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`Case IPR2017-00222
`Patent 8,243,723 B2
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner
`v.
`UNILOC LUXEMBOURG S.A.,
`Patent Owner
`
`Case IPR2017-00222
`Patent 8,243,723 B2
`
`PATENT OWNER’S REQUEST FOR
`REHEARING UNDER 37 C.F.R. § 42.71(D)
`
`
`
`
`
`Case IPR2017-00222
`Patent 8,243,723 B2
`
`
`
`
`
`In response to the Final Written Decision entered May 23, 2018, (Paper 29,
`
`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 1-2 of the ’723 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
`
`misapprehended or overlooked, and the place where each matter was previously
`
`addressed in a motion, an opposition, or a reply.” Id. The Board 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
`
`
`
`
`
`Case IPR2017-00222
`Patent 8,243,723 B2
`
`II. ARGUMENT
`
`A. The Decision Improperly Introduced a New Argument in
`Construing the Claim Phrase, “transmitting a signal to a client
`including a list of the recorded connectivity status for each of the
`nodes in the sub-set corresponding to the client”
`
`As the Decision correctly recognized, one of the central disputes between
`
`the parties was whether the transmitted “list” in the claims should include
`
`information concerning “nodes” in the plural (as argued by Patent Owner) or only
`
`a single node (as argued by Petitioner). Patent Owner noted that the principal
`
`reference, (Ex. 1005 - Vuori), only transmits information concerning one node at
`
`a time and therefore could not satisfy the claim feature. After reviewing the record,
`
`the Board stated that it was siding with Patent Owner (list requires multiple nodes),
`
`but then injected its own argument – its belief that the claim language could refer
`
`to multiple transmissions to reach the multiple nodes in alist. Stated more
`
`concisely, the Decision concluded its belief that because the ‘723 specification
`
`allegedly lacked detail concerning the manner of transmission, multiple single
`
`transmission of single values for nodes could correspond to transmission of “a
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`list.”
`
`There are two problems with this new argument. First, Patent Owner has
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`not been provided due process ability to respond to this new argument and point
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`out how this interpretation is incorrect. Second, because this argument was
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`advanced by the Board and not the petitioner, such an argument runs afoul of In
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`
`
`3
`
`
`
`
`
`Case IPR2017-00222
`Patent 8,243,723 B2
`re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (“. . . Board
`
`must base its decision on arguments that were advanced by a party, and to which
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`the opposing party was given a chance to respond.”).
`
`B.
`
`
`
`The Board Improperly Introduced its Own Rebuttal Evidence
`Concerning the (Ex. 1005 - Vuori)’s Teaching as to Transmissions
`
`The Decision also points to new evidence and arguments concerning what
`
`the Vuori (Ex. 1005) transmits. As explained above, Patent Owner pointed out
`
`that Vuori only transmits information concerning values for one node at a time and
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`therefore could not satisfy the claim feature concerning lists. The Board sua sponte
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`rebutted this argument in the Decision – without identifying any argument or
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`evidence put forth by Petitioner. In particular, the Decision at 32-33 points to what
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`appears to an independent analysis, disagreeing with Patent Owner’s expert’s, Mr.
`
`Easttom’s, interpretation of Vuori. The counter-interpretation cited by in the
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`Decision cites no evidence presented by Petitioner or Petitioner’s expert. This
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`runs afoul of In re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir.
`
`2016)(“. . . Board must base its decision on arguments that were advanced by a
`
`party, and to which the opposing party was given a chance to respond.”).
`
`III.
`
` CONCLUSION
`
`In view of the foregoing, Patent Owner respectfully requests that the Board
`grant a rehearing and reconsider its Final Written Decision finding Claims 1-2
`unpatentable.
`
`
`
`4
`
`
`
`
`
`Case IPR2017-00222
`Patent 8,243,723 B2
`
`
`Date: June 22, 2018
`
`
`
`
`/s/ Brett A. Mangrum
`Brett A. Mangrum
`brett@etheridgelaw.co
`m Reg. No. 64,783
`
`Counsel for Patent Owner
`
`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
`
`5
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