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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` ____________
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`UBISOFT, INC. AND SQUARE ENIX, INC.,
`Petitioners,
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`v.
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`UNILOC USA, INC. AND UNILOC LUXEMBOURG, S.A.,
`Patent Owners.
`
`____________
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`Case No. IPR2017-01291
`U.S. Patent No. 6,728,766
` ____________
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`PETITIONER’S REPLY TO PATENT OWNER’S RESPONSE
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`PURSUANT TO 37 C.F.R. § 42.120
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`TABLE OF CONTENTS
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`INTRODUCTION ............................................................................................... 1
`I.
`A. Olsen expressly teaches receiving a request for a license availability “from
`a user at a client.” ........................................................................................ 1
`B. Patent Owner’s attempt to exclude a user’s license request from the
`claimed “license availability request” should be rejected. .......................... 6
`II. CONCLUSION .................................................................................................. 9
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`I.
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`INTRODUCTION
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`IPR2017-01291
`U.S. Patent 6,728,766
`
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`Patent Owner argues only that Olsen does not teach the following limitation
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`of claim 1: “receiving at the license management server a request for a license
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`availability of a selected one of the plurality of application programs from a user at
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`a client.” Specifically, Patent Owner argues: 1) Olsen’s request is received from
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`and associated with a user at a client; and 2) requesting a “license” is not the same
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`as requesting “license availability.” As set forth in the Petition and reiterated
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`herein, Patent Owner’s arguments are incorrect and Olsen anticipates claims 1 and
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`3 of the ‘766 Patent.
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`A. Olsen expressly teaches receiving a request for a
`availability “from a user at a client.”
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`license
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`Patent Owner argues that “nothing in Olsen discloses or suggests the license
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`management server receiving the request for a license availability from the user at
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`a client.” Patent Owner Response (“POR”) at 9 (emphasis in original). The nature
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`of Patent Owner’s argument is difficult to understand, but appears to boil down to
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`two suggestions, both of which are wrong.
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`First, Patent Owner suggests that the license availability request in Olsen is
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`not “from the user,” but is instead from a “client.” POR at 6, 7, 9. The crux of
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`Patent Owner’s argument in this regard is that Olsen may disclose a client making
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`the request in some automated fashion, not involving a user. However, Olsen
`1
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`IPR2017-01291
`U.S. Patent 6,728,766
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`expressly discloses the opposite, i.e., that the request is made by a user using a
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`client:
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` “After the license certificates have been added to license certificate
`database 112 and stored in buffer format, client 106 may request licenses
`for access to applications. Referring now to FIGS. 8A-B, when the user
`desires an application, the user suitably chooses a license by selecting a
`name from a list or an icon, and then provides suitable information
`corresponding to any required fields (step 802). …”
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`EX1002, Olsen at 10:43-11:9 (expressly quoted in full in the Petition (at 13-14));
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`see also id. at 2:38-47 (the request includes the user’s name in a disclosed
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`embodiment) (reproduced in Petition at 14), Fig. 8A (reproduced in Petition at 15).
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`After the user selects a desired license for a particular application at the client, the
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`client uses an API to prepare a request for license availability of the selected
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`application for the user and transmits the request to the LSP 110. Id. at 10:43-11:9.
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`Thus, Olsen explicitly teaches exactly what the claims require and is consistent
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`with the ‘766 Patent disclosure – that the license availability request is made from
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`a user at a client. See EX1001 (‘766 Patent) at 5:43-56 (“Requests are received at
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`the license management server for a license availability of a selected one of the
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`plurality of application programs from a user at a client. … The request may be
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`received from an application launcher program . . . .”) (emphasis added); see also
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`2
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`IPR2017-01291
`U.S. Patent 6,728,766
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`id. at 12:63-13:19 (“The application launcher is configured to read a set of license
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`policies, for example, by using the preference Application Program Interface
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`(API) for the user that is requesting initiation of an instance of the
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`application.”); see also EX1005, ‘766 File History at 119-120 (emphasizing this
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`passage from the specification). Olsen discloses the exact same process as
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`disclosed in the ‘766 patent, but in greater detail.1
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`Second, Patent Owner suggests that the license availability request in Olsen
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`is not “associated with” a user, but is instead “associated with” a client device. See
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`POR at 8 (hypothesizing about the “possibility that Olsen associates its license
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`availability requests with the client device”). Much of Patent Owner’s argument is
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`enshrined in inherency, an argument that Petitioners have never advanced.
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`Petitioners contend that Olsen expressly discloses a license management server
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`that receives a request for license availability that is “from a user at a client
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`device,” as required by the claim and set forth above and in the Petition.
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`Accordingly, Patent Owner’s arguments responsive to a fabricated inherency
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`position are wholly inapplicable.
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`1
`In contrast to the prior art considered during original prosecution, Olsen
`teaches that the “requester” is the user logged into the computer, not the computer
`itself. Compare, e.g., Olsen disclosures above with EX1005, ‘766 File History at
`p.162 (“the discussed ‘requester’ [in the prior art] is clearly the computer, not a
`user logged onto the computer”).
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`3
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`IPR2017-01291
`U.S. Patent 6,728,766
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`To the extent the Board is concerned with whether Olsen teaches that the
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`license availability request is “associated with” a user, Olsen expressly discloses
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`this precise concept in at least one embodiment. Olsen discloses an embodiment
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`where the license availability request is user-specific, being based on the user’s
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`name:
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`“To request an application, the client assembles a request having the
`desired license criteria, such as the publisher, product, version, and number
`of license units. This information is provided with other relevant
`information, such as the user's name.”
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`EX1002, Olsen at 2:38-43 (reproduced in Petition at 14).
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`“When a license is installed in LSP 110, the administrator may assign a
`license to an individual, machine, group, container, or other selected users.
`The license certificate is then only available to a user with a security
`assignment corresponding to the certificate.”
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`Id. at 8:29-35 (reproduced in Petition at 9, 12 and cited in Petition at 14). Olsen
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`further expressly confirms that the user information is “associated with” the license
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`availability request:
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` “… The user's login information is suitably used for accessing the various
`license records in the database. … The license certificate object suitably
`determines whether the license units corresponding to the license record are
`available to the requesting client by reviewing, for example, the policy
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`4
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`IPR2017-01291
`U.S. Patent 6,728,766
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`attributes of the license, the user information associated with the request,
`any existing license assignments, and the raw number of units originally
`installed. This is performed before actually obtaining the license to
`determine whether all of the required license units are available. …”
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`EX1002, Olsen at 11:21-12:17 (cited, in part, in Petition at 14; fully reproduced in
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`Petition at 16-18). Patent Owner does not acknowledge or address any of these
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`disclosures from Olsen, but instead posits that it may be “plausible” that “the
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`request applies to . . . the client device in a manner that is not user specific.” POR
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`at 7-8. This is not plausible where Olsen clearly discloses an embodiment where
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`the license availability request is associated with a user’s log-in information such
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`as a user’s name, and where this user information is expressly stated to be
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`“associated with” the request. Olsen expressly discloses an embodiment where the
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`license availability request that is both from a user and associated with a user. In
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`view of these express disclosures of Olsen, Patent Owner’s arguments fail.
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`Further, since Olsen’s teachings are express, Patent Owner’s repeated calls for the
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`application of the doctrine of inherency fall flat. Inherency is not at issue. Olsen
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`expressly teaches the limitation at issue.
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`5
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`IPR2017-01291
`U.S. Patent 6,728,766
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`Patent Owner’s attempt to exclude a user’s license request from
`the claimed “license availability request” should be rejected.
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`B.
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`Faced with the express disclosure of Olsen, Patent Owner next argues that
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`Petitioners, by pointing to a “license request” in Olsen, are reading out the
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`“availability” component of the claimed “license availability request.” This too is
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`incorrect. That a prior art disclosure calls the request a “license request” does not
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`mean that the request is not a “license availability request.” Naming convention is
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`not determinative. In fact, the ‘766 Patent disclosure uses these two terms
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`interchangeably. Incorporated into the ‘766 Patent is U.S. Patent No. 6,510,466
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`(incorporated by reference at EX1001, 7:17-21, 11:27-30), which expressly
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`describes a request for license availability as a “license request”:
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`“If the requesting user is an authorized user for the requested application,
`the server system 22 accepts a license request from the application (block
`288). If no licenses are available, the system may be configured to provide
`an error message display and stop processing (block 286). The error
`message may take the form of an unavailability indication provided to client
`station 202 if the license availability information obtained from a license
`management server, which may be system server 22 or other another server
`on the network, indicates no licenses are available for the requesting user. If
`a license is available, an instance of the requested application is executed
`and error and trace logging operations are enabled to receive error and
`trace log entries if they are sent from the application (block 290).”
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`6
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`IPR2017-01291
`U.S. Patent 6,728,766
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`EX1003, ‘466 Patent at 16:43-56; see also id. at Fig. 7 (block 288 (“License
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`Available?”)); id at 13:58-14:1 (“If the user is authorized, server system 22
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`processes a license request to determine if a license is available for the desktop
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`application (block 268).”); id. at Fig. 6 (block 268 (“License Available?”)).
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`The prosecution history of the ‘766 Patent confirms the same. There, the
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`Examiner repeatedly found that “receiving … a request for license availability”
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`was taught by the “license request” of U.S. Patent No. 5,671,412 to Christiano
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`(EX1009), which disclosed that “a license request from a computer system is
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`processed by the license server.” EX1009, Christiano at 17:55-59; EX1005, ‘766
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`File History at pp.76, 104, 152 (citing Christiano at 17:55-59 as teaching receiving
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`a request for a license availability from a user at a client). Applicants never
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`contested the Examiner’s determination that requesting “license availability” is met
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`by making a “license request” to a server.
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`There certainly could be a hypothetical situation where a “license request”
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`automatically resulted in the issuance of a license in all circumstances such that
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`there really would be no “availability” component to the request. But where the
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`“license request” is subject to a possible denial such that the request is seeking a
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`determination of either availability or unavailability, then a “license request” is a
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`“license availability request.”
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`7
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`IPR2017-01291
`U.S. Patent 6,728,766
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`Olsen clearly and expressly discloses a “license availability request” in
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`nearly the exact same manner as the ‘766 Patent. Specifically, the ‘766 Patent
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`discloses an embodiment in which the number of users that can use a particular
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`application is controlled, and the number of simultaneously logged on users is
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`counted:
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`“License use management involves controlling how many users can use a
`particular application. License use, according to the present invention, is
`managed by setting certain policies, such as the limit of the number of
`users, whether crossing the limit of users is allowed or not and how users
`are counted (simultaneous number logged on, total number of clients that
`can use the application, and so on). For many applications, the license use
`policy is initially defined by the software designer for the application that
`may or may not allow these policies to be modified by a purchaser.”
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`EX1001 at 12:39-49 (emphasis added). Olsen teaches this same embodiment:
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`limited number of users may use an application
`“[I]f only a
`simultaneously, then the value in the buffer corresponding to the number of
`units available is decremented by the number of units accorded to the
`license certificate object.”
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`EX1002, Olsen at 12:26-30; see generally id. at 11:1-12:46; Petition at pp.12-15.
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`There can be no dispute that the “license request” in Olsen is seeking an
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`availability determination for the requested license. Thus, the request is a “license
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`8
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`IPR2017-01291
`U.S. Patent 6,728,766
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`availability request.” This is further evidenced by the satisfaction by Olsen of the
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`other limitations of claim 1 that require a responsive indication of either
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`availability or unavailability – limitations that Patent Owner does not even contend
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`are missing from Olsen. Olsen expressly (not inherently) discloses a “license
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`availability request.”
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`II. CONCLUSION
`Based on the foregoing, the Board should cancel claims 1 and 3 of the ‘766
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`Patent as anticipated by Olsen.
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`Date: February 2, 2018
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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
`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
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`ATTORNEYS FOR PETITIONERS
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`9
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`Exhibit 1001
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`Exhibit 1002
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`Exhibit 1003
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`Exhibit 1004
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`Exhibit 1005
`Exhibit 1006
`Exhibit 1007
`Exhibit 1008
`Exhibit 1009
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`IPR2017-01291
`U.S. Patent 6,728,766
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`APPENDIX OF EXHIBITS
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`U.S. Patent No. 6,728,766 to Cox, et al. (“’766 Patent”), filed on
`April 10, 2001, issued on April 27, 2004
`U.S. Patent No. 5,758,069 to Olsen (“Olsen”), filed on March 15,
`1996, issued on May 26, 1998
`U.S. Patent No. 6,510,466 to Cox, et al. (“’466 Patent”), filed on
`December 14, 1998, issued on January 21, 2003
`US Patent No. 6,324,578 to Cox, et al. (“’578 Patent”), filed on
`December 14, 1998, issued on November 27, 2001
`‘766 Patent File History
`Ubisoft Complaint
`Square Enix Complaint
`List of Lawsuits
`U.S. Patent No. 5,671,412 to Christiano
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`CERTIFICATE OF WORD COUNT
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`The undersigned certifies pursuant to 37 C.F.R. § 42.24 that the foregoing
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`IPR2017-01291
`U.S. Patent 6,728,766
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`Petitioner’s Reply to Patent Owner’s Response contains 1,922 words (including all
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`headings, footnotes, and quotations), excluding any table of contents, table of
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`authorities, certificates of service or word count, or appendix of exhibits, in
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`compliance with 37 C.F.R. § 42.24, according to the Microsoft Word word-
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`processing program used to prepare this document.
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`/s/ Eric A. Buresh
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`Eric A. Buresh, Reg. No. 50,394
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`CERTIFICATE OF SERVICE ON PATENT OWNER
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`IPR2017-01291
`U.S. Patent 6,728,766
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`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that on February
`2, 2018, a true and correct copy of this PETITIONER’S REPLY TO PATENT
`OWNER’S RESPONSE was filed with the Board and served via electronic mail on
`the following lead and back-up counsel for Patent Owner:
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`Brett Mangrum (Reg. No. 64,783)
`Ryan Loveless (Reg. No. 51,970)
`James Etheridge (Reg. No. 37,614)
`Jeffrey Huang (Reg. No. 68,639)
`Etheridge Law Group
`2600 E. Southlake Blvd., Ste. 120-324
`Southlake, TX 76092
`brett@etheridgelaw.com
`ryan@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
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`Sean D. Burdick (Reg. No. 51,513)
`Uniloc USA, Inc.
`7160 Dallas Parkway, Ste. 380
`Plano, TX 75024
`sean.burdick@unilocusa.com
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`/s/Mark C. Lang
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`Mark C. Lang, Reg. No. 55,356
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