`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`APPLE INC., SNAP INC., FACEBOOK, INC., and WHATSAPP, INC.,
`Petitioner
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner
`
`___________________
`
`Case IPR2017-002211
`Patent 7,535,890
`___________________
`
`
`PETITIONER APPLE INC.’S RESPONSE TO PATENT OWNER’S
`MOTION FOR OBSERVATION ON CROSS-EXAMINATION
`OF LEONARD FORYS
`
`
`
`
`
`
`
`
`
`Mail Stop “Patent Board”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`1 Snap Inc., who filed a petition in IPR2017-01612, as well as Facebook,
`Inc. and WhatsApp, Inc., who filed a petition in IPR2017-01636, have been joined
`as petitioners in this proceeding.
`
`
`
`Case IPR2017-00221
`U.S. Patent No. 7,535,890
`Pursuant to the Scheduling Order of May 25, 2017 (Paper 10) and Notice of
`
`Joint Stipulation to Modify Due Dates 4 and 5 of December 21, 2017 (Paper 20),
`
`Petitioner Apple Inc. presents the following responses to PO’s Motion for
`
`Observation on Cross-Examination of Leonard Forys (“Obs.,” Paper 25).
`
`I.
`
`PRELIMINARY COMMENTS
`
`PO’s Observations do not comply with the USPTO’s guidance for
`
`observations requiring “a concise statement of the relevance of identified
`
`testimony to an identified argument or portion of an exhibit.” OFFICE PATENT
`
`TRIAL PRACTICE GUIDE, 77 Fed. Reg. 48744, 48768 (Aug. 14, 2012). PO’s
`
`Observations contain attorney arguments that raise new issues, re-argue issues, or
`
`pursue objections. See id. at 48768 (“An observation (or response) is not an
`
`opportunity to raise new issues, re-argue issues, or pursue objections”). PO’s
`
`Observations contain attorney arguments and/or are argumentative, which are not
`
`the purpose of observations and should be ignored by the Board. See Micron Tech.,
`
`Inc. v. Bd. of Trs. of the Univ. of Illinois, IPR2013-00005, Paper 46 at 2 (Nov. 26,
`
`2013) (PTAB expunged argumentative Observations). Moreover, many of PO’s
`
`Observations mischaracterize Dr. Forys’ testimony and/or are contradicted by
`
`uncited portions of his testimony. By providing its own characterizations of Dr.
`
`Forys’ testimony, PO’s Observations are misleading.
`
`Based on the foregoing, the Board should expunge or give no weight to PO’s
`
`- 1 -
`
`
`
`Case IPR2017-00221
`U.S. Patent No. 7,535,890
`improper Observations. Yet, Petitioner responds to individual observations below
`
`consistent with the USPTO’s guidance on observations, except to the limited
`
`extent necessary to respond to PO’s arguments that exceed such guidance.
`
`II.
`
`INDIVIDUAL RESPONSES
`
`Response to Obs. 1: PO’s Obs. 1 is improper and is not being offered to
`
`show any inconsistency in testimony; rather, PO simply characterizes the testimony
`
`as a way of arguing the claim term “local.” First, PO argues that PO’s cited portions
`
`of Dr. Forys’ deposition undermines Petitioner’s claim interpretation because “not all
`
`types of networks match Dr. Forys’ description of a LAN.” (Paper 25, p. 2, emphasis
`
`added.) But PO’s statement is irrelevant because (some of) the challenged claims
`
`recite a “local network,” not LAN. Petitioner has provided LAN as one example that
`
`reads on the “local network” (Ex. 20042, 15:4-7 (“Q. Is it your understanding that a
`
`LAN is an example of a local network within the context of the claim? A. Yes.”).)
`
`Second, PO mischaracterizes Dr. Forys’ testimony by stating that “Dr. Forys equated
`
`the term ‘local network’ … to a LAN having ‘certain topologies and certain
`
`connections and certain protocols.’” (Paper 25, pp. 1-2.) As noted above, Petitioner
`
`2 Exhibit 2004 includes a number of typographical errors most likely caused
`
`by the deposition being taken by phone, e.g. (1) On page 4, line 13, Mr. Steve
`
`Pappas is a Patent Agent. (2) On page 40, line 20; page 46, line 20; page 63, line
`
`17; page 68, line 11 the transcript should say “BY MR. MANGRUM.”
`
`- 2 -
`
`
`
`Case IPR2017-00221
`U.S. Patent No. 7,535,890
`and Dr. Forys have provided LAN as one example that reads on the “local network”.
`
`Third, in PO’s cited portions of Dr. Forys’ deposition, Dr. Forys provides an
`
`understanding of a LAN, which again can be one example for the “local network”
`
`cited in (some of) the challenged claims. This understanding of LAN does not
`
`undermine Petitioner’s construction of “external network” meaning “a network that is
`
`outside another network.” (Petitioner’s Reply, Paper 17, pp. 1-4.) Finally, PO’s cited
`
`portions of Dr. Forys’ deposition do not contradict how Dr. Forys has defined what
`
`local and external networks mean. (Ex. 2002, 37:10-13 (“Q. Do the claim terms
`
`local network and external network refer to different types of networks? A. Not
`
`necessarily.”); 38:5-9 (“A. It says external. External, the way I defined means
`
`external to the network that the client is connected to. I believe I give a precise
`
`definition, but generally that is what I'm talking about.”); 40:4-11 (“A. …It
`
`depends. It is in reference -- an external means in reference to a referenced
`
`network, you’re external to what. And in this particular case, okay, the reference
`
`network is a local network. The external network which is something beside that
`
`could be an internet. It could also be another local network. It doesn’t say.”).)
`
` Response to Obs. 2: PO’s Obs. 2 is improper and is not being offered to
`
`show any inconsistency in testimony; rather, PO simply characterizes the testimony
`
`as a way of arguing the claim construction “external network.” PO Obs. 2 refers to
`
`Exhibit 2004 page 40, line 21 to page 42, line 10 to argue that Dr. Forys agrees that
`
`- 3 -
`
`
`
`Case IPR2017-00221
`U.S. Patent No. 7,535,890
`“IP network 102 is ‘external’ to IP network 204.” (Paper 25, p. 2.) However, PO
`
`does not mention the rest of Dr. Forys’ deposition on page 42 of Exhibit 2004. Dr.
`
`Forys testified that “[t]hat’s a labeling convention. That’s the – I think that could
`
`be done – although there’s nothing that precludes local IP network 204 from being
`
`part of the network as well.” (Ex. 2004, 42:10-15.) Also, in response to the
`
`question “[d]oes this preclude the possibility that the local IP network is entirely
`
`separate from the Internet as shown?” Dr. Forys testified that “[n]o; that’s a
`
`possible interpretation, but it’s not the only interpretation.” (Id. at 42:16-22.)
`
`Further, PO’s statement that “the ’890 patent (and hence all the challenged patents)
`
`illustrates and describes an ‘external network’ as claimed, at least under
`
`Petitioner’s claim interpretation” (Paper 25, pp. 2-3) further confirms Petitioner’s
`
`claim construction of “external network” meaning “a network that is outside another
`
`network.” Finally, in the Petitioner’s Reply, Petitioner stated that “’890 Patent FIG.
`
`5 shows ‘local IP network’ and/or an ‘IP network (Internet).’ Yet this embodiment
`
`does not explicitly refer to an ‘external network.’ (’890 Patent, 15:28-38; EX1003,
`
`¶68.) But neither disclosure supports PO’s narrow construction that ‘local’ and
`
`‘external’ refers to ‘distinct types of networks.’” (Reply, p. 2, emphasis in
`
`original.) Dr. Forys’ statements do not contradict the Petitioner’s Reply.
`
`Response to Obs. 3: PO’s Obs. 3 is improper and is not being offered to
`
`show any inconsistency in testimony or the arguments made by the Petitioner; and it
`
`- 4 -
`
`
`
`Case IPR2017-00221
`U.S. Patent No. 7,535,890
`is irrelevant to the portion of the Petitioner’s Reply that PO argues Obs. 3
`
`undermines. PO argues that Dr. Forys’ testimony in Exhibit 2004, on page 81, lines 5
`
`to 11, regarding Malik’s disclosure at column 4, lines 51-53 is relevant to and
`
`undermines the Petitioner’s Reply at page 10. At page 10 of the Petitioner’s Reply
`
`and regarding Malik, 4:51-53, Petitioner quoted Malik (Malik 4:45-47 and 51-53)
`
`and stated that “[c]onsidering Malik as a whole, Malik does the opposite of
`
`disparagement – it suggests the combination of its FIGs. 2 and 3.” Dr. Forys’
`
`testimony that one embodiment and one possibility where the VIM server 330
`
`delivers messages, does not undermine the fact that Malik, as a whole, does not
`
`disparage using the FIG. 2 servers and Malik suggests the combination of its FIGs.
`
`2 and 3.
`
`
`
`
`
`
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Jason D. Eisenberg/
`
`Jason D. Eisenberg
`Registration No. 43,447
`Attorney for Petitioner Apple Inc.
`
`Date: January 25, 2018
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`- 5 -
`
`
`
`Case IPR2017-00221
`U.S. Patent No. 7,535,890
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`The undersigned hereby certifies that the foregoing PETITIONER APPLE
`
`
`
`INC.’S RESPONSE TO PATENT OWNER’S MOTION FOR
`
`OBSERVATION ON CROSS-EXAMINATION OF LEONARD FORYS was
`
`served electronically via e-mail on January 25, 2018, in its entirety upon the
`
`following parties:
`
`Brett A. Mangrum (Lead Counsel for PO) brett@etheridgelaw.com
`Ryan Loveless (Back-up Counsel for PO) ryan@etheridgelaw.com
`James Etheridge (Back-up Counsel for PO) jim@etheridgelaw.com
`Jeffrey Huang (Back-up Counsel for PO) jeff@etheridgelaw.com
`ETHERIDGE LAW GROUP
`
`Sean D. Burdick (Back-up Counsel for PO) sean.burdick@unilocusa.com
`Uniloc USA, Inc.
`
`Heidi L. Keefe (Lead Counsel for Snap Inc.; Facebook, Inc.; and WhatsApp, Inc.)
`Lisa F. Schwier (Back-up Counsel for Snap Inc.)
`Phillip E. Morton (Back-up Counsel for Facebook, Inc. and WhatsApp, Inc.)
`Mark R. Weinstein (Back-up Counsel for Facebook, Inc. and WhatsApp, Inc.)
`FB_Uniloc2_890_PTAB_IPR@cooley.com, hkeefe@cooley.com
`lschwier@cooley.com, pmorton@cooley.com, mweinstein@cooley.com,
`Snapchat-Uniloc@cooley.com
`COOLEY LLP
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Jason D. Eisenberg/
`
`Jason D. Eisenberg
`Registration No. 43,447
`Attorney for Petitioner Apple Inc.
`
`
`
`
`
`
`
`
`
`Date: January 25, 2018
`1100 New York Avenue, N.W.
`Washington, D.C.20005-3934
`(202) 371-2600
`
`
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
