modified by Hesse] may also be the stronger
`
`
`5 To the extent Petitioner has, instead, offered Hesse as an alternative theory of
`obvious independent of Gupta, such an attempt amounts to impermissible horizontal
`redundancy.
`
`13
`
`
`
`IPR2017-00184
`U.S. Patent 7,069,293
`assertion in other instances.” Id. Rather, Petitioner repeats its pattern of simply
`
`suggesting that if the Board does not buy Petitioner’s admittedly tenuous theory with
`
`respect to Gupta, then Hesse provides a backup argument (albeit one that is equally
`
`tenuous and vertically redundant). Cf. Eizo Corp. v. Barco N.V. IPR2014-00358,
`
`Paper 11 (P.T.A.B. July 23, 2014) (flatly rejecting a similar attempt to hedge bets
`
`and unnecessarily multiply the work of both the Patent Owner and the Board).
`
`Even if the Board were to consider Petitioner’s facially redundant theories,
`
`Hesse fails to cure the tacitly admitted deficiencies of Gupta, for reasons explained
`
`below.
`
`IV. THE PETITION FAILS TO ESTABLISH A REASONABLE
`LIKLIHOOD THAT AT LEAST ONE OF THE CHALLENGED
`CLAIMS IS UNPATENTABLE
`The Petition presents the following grounds, which are all based on
`
`obviousness theories. As Ground 1, Petitioner alleges obviousness of Claims 1-21
`
`under 35 U.S.C. § 103 over Collins in view of the ITSO Handbook. As ground 2, the
`
`Petition alleges obviousness of Claims 1-2, 6-7, 12-13, 15-18, and 20-21 under 35
`
`U.S.C. § 103 over Gupta in view of Hesse.
`
`Petitioner has the burden of proof to establish they are entitled to their
`
`requested relief. 37 C.F.R. § 42.108(c). Because the Petition only presents theories
`
`of obviousness, Petitioner must demonstrate a reasonable likelihood that at least one
`
`of the challenged patent claims would have been obvious in view of the art cited in
`
`14
`
`
`
`IPR2017-00184
`U.S. Patent 7,069,293
`the Petition. Petitioner “must specify where each element of the claim is found in
`
`the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4).
`
`The Board should reject any non-redundant, non-cumulative grounds that remain (if
`
`any) because Petitioner fails to meet this burden.6
`
` Claim Construction
`
`Before wading into claim construction issues introduced in the Petition, it is
`
`worth noting that the parties’ present disputes make it unnecessary to construe the
`
`terms Petitioner proposes. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`
`795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
`
`controversy, and only to the extent necessary to resolve the controversy.”). Even if
`
`the Board were to adopt all of Petitioner’s proposed constructions, Petitioner has
`
`failed to establish a prima facie case of obviousness for even one challenged claim.
`
`Nevertheless, it is worth pointing out certain flaws in the Petition with respect to
`
`claim construction that are so egregious they each provide an independent basis to
`
`deny the Petition in its entirety.7
`
`
`6 While certain deficiencies in the Petition are addressed herein, Patent Owner
`hereby expressly reserves the right to address other deficiencies of the Petition in a
`full Response (and with the support of its own expert) if an inter partes review is
`instituted.
`7 The standard for claim construction at the Patent Office is different from that used
`during a U.S. district court litigation for non-expired patents. See In re Am. Acad. of
`Sci. Tech Ctr., 367 F.3d 1359, 1364, 1369 (Fed. Cir. 2004). Uniloc expressly
`reserves the right to argue a different claim construction in litigation for any term of
`the '293, as appropriate in that proceeding. Further, Patent Owner does not burden
`
`15
`
`
`
`IPR2017-00184
`U.S. Patent 7,069,293
`
`1.
` “registration operations”
`Petitioner’s proposed construction for “registration operations” should be
`
`rejected because it renders other claim language superfluous and introduces
`
`ambiguity. See Apple Inc. v. ContentGuard Holdings, Inc., IPR2015-00353, Paper
`
`No. 9, Decision Denying Institution of Inter Partes Review (P.T.A.B. June 25, 2015)
`
`(declining to adopt proposed claim construction that would render other claim
`
`language superfluous) and Biotronik, Inc. et al. v. My Health, Inc., IPR2015-00102,
`
`Paper No. 11, Decision Institution of Inter Partes Review (P.T.A.B. April 16, 2015)
`
`(declining to adopt proposed claim construction that “introduces ambiguity into the
`
`meaning of the term.”).
`
`Petitioner proposes to construe “registration operations” to mean “operations
`
`to make the application available for use locally.” However, Claim 1 further recites
`
`“distributing the file packet to the target on-demand server to make the application
`
`program available for use by a user at a client.” Petitioner’s proposed construction
`
`renders that “distributing” step superfluous as it is explicitly an operation
`
`(distributing) “to make the application program available for use by a user at a
`
`client.” Clearly, the “registration operations” recited in Claim 1 must mean
`
`something other than what is effected in the “distributing” process step.
`
`
`the Board here with all possible issues introduced by Petitioner’s proposed
`constructions; and Patent Owner’s silence with respect to any construction proffered
`by Petitioner is not to be taken as a concession that the construction is correct.
`
`16
`
`
`
`IPR2017-00184
`U.S. Patent 7,069,293
`Petitioner’s faulty claim construction taints the entire Petition. By attempting
`
`to conflate “registration operations” with the “distributing” step, Petitioner reads the
`
`“registration operations” language out of the claim entirely. Not surprisingly,
`
`Petitioner carefully avoids even mentioning the word “registration” when presenting
`
`its argument.
`
`Petitioner’s proposed construction also improperly introduces ambiguity. For
`
`example, “locally” is a relative term and it is unclear from Petitioner’s construction
`
`which claimed component (e.g., client, target on-demand server, or network
`
`management server, etc.) is to be considered the “local” one. The Petition states
`
`“‘registration operations’ are done . . . at the client ‘locally.’” Pet. at 15. Yet the
`
`Petition cites to an embodiment in the Specification which clearly states “. . . the
`
`data required to properly install and register the application program on the on-
`
`demand server ….” Id. (citing Ex. 1003 4:18-22) (emphasis added). Moreover, the
`
`claim language itself recites “a segment configured to initiate registration operations
`
`for the application program at the target on-demand server.” It is unclear whether
`
`Petitioner has attempted to rewrite the claim such that the “registration operations”
`
`must be initiated at the “client” instead of the claimed “target on-demand server.”
`
`As will be shown, Petitioner’s injected ambiguity is compounded by the fact that
`
`Petitioner’s patentability challenge relies solely on operations performed at what
`
`Petitioner alleges is the “client” computer.
`
`17
`
`
`
`IPR2017-00184
`U.S. Patent 7,069,293
`As another example of how Petitioner’s construction unnecessary introduces
`
`ambiguity, there is no antecedent basis in the claim for Petitioner’s phrase “the
`
`application.” If Petitioner had instead meant “the program application,” it should
`
`have said so. The Board and the Patent Owner should not be forced to guess what is
`
`meant by Petitioner’s ambiguous construction.
`
`In summary, Petitioner’s proposed construction should be rejected as
`
`replacing a known term of art with a phrase that unnecessarily injects ambiguity and
`
`that, at best, renders other claim language superfluous.
`
`2.
`“a target on-demand server”
`The preamble of each of the challenged independent claims recites
`
`“[distributing / distribution of] application programs to a target on-demand server.”
`
`Ex. 1001 at 21:22-23, 22:53-54 and 22:57-58. Consistent with that context, the body
`
`of each independent claim recites, for example, “specifying a … target directory for
`
`distribution of the application program,” “preparing a file packet … configured to
`
`initiate registration operations at the target on-demand server,” and “distributing the
`
`file packet to the target on-demand server to make that application program available
`
`for use by a user at a client.” Viewing the claim language as a whole, there can be
`
`no question that the “target” of the claimed distribution is the “target on-demand
`
`server” where the “registration operations for the application program” are initiated.
`
`18
`
`
`
`IPR2017-00184
`U.S. Patent 7,069,293
`The dependent claims confirm that straightforward interpretation. For
`
`example, dependent Claim 3 recites “a call to an i
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
