`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` ____________
`
`UBISOFT, INC. AND SQUARE ENIX, INC.,
`Petitioners
`
`v.
`
`UNILOC USA, INC. AND UNILOC LUXEMBOURG, S.A.,
`Patent Owners.
`
`____________
`
`Case No. IPR2017-01290
`U.S. Patent No. 6,510,466
` ____________
`
`
`
`
`
`PETITIONER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(D)
`
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ............................................................................................... 1
`I.
`II. APPLICABLE STANDARDS .......................................................................... 1
`III. ARGUMENT .................................................................................................... 2
`A. The Decision Misapprehends and/or Overlooks that the Function of
`“Installing” Does Not Exclude “Configuring.” .......................................... 4
`B. The Decision Misapprehended and/or Overlooked that the Configuration
`Installing. .................................................................................................... 6
`C. The Decision Misapprehended and/or Overlooked that Steps 112-116 of
`Figure 8 Are Not Clearly Linked to the Function of Installing. ............... 10
`D. The Decision Overlooked and/or Misapprehended that Sonderegger in
`Programs.” ................................................................................................ 12
`IV. CONCLUSION ............................................................................................... 15
`
`Operations of Figure 5 Are “Clearly Linked” To The Claimed Function Of
`
`view of Hughes Discloses “Installing A Plurality of Application
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`In response to the Decision Denying Institution of Inter Partes Review
`
`entered November 1, 2017, (Paper 12, hereinafter “Decision”) and pursuant to 37
`
`C.F.R. § 42.71(d), Ubisoft, Inc. and Square Enix, Inc. (“Petitioner”) hereby
`
`respectfully request the Patent Trial and Appeal Board (“Board”) reconsider its
`
`decision denying institution for inter partes review of claims 1, 2, 7, 8, 15–17, 22,
`
`23, 30, 35, and 36 of U.S. Patent No. 6,510,466 (EX1001, “the ‘466 patent”).
`
`The grounds of invalidity raised by Petitioner in the Petition (Paper 3,
`
`hereinafter “Petition”) are based on the following references:
`
`1. “Sonderegger” (US 5,692,129; issued Nov. 25, 1997) (Ex. 1002);
`
`2. “Hughes” (Jeffrey F. Hughes and Blair W. Thomas, NOVELL’S GUIDE
`TO NETWARE 4.1 NETWORKS (1996)) (Ex. 1003);
`
`3. “Franklin” (US 6,105,069; issued Aug. 15, 2000) (Ex. 1004); and
`
`4. “NAL White Paper” (Novell Application Launcher 2.0: Fast, Efficient
`Software Distribution and Application Deployment) (Ex. 1005).
`
`Decision at 6. This request is timely under 37 C.F.R. §42.71(d)(2) as it was filed
`
`within 30 days of the Board’s decision not to institute a trial on the ‘466 patent.
`
`II. 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
`
`1
`
`
`
`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).
`
`The Board has granted requests for rehearing and instituted a previously
`
`denied
`
`inter partes
`
`review proceeding after determining
`
`that
`
`it had
`
`misapprehended and/or overlooked evidence that was relied upon by the
`
`Petitioners. Exemplary opinions reflecting such action may be found in Merial
`
`Limited v. Virbac IPR2014-01279, Paper 18 at 7 (Apr. 15, 2015) (granting
`
`rehearing and ordering institution, finding: “Petitioner emphasizes the ‘optional’
`
`nature of the cosolvent, a matter we overlooked in entering our order declining to
`
`institute an inter partes review trial.”) and Daicel Corp. v. Celanese International
`
`Corp. IPR2015-00171, Paper 13 at 3-4 (Jun. 26, 2015) (granting rehearing and
`
`ordering institution, determining that it had “misapprehended the significance of
`
`this argument in the Petition, and overlooked the fact that Mr. Cooper’s opinion is
`
`also based on his own calculations and data in two published articles”).
`
`III. ARGUMENT
`Petitioner requests reconsideration of the Board’s Decision not to institute
`
`inter partes review on all grounds raised in the Petition because the Decision
`
`misapprehends and/or overlooks the disclosure of the ‘466 patent and the
`
`Sonderegger prior art with respect to the limitations relating to “installing a
`
`2
`
`
`
`plurality of applications programs on a server” found in independent method claim
`
`1 and independent means-plus-function claims 15 and 16.
`
`Specifically, the Decision declined to institute on means-plus-function
`
`claims 15 and 16 because the Board disagreed with Petitioner’s proposed structure:
`
`Figure 5 of the ‘466 patent. The Board found “that Figure 5 of the ‘466 patent
`
`relates to configuration and not installation. . . . We, therefore, do not adopt
`
`Petitioner’s proposed corresponding structure because it is not linked or associated
`
`with the recited function.” Decision at 10 (internal citations omitted). Instead, the
`
`Board found that certain steps of Figure 8 were clearly linked to the function, and
`
`then determined that “Petitioner has not shown the references describe the
`
`corresponding structure” of Figure 8. Decision at 11, 14-15.
`
`As to method claim 1, the Board construed “application program” – as found
`
`in the limitation “installing a plurality of application programs at a server” – as
`
`“code associated with underlying application program functions.” Decision at 11,
`
`15. The Board then determined that the “application objects” disclosed in the
`
`Sonderegger reference “do not comport with that construction because they contain
`
`only information about application programs . . . .” Decision at 15.
`
`Petitioner requests rehearing of these determinations, and contends that the
`
`Board misapprehended and/or overlooked that 1) the ‘466 patent’s disclosure of
`
`“installing” does not exclude “configuring”; 2) Petitioner’s proposed structure –
`
`3
`
`
`
`the configuration operations of Figure 5 – is “clearly linked” to the claimed
`
`function of “installing a plurality of application programs on a server”; 3) the
`
`corresponding structure adopted by the Board – steps 112-116 of Figure 8 – does
`
`not relate to “installing” at all, and is not “clearly linked” to the claimed function;
`
`and 4) Sonderegger in view of Hughes discloses both the function (and method) of
`
`“installing application programs” as well as the appropriate corresponding
`
`structure from Figure 5 as described in the ‘466 patent.
`
`
`
`A. The Decision Misapprehends and/or Overlooks that the Function
`of “Installing” Does Not Exclude “Configuring.”
`
`In the Decision, the Board construed the function of “installing” to exclude
`
`configuring or registering. Decision at 9 (“‘installing’ does not include
`
`configuring or registering”). In distinguishing “configuring” from “installing,” the
`
`Board relied on several references to “install and register” in the ‘466 patent, as
`
`well as the following statement in the ‘466 patent:
`
`[A]n administrator both sends a new application package to all
`supported on-demand servers and installs the program and configures
`(registers) it to be available for use.
`
`Decision at 9 (citing EX1001 at 18:27–29).
`
`The Board misapprehended and/or overlooked that the ‘466 patent uses the
`
`term “configuration” generically in multiple contexts. The term “configuration”
`
`(and its derivatives) is used approximately 115 times throughout the ‘466 patent. It
`
`4
`
`
`
`is used to describe installation operations (see, e.g., EX1001 at 12:25-30, 13:1-23),
`
`as well as configuration of preferences (see, e.g., EX1001 at 16:24-42, Claims 4,
`
`5), and configuration of the user desktop (see, e.g., EX1001 at 14:63-15:4, Claims
`
`7, 8). While “configures” and “registers” are coextensive in some contexts,
`
`“configures” is a generic term that is not restricted to registration, and does not
`
`exclude installation operations.
`
`The Board also misapprehended and/or overlooked that the phrase “install
`
`and register” in the ‘466 patent does not distinguish these two concepts, but instead
`
`shows that the concepts are fundamentally a description of the same process. One
`
`can pack and fill a suitcase with clothes – the phrase uses two verbs to fully
`
`describe the same process. Put simply, the use of the word “and” in the phrase
`
`“install and register,” does not indicate a disjunctive or that the actions are meant
`
`to distinguish two disparate processes. See Medgraph, Inc. v. Medtronic, Inc., 843
`
`F.3d 942, 950 (2016) (“Because the written description does not compel a
`
`disjunctive construction for ‘and,’ the claim term should be given its plain and
`
`ordinary meaning.”). In fact, the specification of the ‘466 patent compels the
`
`opposite conclusion (as discussed above), which is further supported by the fact
`
`that the claims of the child patent to the ‘466 patent, U.S. Patent No. 7,069,293,
`
`make clear that registration operations includes installation:
`
`5
`
`
`
`Claim 3: “wherein the segment configured to initiate registration
`operations includes an import data file and a call to an import
`program executing on the target on-demand server to install and
`register the file packet associated with the application program on the
`target on-demand server in a manner that makes it recognized and
`available to the user at the client.”
`
`See ‘293 patent at Claim 3. 1 Not only does the ‘466 patent use the terms “install”
`
`and “register” to describe the same set of operations, it provides no basis to draw a
`
`line between which operations could fairly be categorized as “installation” vs.
`
`“registration.” The Board’s determination that installation excludes registration
`
`and configuration is not consistent with the ‘466 patent specification, and directly
`
`contradicts the related claims of the child ‘293 patent.
`
`B.
`
`The Decision Misapprehended and/or Overlooked that the
`Configuration Operations of Figure 5 Are “Clearly Linked” To
`The Claimed Function Of Installing.
`
`Petitioner proposed the following structure as being clearly linked to the
`
`function of “installing a plurality of application programs at the server” recited in
`
`
`1 Petitioner notes that, because the Board imported rationale nearly verbatim from
`
`a Decision Denying Institution of inter partes Review of the ‘293 patent, it is
`
`proper for Petitioner to identify how the Board overlooked Claim 3 of the ‘293
`
`patent in rendering its Decision. Compare Decision at 9 with Unified Patents Inc.
`
`v. Uniloc USA Inc. et al. IPR2017-00184, Paper 9 at 13 (Apr. 18, 2017).
`
`6
`
`
`
`independent claims 15 and 16: a server or code “programmed to execute the steps
`
`depicted in Fig. 5 and described at 13:1-23 [of the ‘466 patent], and equivalents
`
`thereof.” Decision at 9 (citing Petition at 3 (citing Ex. 1001, Fig. 4 (block 232),
`
`Fig. 5, 12:26–30, 13:1–23)). The Board’s determination that Petitioner’s proposed
`
`structure is not “clearly linked” to installation misapprehended and/or overlooked
`
`the disclosure of the ‘466 patent. The “configuration operations” of Figure 4
`
`(block 232), which are described in detail in Figure 5 and 13:1-23 of the ‘466
`
`patent, are clearly and expressly linked to the “installing” function. They are, in
`
`fact, the same thing, i.e., the “configuration operations” are executed to provide
`
`“installation.” The ‘466 patent is clear in this regard.
`
`First, when describing what happens after an application program has been
`
`received for installation, the ‘466 patent specifically states that “configuration
`
`operations” (block 232) are executed:
`
`At block 230, server system 22 determines whether a new software
`application has been received for installation on server system 22. If
`so, configuration operations including setting up the users and
`software to be managed are executed (block 232).
`
`EX1001 at 12:25-30 (cited in Petition at 3). 2 This passage discloses a clear
`
`association between (1) receiving an application program for installation, i.e,
`
`2 Petitioner notes that although the Decision acknowledged this disclosure, it is
`
`misquoted, leaving out the phrase “has been received.” Decision at 10.
`
`7
`
`
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`installation has not yet occurred, and then (2) executing configuration operations
`
`that result in installation. “Installation,” in this description, is a clear corollary to
`
`the claimed “installing” function such that this description is “clearly linked” to the
`
`claimed function. Block 232 is the associated structure for these “clearly linked”
`
`configuration operations, and the specific algorithmic steps summarized in Block
`
`232 are described in detail in Figure 5. EX1001 at 13:1-2 (“Referring now to FIG.
`
`5, configuration operations from block 232 will now be further described.”)
`
`Second, the ‘466 patent specifically states that installing software (i.e.,
`
`application programs) on a server is accomplished by defining the software to the
`
`database on the server:
`
`As will be further described with reference to the flowcharts, an
`administrator then defines users and groups of users that will have
`access to the applications installed on the server and installs the
`software defining it to the database 208 on server system 22.
`
`EX1001 at 8:60-64. The phrase “defining it to the database” is used synonymously
`
`with “installs” in this disclosure, and Figure 5 provides the only disclosure for how
`
`application programs are defined to the database (i.e., installed). See, e.g.,
`
`EX1001 at 13:2-5 (“[S]erver system 22 accepts definitions of the application that
`
`describe the location and description of the application.”), 13:7-10 (“The server
`
`system 22 further accepts definitions of users and groups that will access the
`
`system and the specific application (block 252).”), 13:15-18 (“The server system
`
`8
`
`
`
`22 further accepts control specifications defining which users and groups are
`
`authorized to access the new or updated application (block 256).”), 13:20-23
`
`(“[S]erver system 22 updates database 208 to maintain the input definitions and
`
`specifications for the new or updated application in a format accessible to server
`
`system 22 (block 258)”); see generally EX1001 at 13:1-23, Fig. 5. Once again, the
`
`specification’s use of “installs” in col. 8 is a clear corollary to the claimed function
`
`of “installing.” Figure 5 is “clearly linked” to the claimed function. The ‘466
`
`patent even discloses an embodiment where the installation occurs automatically
`
`because the on-demand server “includes the ability to import the necessary
`
`definitional information and create the appropriate files to install and register a
`
`transferred file packet containing an application program on the local server . . . .”3
`
`3
`This alternative embodiment is discussed in the context of Figure 8, the
`
`Figure in which the Board found corresponding structure. However, the only step
`
`of Figure 8 even arguably associated with installation is step 120 (not identified by
`
`the Board as structure), where installation is described in the context of updating
`
`“configuration information.” EX1001 at 18:7-25 (“At block 120, the on-demand
`
`server 22, 22’ updates the appropriate file and configuration information to make
`
`the new application program available to users. … The new application software
`
`package is therefore installed and ready for use on each designated on-demand
`
`server 22, 22’.”) (cited in Petition at 9). Even here, the application is installed by
`
`9
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`
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`EX1001 at 17:40-51 (cited in Petition at 19); see also EX1001 at 19:22-31, 17:17-
`
`24.
`
`Finally, Petitioner notes that Patent Owner agrees that the configuration
`
`operations of Figure 5 (described at 13:1-23) are clearly linked to the claimed
`
`function. In particular, Patent Owner identified the following as corresponding
`
`structure for the “means for installing” limitations:
`
`a processor executing computer program instructions, as described in
`12:1-24, implementing the algorithms described in connection
`with FIG. 4, FIG. 5, FIG. 8, and FIG. 9C and at 12:25-30, 13:1-23,
`14:24-53, 17:17-51, 18:3-32, 20:1-59
`
`Patent Owner’s Preliminary Response (Paper 11, hereinafter “Prelim. Resp.”) at 7
`
`(emphasis added).
`
`C. The Decision Misapprehended and/or Overlooked that Steps 112-
`116 of Figure 8 Are Not Clearly Linked to the Function of
`Installing.
`
`
`
`The Board found that steps 112–116 of Figure 8 and the associated
`
`description at 17:55–67 “have the required clear linkage or association to the
`
`recited function.” Decision at 11. In identifying steps 112–116 of Figure 8 as the
`
`only disclosed structure clearly linked to the claimed function, the Board
`
`misapprehended and/or overlooked that the Figure 8 steps relate only to the
`
`defining it to the database (EX1001 at 17:40-51), which is only disclosed by the
`
`algorithm discussed with respect to Figure 5.
`
`10
`
`
`
`function of sending a new application package to a server, and have nothing to do
`
`with installing the program on the server. EX1001 at 17:55-67.
`
`Specifically, the ‘466 patent expressly distinguishes between sending the
`
`application program (i.e., the code associated with underlying application program
`
`functions) and installing the application program:
`
`[W]ith a request from a single Tivoli™ server 20 location, an
`administrator both sends a new application package to all supported
`on-demand servers and installs and configures (registers) it to be
`available for use.
`
`EX1001 at 18:26-28 (emphasis added); see also 12:26-31 (receiving application
`
`program for installation and separately performing configuration operations to
`
`install the application). Here, the use of “both” with ”and” in combination clearly
`
`distinguishes
`
`between
`
`“sending”
`
`on
`
`the
`
`one
`
`hand
`
`and
`
`“installing/configuring/registering” on the other. Steps 112 and 114 of Figure 8
`
`relate to steps performed in preparation for sending the application package, and
`
`step 116 specifically covers the sending, or “distributing,” of the application
`
`package. Id. The description of steps 112–116 contains no mention of “installing”
`
`and are not even arguably linked to the claimed function. Indeed, the function of
`
`sending the application to the server is not claimed in the ‘466 patent at all.
`
`11
`
`
`
`D. The Decision Overlooked
`that
`and/or Misapprehended
`Sonderegger in view of Hughes Discloses “Installing A Plurality of
`Application Programs.”
`
`The Board misapprehended and/or overlooked that, as articulated in the
`
`Petition, Sonderegger in view of Hughes discloses “installing” as described in the
`
`‘466 patent. See Sections A-C, infra. Specifically, Sonderegger in view of Hughes
`
`discloses defining application programs to a database as described in the ‘466
`
`patent, and, in so doing, Sonderegger in view of Hughes discloses the algorithm of
`
`Figure 5 of the ‘466 patent, which is clearly linked to the recited function of
`
`“installing a plurality of application programs at a server.” Petition at 19-28.
`
`Moreover, the installation of application programs described in Sonderegger
`
`as combined with Hughes matches the installation of “application programs” in the
`
`‘466 patent. The Board construed the term “application program” as “code
`
`associated with underlying application program functions,” but found that, as to
`
`claim 1, “Sonderegger’s application objects do not comport with that construction
`
`because they contain only information about application programs (i.e., the
`
`location of an executable code for a given application, an icon, a working directory
`
`name, drive mappings, printer port captures, command line parameters, and similar
`
`information).” Decision at 15. How the Board determined that Sonderegger’s
`
`application objects are not “code associated with underlying application program
`
`functions” is not clear. The Board’s determination appears to mirror Patent
`
`12
`
`
`
`Owner’s suggestion that the ‘466 patent “distinguish[es] between application
`
`programs and mere database representations thereof” (Prelim. Resp. at 17).
`
`Notwithstanding, the ‘466 patent consistently and exclusively refers to “installing”
`
`in terms of configuration operations.4 See Sections A-C, infra. These configuration
`
`operations define, for example, the location of the underlying executable code to
`
`the database. EX1001 at 13:2-12. This act of defining objects associated with
`
`underlying executable code is “installation” in the ‘466 patent. Just like the ‘466
`
`patent, Sonderegger discloses “installing” application programs on a server by
`
`defining them as application objects to the database. Petition at 19-28.
`
`Second, the Board misapprehended and/or overlooked that the Petition
`
`identified that Sonderegger also expressly discloses that the application programs
`
`themselves (i.e., the code associated with underlying application program
`
`functions) are stored on a network drive accessible to the database server on which
`
`the application objects are stored. For example, the application programs are
`
`4
`Patent Owner repeatedly asserts that the claims of the ‘466 patent require
`
`that “the application program is itself installed (as opposed to just an object
`
`representative thereof).” See, e.g., Prelim. Resp. at 9-10. As support, Patent
`
`Owner cites to disclosure in the ‘466 patent that applications programs are
`
`“distributed” to (or sent to) the on-demand server – disclosure that has nothing to
`
`do with “installing” as discussed in Section C herein.
`
`13
`
`
`
`depicted in Figure 2 of Sonderegger as item 23 and the application objects are
`
`depicted as item 49:
`
`EX1002, Sonderegger at Fig. 2 (cited in Petition at 19). Sonderegger expressly
`
`
`
`discloses:
`
`With reference to FIGS. 1 and 2, administration and use of the
`network 10 are supported by network software and hardware
`elements, by administrator tools, and by user tools. FIG. 2 illustrates
`the relationship between these components. The network 10 includes a
`variety of resources 22, such as the printers 18, the disk array 20 and
`other storage devices, and applications 23 and data that are stored on
`one or more of the file servers 14 and user stations 16.
`
`EX1002, Sonderegger at 4:66-5:6 (cited in Petition at 19); see also EX1002 at
`
`7:11-20 (“The addition of application objects 49 to the database 38 and other
`
`features of the present invention make application programs 23 available to
`
`14
`
`
`
`network administrators and users in a previously unknown, uniform, convenient,
`
`and efficient manner.”) (cited in Petition at 19); see also EX1002 at 13:32-45, Fig.
`
`1 (cited in Petition at 21, 19).
`
`IV. CONCLUSION
`
`In view of the foregoing, Petitioner respectfully requests that the Board
`
`reconsider its Decision and institute inter partes review of claims 1, 2, 7, 8, 15–17,
`
`22, 23, 30, 35, and 36 of the ‘466 patent.
`
`
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`Date: December 1, 2017
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`Respectfully submitted,
`ERISE IP, P.A.
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`BY: /s/ Eric A. Buresh
`
`
`Eric A. Buresh, Reg. No. 50,394
`Counsel for Petitioner
`
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`15
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`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that on December
`1, 2017, a true and correct copy of this PETITIONERS’ REQUEST FOR
`REHEARING UNDER 37 C.F.R. § 42.71(d) was served on the counsel for Patent
`Owner by electronic means.
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`CERTIFICATE OF SERVICE ON PATENT OWNER
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`BY:
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`ERISE IP, P.A.
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` /s/ Mark C. Lang
`
`
`Eric A. Buresh, Reg. No. 50,394
`Mark C. Lang, Reg. No. 55,356
`Kathleen D. Fitterling, Reg. No. 62,950
`6201 College Blvd., Suite 300
`Overland Park, KS 66211
`P: (913) 777-5600
`F: (913) 777-5601
`eric.buresh@eriseip.com
`mark.lang@eriseip.com
`kathleen.fitterling@eriseip.com
`
`ATTORNEYS FOR PETITIONERS
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`
`
`
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