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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC., SNAP INC., FACEBOOK, INC., and WHATSAPP, INC.,
`Petitioners
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner
`
`Case IPR2017-00221
`Patent 7,535,890 B2
`
`PATENT OWNER’S REQUEST FOR
`REHEARING UNDER 37 C.F.R. § 42.71(D)
`
`
`
`
`
`
`
`In response to the Final Written Decision entered May 23, 2018, (Paper
`
`33, hereinafter “Decision”) and pursuant to 37 CFR § 42.71(d), Uniloc
`
`Luxembourg S.A. (“Patent Owner”) hereby respectfully request a rehearing and
`
`reconsideration by the Patent Trial and Appeal Board (“Board”) of its Final
`
`Decision finding unpatentable Claims 1–6, 14, 15, 17–20, 28, 29, 31–34, 40–
`
`43, 51–54, 62–65, and 68 of the ’890 patent. Patent Owner’s request for
`
`rehearing is based upon the following considerations.
`
`I.
`
`APPLICABLE STANDARDS
`“A party dissatisfied with a decision may file a request for rehearing,
`
`without prior authorization from the Board.” 37 C.F.R. §42.71(d). “The request
`
`must specifically
`
`identify all matters
`
`the party believes
`
`the Board
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`misapprehended or overlooked, and the place where each matter was
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`previously addressed in a motion, an opposition, or a reply.” Id. The Board
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`reviews a decision for an abuse of discretion. 37 C.F.R. §42.71(c).
`
`Claim construction is a question of law. Markman v. Westview
`
`Instruments, 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370
`
`(1996). In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo
`
`Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 2142 -46 (2016).
`
`2
`
`
`
`II. ARGUMENT
`
`A. The Board Misapprehend or Overlooked the Evidence in
`Construing the Claim Terms, “Local Network” and “External
`Network”
`
`The Board misapprehended or overlooked both intrinsic and extrinsic
`
`evidence, which indicate that the terms “local network” and “external network” as
`
`in the claims refer to types of networks as opposed to geographic scope of
`
`networks. Rather than adopt Patent Owner’s proposed construction of these terms
`
`(e.g., as to different types) or the petition’s proposed construction (e.g., that an
`
`“external network” is “a network that is outside another network,” Pet. 9-12), the
`
`Board concluded that “local” and “external” differentiate the relative geographic
`
`scope of the networks. In reaching this conclusion, the Board incorrectly assessed
`
`that “Patent Owner does not point us to language in the ’890 patent, nor do we see
`
`any, indicating such further differentiation is required.” To the contrary, the
`
`following evidence was overlooked or misapprehended.
`
`1. Intrinsic Evidence: Figure 5 and its Related Discussion
`
`In its briefing and at Oral Argument, Patent Owner identified Figure 5, which
`
`shows and describes how “local” and “external” refer to types – not geographic
`
`scope of networks. Figure 5 shows two different geographic locations of networks,
`
`both of which are referred to as “local.” Given such an example, geography cannot
`
`be the differentiator between “local” and “external” networks.
`
`
`
`3
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`
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`With reference to Figure 5, as the Board recognized,
`
`
`
`The parties also agree, and the ’890 patent supports, that a Local Area
`Network (“LAN”) qualifies as a “local network” and the Internet qualifies as
`an “external network.” Pet. 38 (“As discussed . . . it would have been obvious
`to connect Client 200 and its local server 215 over a LAN.”), 39 (“Malik
`explicitly teaches using the Internet, which is a type of an external
`network.”); PO Resp. 9–10.
`
`(Decision at 10-11). When “local” and “external” are considered as types of
`
`networks, Figure 5 makes logical sense. However, referring to such networks in
`
`a geographical sense yields a non-sensical understanding – considering the two
`
`local networks shown (as emphasized above) are at different geographic locations.
`
`Additionally, it is not clear how whether something is Internet (recognized as
`
`4
`
`
`
`
`
`
`
`external) or LAN (recognized as local) implies geography.
`
`2. Intrinsic Evidence: Dependent Claim 17 – Claim Differentiation
`
`Under the doctrine of claim differentiation, Dependent Claim 17 provides
`
`further limitations on the type of an “external network” in specifying “wherein the
`
`external network is the Internet.” Such an interpretation is also consistent with the
`
`Boards recognition that the “parties also agree, and the ’890 patent supports, that a
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`Local Area Network (“LAN”) qualifies as a “local network” and the Internet
`
`qualifies as an “external network.” Decision at 10-11. Attempting to substitute
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`geographic scope instead of type renders a non-sensical understanding as to how to
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`further limit this claim.
`
`3. Intrinsic Evidence: Dependent Claim 17 – Claim Differentiation
`
`In six independent claims of the ’890 patent, “external network” is recited in
`
`the context “an external network outside the local network.” See claims 14, 26, 27,
`
`51, 60, 61 (Emphasis added). The remainder of the independent claims do not recite
`
`such a clause. See e.g., Independent Claims 28 and 62 (referring to external
`
`network without the extra language). Accordingly, under the doctrine of claim
`
`differentiation, the qualifier “external” must mean something other than a different
`
`“geographic” location. See also Ex. 2001 at ¶25. The Board’s construction renders
`
`“outside the local network” superfluous.
`
`
`
`
`
`5
`
`
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`4. Extrinsic Evidence: Petitioner/Petitioner Expert’s Admissions
`
`The petitioner and its declarants acknowledged that “local network” and
`
`“external network” refer to different types of networks. The below emphasized
`
`portions from their respective papers otherwise have no other corollary in the
`
`claims.
`
`(Petition at 6, Emphasis Added).
`
`
`
`
`
`(Apple’s Ex. 1003 at ¶56, Emphasis Added).
`
`5. Extrinsic Evidence: Patent Owner’s Expert
`
`
`
`Patent Owner’s expert, Mr. Easttom, testified that “the recited ‘local
`
`network’ and ‘external network’ are distinguishable from one another and that the
`
`words ‘local’ and ‘external’ refer to distinct types of networks.” (Ex. 2001 at ¶24,
`
`Emphasis Added) In support of this conclusion, Mr. Easttom cited the following:
`
`The ’890 patent consistently distinguishes its various examples of
`
`
`
`6
`
`
`
`“local” networks from “external” networks. For example, with
`reference to Figure 5, the ’890 patent identifies a Local Area Network
`(LAN) as a type of “local” network and identifies the Internet as a type
`of “external” network. See also id., 6:59-61 (teaching that the local IP
`network 204 “may be a local area network (LAN), a wide area network
`(WAN), or the like, which supports both wired and wireless devices.”);
`20:2-4 (“This local IP network 504 can be a WiFi network or a local
`area network (i.e., LAN), which is also within the user’s residence.”).
`The words “local network” and “external network” in the context of
`the ’890 patent are analogous to the terms “private network” and
`“public network” as also used in the art.
`
`
` (Ex. 2001 at ¶24).
`
`This plain reading of the claim language is also confirmed by the fact
`that in certain independent claims the sending “client” is connected to
`a “local network” (e.g., Claim 8) and in other independent claims the
`sending “client” is connected, instead, to an “external network” (e.g.,
`Claim 28). A POSA would understand form this explicit claim
`differentiation the terms “local network” and “external network”
`invoke distinct connotations in the art concerning the type of network
`used.
`
`
`(Ex. 2001 at ¶25).
`
`B.
`
`The Board’s Construction Leads to Ambiguous Understanding as to
`Scope of the Claims
`
`The Board’s geographic differentiator also leads to further confusion as to
`
`the meaning of the claims. Whereas the “local” and “external” have very specific
`
`types of examples provided in the specification, the Board’s geographical limiter
`
`does not. In its conclusion that the prior art met the claim features, the Board stated
`
`that a short distance refers to “local “and a longer distance is “external” (Decision
`
`at 35) – even if the types are same. However, taken to an illogical ending, simply
`
`
`
`7
`
`
`
`extending a cord length would somehow convert a network from “local” to
`
`“external.” Also, considering Figure 5, one would not be able to reconcile two
`
`different location both labeled “local” using the distance criteria.
`
`C. Based on the Incorrect Claim Construction, the Board Concluded that
`the Same Types of Networks Could Disclose both the “Local” and
`“External” Network Limitations
`
`The relied upon Malik reference (Ex. 1007) does not teach clients that use
`
`different types of networks. Rather, Petitioner’s expert admitted that the same
`
`network was used. Below is the evidence cited during oral argument:
`
`Figure 3 corresponds to the improvement in Malik of consolidating server features
`
`
`
`8
`
`
`
`
`
`from Figure 2. With reference Figure3, Petitioner’s expert admitted the showing in
`
`Malik that the clients connect through the same (not different) networks. Figure 2
`
`also shows the clients connecting through the same (not different) networks. The
`
`evidence of records confirms such an understanding with VIM Server of Figure 2
`
`maintaining legacy communications with the clients. See e.g., Ex. 1007 at ¶37
`
`(“Malik states its VIM server 330 of Figure 3 requires new voice instant messaging
`
`(VIM) capabilities in addition to the instant messaging (IM) capabilities of
`
`conventional servers: ‘the VIM server 330 includes the capabilities of conventional
`
`IM servers and the additional capabilities for handling VIM message delivery and
`
`storage.’ Ex. 1007, 4:45-53. Dr. Forys appears to agree with me on this point. Ex.
`
`2002 (Forys Depo) 55:17–21 (‘Q And you agree that the VIM server 330 enabled
`
`new VIM functionality beyond what conventional IM servers provided? A Yes. It
`
`builds on it. That is the whole point.’).” and ¶38 (“Given the dual IM and VIM
`
`functionality of the VIM server 330, the most plausible interpretation, in light of
`
`the disclosure, is that the VIM server 330 ‘acts’ as a legacy Jabber Server 215 by
`
`continuing to enable the ‘prior art’ IM functionality described with reference to Fig.
`
`2.”).
`
`
`
`Petitioner offered no evidence that the Malik reference dealt with different
`
`types of networks as understood from a proper reading of the evidence. Rather, the
`
`Board concluded based on an incorrect geographic scope limitation that one of
`
`
`
`9
`
`
`
`ordinary skill would use one type if it is close and another type if it is farther apart
`
`(Decision at 34) – regardless if the exact same network were used.
`
`III.
`
`CONCLUSION
`In view of the foregoing, Patent Owner respectfully requests that the Board
`grant a rehearing and reconsider its Final Written Decision invalidating Claims
`1-6, 14, 15, 17–20, 28, 29, 31–34, 40–43, 51–54, 62–65, and 68 of the ’890 patent.
`
`Date: June 22, 2018
`
`
`
`
`/s/ Brett A. Mangrum
`Brett A. Mangrum
`brett@etheridgelaw.co
`m Reg. No. 64,783
`
`Counsel for Patent Owner
`
`
`
`10
`
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`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that the foregoing was served electronically on
`
`June 22, 2018 on the following counsel of record for Petitioner at the below-listed
`
`email address:
`
`Lead Counsel
`
`Jason Eisenberg
`
`First Back Up
`Counsel
`
`Back Up
`Counsel
`
`Michael Specht
`
`jasone-
`ptab@sternekessler.com
`
`mspecht-
`ptab@sternekessler.com
`
`(202) 772-8645
`
`(202) 772-8756
`
`Zhu He
`
`zhe-ptab@skgf.com
`
`(202) 772-8514
`
`Date: June 22, 2018
`
`/Brett A. Mangrum/
`
`
`
`Brett A. Mangrum
`brett@etheridgelaw.co
`m Reg. No. 64,783
`
`Counsel for Patent Owner
`
`11
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