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