UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UBISOFT, INC. AND SQUARE ENIX, INC.,
`Petitioner
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
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`IPR2017-01291
`PATENT 6,728,766
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UBISOFT, INC. AND SQUARE ENIX, INC.,
`Petitioner
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
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`
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`IPR2017-01291
`PATENT 6,728,766
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`IPR2017-01291
`U.S. Patent 6,728,766
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`Tables of Contents
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`
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`I.
`
`INTRODUCTION
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`II.
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`THE '766 PATENT
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`
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`
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`Effective Filing Date
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`Overview of the '766 Patent
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`III. THE PETITION FAILS TO ESTABLISH A REASONABLE
`LIKELIHOOD THAT AT LEAST ONE OF THE CHALLENGED
`CLAIMS IS UNPATENTABLE
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`
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`Claim Construction
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`1
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`2
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`2
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`2
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`4
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`4
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`5
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`6
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`9
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`“means for maintaining license management policy
`information for a plurality of application programs at a
`license management server, the license management
`policy information including at least one of a user identity
`based policy, an administrator policy override definition
`or a user policy override definition” (Claim 7)
`
`“means for receiving at the license management server a
`request for a license availability of a selected one of a
`plurality of application programs from a user at a client”
`(Claim 7)
`
`“means for determining the license availability for the
`selected one of the plurality of application programs for
`the user based on the maintained license management
`policy information” (Claim 7)
`
`1.
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`2.
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`3.
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`4.
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`“means for providing an unavailability indication to the
`client responsive to the selection if the license availability
`indicates that a license is not available for the user or an
`availability indication if the licensed availability indicates
`that a license is available for the user” (Claim 7)
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`10
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`
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`No Prima Facie Anticipation for “receiving at the license
`management server a request for a license availability of a
`
`ii
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`
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`selected one of the plurality of application programs from
`a user at a client”
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`11
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`IPR2017-01291
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`US. Patent 6,728,766
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`C.
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`D.
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`E.
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`No Prima Facie Anticipation for “determining the license
`availability for
`the selected one of the plurality of
`application programs for the user based on the maintained
`license”
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`Additional Deficiencies in the Means-Plus-Function Analysis
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`No Prirna Facie Anticipation for the Dependent Claims
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`V.
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`CONCLUSION
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`15
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`19
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`21
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`21
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`Table of Exhibits for Patent Owner Prelimina Res onse
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`Exhibit
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`Ex. 2001
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`Ex. 2002
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`Construction Brief, Dkt. No. 150.
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`Declaration of Dr. Val DiEuliis
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`Ubisoft, Inc. et a]. v. Uniloc USA, Inc. et 0]., Case No. 2:16-cv-
`00393-RWS
`(lead
`case),
`Petitioner’s Responsive Claim
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`iii
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`IPR2017-01291
`U.S. Patent 6,728,766
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`I.
`
`INTRODUCTION
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`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107(a), Uniloc Luxembourg
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`S.A. (“Patent Owner”) submits this Preliminary Response to the Petition for Inter
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`Partes Review (“the Petition”) of U.S. Patent No. 6,728,766 (“the '766 Patent”) filed
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`by Ubisoft, Inc. and Square Enix, Inc. (“Petitioner”).
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`The Petition is facially deficient for several reasons. The Petition contains
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`little more than quotations of the challenged claim language, followed by
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`unexplained citations to the only cited reference (EX1001), thereby impermissibly
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`expecting the Board and the Patent Owner to only guess as to how the quoted
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`disclosure allegedly anticipates the claim language in question. Even worse, the
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`Petition provides no expert declaration in support of the conclusory attorney
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`arguments contained therein. Consequently, the opinions on dispositive issues in the
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`attached declaration of Dr. Val DiEuliis (EX2001) are uncontroverted.
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`The Petition also relies on claim construction positions Petitioner has since
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`repudiated in unequivocal statements made before the district court in co-pending
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`litigation involving the same parties. To be clear, Petitioner’s contradictory claim
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`construction arguments made in court cannot be rescued by invoking the Broadest
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`Reasonable Interpretation (“BRI”) standard applied before the Board. The applicable
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`claim construction standards converge on the specific claim construction issues
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`injected by the Petition, as explained further below.
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`1
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`IPR2017-01291
`U.S. Patent 6,728,766
`In view of the reasons presented herein, the Petition should be denied in its
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`entirety as failing to meet the threshold burden of proving there is a reasonable
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`likelihood that at least one challenged claim is unpatentable.
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`II. THE '766 PATENT
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` Effective Filing Date
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`The '766 Patent is titled “Methods, Systems and Computer Program Products
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`for Distribution of Application Programs to a Target Station on a Network.” EX1001
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`at [54]. The '766 issued from U.S. Patent Application No. 09/829,854, which is a
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`divisional of U.S. Patent Application No. 09/211,529 (now U.S. Patent No.
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`6,324,578). EX1001 at [62]. Thus, the effective filing date for the '766 Patent is
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`December 14, 1998, which is the filing date of its parent application. The '766 Patent
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`issued on April 27, 2004 and was originally assigned to the International Business
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`Machines Corporation (“IBM”). EX1001 at [73].
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` Overview of the '766 Patent
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`The '766 Patent relates to managing license-compliant use of application
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`programs within a heterogeneous computer network environment. EX1001, 1:21-
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`23; 3:24-36; 5:37-6:9. Preferred embodiments centralize license management for
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`authorized users, who may access application programs from various client stations
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`across the managed network over time, to ensure compliance with certain license
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`restrictions. License policy information is centrally maintained (e.g., at a central
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`2
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`IPR2017-01291
`U.S. Patent 6,728,766
`server) so that “the entire process [can] be controlled from a single point for an entire
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`managed network environment.” Id. In certain embodiments, a server may determine
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`license availability and provide application programs on-demand to an authorized
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`user who has logged into a client supported by the server.
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`Claims 1, 7, and 13 are the independent claims of the '766 Patent. Claim 1 is
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`reproduced below:
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`1. A method for management of license use for a network comprising
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`the steps of:
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`[a] maintaining license management policy information for a plurality
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`of application programs at a license management server, the license
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`management policy information including at least one of a user identity
`
`based policy, an administrator policy override definition or a user policy
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`override definition;
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`[b] 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
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`a user at a client;
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`[c] determining the license availability for the selected one of the
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`plurality of application programs for the user based on the maintained
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`license management policy information; and
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`[d] providing an unavailability indication to the client responsive to the
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`selection if the license availability indicates that a license is not available
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`for the user or an availability indication if the licensed availability
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`indicates that a license is available for the user.
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`3
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`IPR2017-01291
`U.S. Patent 6,728,766
`III. THE PETITION FAILS TO ESTABLISH A REASONABLE
`LIKELIHOOD THAT AT LEAST ONE OF THE CHALLENGED
`CLAIMS IS UNPATENTABLE
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`The Petition alleges 1, 3, 7, 9, 13, and 15 are “anticipated under §§102(a)
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`and/or (e)” by US 5,758,069 (“Olsen”) [EX1002]. Petitioner has the burden of proof
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`to establish it is entitled to its requested relief. 37 C.F.R. § 42.108(c). Petitioner
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`“must specify where each element of the claim is found in the prior art patents or
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`printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). The Board should deny
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`institution because Petition has not meet this threshold evidentiary burden.1
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` Claim Construction
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`Pursuant to 37 C.F.R. § 42.100(b), and for the purposes of this review, Patent
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`Owner construes the claim language such that the claims are given their broadest
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`reasonable interpretation in light of the specification of the '766 Patent.
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`The Petition only offers proposed constructions for independent Claim 7.
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`While Patent Owner agrees in principle that independent Claim 7 recites means-plus-
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`function limitations that invoke pre-AIA 35 U.S.C. § 112, ¶6, the Petition injects
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`disputes over the relevant corresponding structure disclosed in the '766 Patent, as
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`explained further below.
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`1 While certain deficiencies in the Petition are addressed herein, Patent Owner
`hereby expressly reserves the right to address other deficiencies of the Petition in a
`full Response if an inter partes review is instituted.
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`4
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`1.
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`IPR2017-01291
`U.S. Patent 6,728,766
`“means for maintaining license management policy information
`for a plurality of application programs at a license management
`server, the license management policy information including at
`least one of a user identity based policy, an administrator
`policy override definition or a user policy override definition”
`(Claim 7)
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`The parties agree the stated function for this limitation (as cited in Claim 7) is
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`“maintaining license management policy information for a plurality of application
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`programs at a license management server, the license management policy
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`information including at least one of a user identity based policy, an administrator
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`policy override definition or a user policy override definition”. The Petition
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`implicitly injects a dispute, however, over the corresponding structure.
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`The Petition suggests “[t]he disclosed structure is a database and equivalents
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`thereof.” Pet. 3 (citing only EX1001, 12:50-52 and 5:40-42). Petitioner’s
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`construction risks overlooking the requirement that the means must reside “at a
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`license management server”, as expressly recited in Claim 7. That claimed
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`requirement is reflected in both citations to the '766 Patent specification offered in
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`the Petition: (1) “[l]icense management policy information for a plurality of
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`application programs is maintained at a license management server” (EX1001, 5:40-
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`42, emphasis added); and (2) “[p]ursuant to the teachings of the present invention,
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`server system 22 stores license use management policy information in a hierarchal
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`centralized preference database 208” (Id., 12:50-52). Given that acknowledged
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`disclosure, it is misleading to suggest the means for this limitation to be a “database”
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`5
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`U.S. Patent 6,728,766
`in general—i.e., one that may be divorced from the claimed “license management
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`server”.
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`The Petition also overlooks algorithmic structure corresponding to this
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`limitation. Specifically, the specification discloses a processor executing computer
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`program instructions, as described in col. 7:26-50 of the '766 Patent (EX1001),
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`implementing the algorithms described at least at cols. 5:38-61, 11:32-38, 12:37-62,
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`13:29-32, and 13:42-47.
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`Notably, the Petition does not identify “application programs” as a term that
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`requires construction. During litigation, however, the Petitioner submitted that
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`“application programs” should be construed to mean “application level software
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`program code for underlying application level functions that executes locally at the
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`client as a separate application from the browser”. In doing so, Petitioner emphasized
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`“definitional statements and disclaimers in the Specifications and relevant file
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`histories of the Asserted Patents” (including the '766 Patent). EX2002 at p. 5; see
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`also id. at p. 5 n.6 (citing U.S. Patent No. 6,510,466 (“the '466 Patent”) at 14:24-26,
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`which the '766 Patent incorporates by reference).
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`2.
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`“means for receiving at the license management server a request
`for a license availability of a selected one of a plurality of
`application programs from a user at a client” (Claim 7)
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`The parties agree the stated function for this limitation (as recited in Claim 7)
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`is “receiving at the license management server a request for a license availability of
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`6
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`IPR2017-01291
`U.S. Patent 6,728,766
`a selected one of a plurality of application programs from a user at a client”. The
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`Petition merely offers the following conclusory statement: “the disclosed structure
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`is [on-demand] server 22 that is programmed” to perform that function. Pet. 3 (citing
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`EX1001, 10:6-11, 66-67, and 11:3-8). That ipse dixit statement leaves several
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`fundamental claim construction questions unanswered and risks interpreting this
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`claim language in a manner too attenuated from the express disclosure.
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`First, Petitioner does not clarify whether it considered the disclosed “on-
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`demand server 22” to refer to a distinct and dedicated physical device, to software
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`operating as a “server” and programed to perform the claimed function, or to a
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`combination of both. Petitioner also truncates the “on-demand” portion of the
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`element repeatedly identified in the specification as the “on-demand server 22,22'”.
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`Since filing the Petition, Petition drew the district court’s attention to the fact
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`that “the '766 patent incorporates by reference the description of [on-demand] server
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`22 from the application that led to the '466 patent.” EX2002 at p. 25 (citing ‘766
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`Patent, 7:17-21 (“An on-demand server which may be modified according to the
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`present invention is described in U.S. patent application Ser. No. 09/211,528 which
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`is incorporated herein by reference in its entirety.”)). The '466 Patent states “[a]s
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`used herein, ‘on-demand’ refers to a server delivering applications as needed
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`responsive to user requests as requests are received.” At a minimum, that
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`lexicography confirms it would be inappropriate to consider the disclosed “on-
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`7
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`IPR2017-01291
`U.S. Patent 6,728,766
`demand server” apart from its defining “on-demand” feature, as Petitioner appears
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`to do. Also instructive is incorporated Figure 2 of the '466 Patent, which illustrates
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`“an embodiment of the on-demand server” as a “server system 22” that includes
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`multiple servers (204 and 206) and a database (208). '466 Patent, 7:49:53.
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`Second, the Petition does not expressly articulate how Petitioner interpreted
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`the phrase “license availability,” as recited in the identified functional language for
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`this limitation. During claim construction proceedings before the district court,
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`however, Petitioner argued the intrinsic evidence contains a disclaimer confirming
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`that “‘license availability’ is ‘distinct from any determination that the user is
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`authorized to access the selected application program.’” EX2002 at p. 23 n.11. As
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`will be shown, Petitioner’s application of the art cited in the Petition is contravened
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`by Petitioner’s own disclaimer argument advanced in court. Petitioner’s self-
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`contradicting arguments cannot be rescued by invoking the broadest reasonable
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`construction standard applied before the Board. The applicable standards converge
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`on whether there is disclaimer in the intrinsic evidence.
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`Third, the Petitioner’s short-shrift claim construction analysis also overlooks
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`certain additional structure corresponding to this limitation. For example, the
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`specification discloses a processor executing computer program instructions, as
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`described in col. 7:26-50 of the '766 Patent (EX1001), implementing the algorithms
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`described at least at cols. at 5:38-61, 11:32-38, 12:37-13:18, 13:36-38, FIG. 5 (e.g.,
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`8
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`IPR2017-01291
`U.S. Patent 6,728,766
`block 186); and further described in the incorporated '466 Patent at col. 13:58-14:1
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`and 14:9-23.
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`3.
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`“means for determining the license availability for the selected
`one of the plurality of application programs for the user based
`on the maintained license management policy information”
`(Claim 7)
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`The parties agree the stated function for this limitation (as recited in Claim 7)
`
`is “determining the license availability for the selected one of the plurality of
`
`application programs for the user based on the maintained license management
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`policy information”. The Petition alleges “[t]he disclosed structure is [the on-
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`demand] server 22 that is programmed” to perform the recited function. Pet. 3 (citing
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`10:9-10; see also id. at 10:6-15, 4:62-67, 11:3-8, Fig. 3 (block 78)). That ipse dixit
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`leaves unaddressed certain aspects of the recited claim language (e.g., the “license
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`availability” discussed above).
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`Additionally, Petitioner overlooks certain additional structure corresponding
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`to this limitation. For example, the specification (including the incorporated
`
`portions) discloses a processor executing computer program instructions, as
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`described in col. 7:26-50 of the '766 Patent (EX1001), implementing the algorithms
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`described at least at cols. 5:38-61, 11:32-38, 12:37-46, 12:50-14:12, FIG. 5 (e.g.,
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`blocks 188, 190, 192); and further described in the incorporated '466 Patent at cols.
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`13:58-14:1 and 14:9-23.
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`9
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`4.
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`IPR2017-01291
`U.S. Patent 6,728,766
`“means for providing an unavailability indication to the client
`responsive to the selection if the license availability indicates that
`a license is not available for the user or an availability indication
`if the licensed availability indicates that a license is available for
`the user” (Claim 7)
`
`The parties agree the stated function for this limitation (as recited in Claim 7)
`
`is “providing an unavailability indication to the client responsive to the selection if
`
`the license availability indicates that a license is not available for the user or an
`
`availability indication if the licensed availability indicates that a license is available
`
`for the user.” Petitioner acknowledges, only with respect to this limitation, that “the
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`'766 Patent incorporates by reference U.S. Patent No. 6,510,466 (EX1001 at 7:17-
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`21, 11:27-30).” Pet. 5. Citing an example embodiment from the '766 Patent, the
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`Petition argues the disclosed structure corresponding to the recited function is
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`“server system 22 programmed to provide an error message if no licenses are
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`available and to allow execution of the requested application if a license is available,
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`and equivalents thereof.”
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`Petitioner’s proposed construction should be rejected as attempting to rewrite
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`the functional language under the guise of identifying corresponding structure
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`disclosed in the '466 Patent. The functional claim language already identifies what
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`is provided: “an unavailability indication … [which] indicates that a license is not
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`available for the user.” Petitioner cannot restrict that admitted functional language
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`to an optional species thereof—i.e., to the “error message” of certain embodiments.
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`U.S. Patent 6,728,766
`Additionally, Petitioner overlooks certain structural disclosure corresponding
`
`to this limitation. For example, the specification (including the incorporated
`
`portions) discloses a processor executing computer program instructions, as
`
`described in col. 7:26-50 of the '766 Patent (EX1001), implementing the algorithms
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`described at least at col. 5:44-53; and further described in the incorporated '466
`
`Patent at cols. 13:58-14:1 and 14:9-23.
`
` No Prima Facie Anticipation for “receiving at the license
`management server a request for a license availability of a selected
`one of the plurality of application programs from a user at a client”
`
`The Petition fails at least to present a prima facie case of anticipation for
`
`“receiving at the license management server a request for a license availability of a
`
`selected one of the plurality of application programs from a user at a client”, as
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`recited in each challenged claim. The Petition deviates from the “receiving” claim
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`language by asserting, instead, that “Olsen discloses that server 104 receives a
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`request for a license to a specified application program.” Pet. 12 (emphasis added).
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`Petitioner’s anticipation theory is untenable for at least three overarching
`
`reasons. First, the intrinsic evidence confirms “a request for a license” is
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`distinguishable from “a request for license availability” as claimed. Second,
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`Petitioner also overlooks the requirement that the request is received “from a user at
`
`a client” and that “availability” in that context refers to whether a license is available
`
`for that user in particular, as opposed to the user’s client device in general. This
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`11
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`IPR2017-01291
`U.S. Patent 6,728,766
`specific point of distinction was successfully raised during prosecution and the
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`Board need not and should second-guess that finding. Finally, the Petition has the
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`burden of proof yet it provides no articulated reasoning, with rational underpinning,
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`in support of its conclusory attorney arguments, let alone any supportive evidence
`
`in the form of expert testimony.
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`The '766 Patent specification provides instructive examples of user-based
`
`license availability requests. In a particular embodiment, “users associated with the
`
`headquarters operations or network management department could be made exempt
`
`from license count limits while everyone else is subject to license count limits.”
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`EX1001, 14:6-12. Thus, according to the teachings of the '466 Patent, the outcome
`
`of a license availability request may be different depending on which authorized user
`
`makes the request, even if the same machine is used.
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`The prosecution history of the '466 Patent also provides insight as to the
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`significance of the above limitations which Petitioner overlooks in its analysis.
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`Applicants successfully distinguished this claim language, among other limitations,
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`from a cited reference that “receives a request for a license from one of the ‘client
`
`computer systems’, determines whether the license is ‘available to [the requesting
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`one of the] computer systems’.” EX1005, p. 136 (emphasis added, bracketed text
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`original). Similarly, another cited reference was successfully distinguished because
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`it “manages licenses by determining whether an application is allowed for a
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`12
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`computer on a network within an enterprise.” Id. (emphasis added). In contrast to
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`those machine-specific requests, Applicant argued, and the Examiner ultimately
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`agreed, “the present invention associates license requests with users.” Id.; see also
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`Pet. at p. 7 (acknowledging that during prosecution Applicants successfully “argued
`
`that the Examiner’s references ‘appear to relate to management of licenses based on
`
`requesting clients or computers or applications, not based on requesting users.’”).
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`Accordingly, the prosecution history confirms Petitioner has not and cannot meet its
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`threshold evidentiary burden for anticipation by simply ignoring certain vital and
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`defining aspects of the “receiving” limitation.
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`The Petition provides multiple (and unexplained) block quotations from Olsen
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`which confirm that Olsen is analogous to the art already successfully distinguished
`
`by Applicants during prosecution. Pet. 12. Relevant excerpts from those block
`
`quotations in the Petition are provided in list form below:
`
` “receiving requests from clients 106” (id., citing EX1002, 3:54-61);
` “client 106 may request licenses for access to applications (id., citing
`EX1002, 3:54-61);
` “LSP 110 receives the request for a number of license units from
`client 106 (id., citing EX1002, 3:54-61);
` “To request an application, the client assembles a request having the
`desired license criteria, (step 810)” (id., citing EX1002, 2:3-47); etc.
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`Olsen does not disclose in the cited portions that it associates license-availability
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`requests with users. In contrast, the cited portions (including those copied above)
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`13
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`IPR2017-01291
`U.S. Patent 6,728,766
`mirror similar statements found in the references successfully distinguished during
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`prosecution. In addressing the “receiving” limitations the Petition does not articulate
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`any reason to conclude otherwise. See Pet. 12-15.
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`The Board has repeatedly found that denial is proper when “same or
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`substantially the same prior art or arguments” were made in original prosecution.
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`Dorco Co. v. Gillette Co., IPR2017-00500, Paper 7 at 18 (P.T.A.B. June 21, 2017);
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`Apple Inc. v. Uniloc USA, Inc., IPR2017-00224, Paper 7 (P.T.A.B. May 25, 2017).
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`The Board should continue those holdings here to provide public notice and remain
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`consistent with the findings made during prosecution.
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`The Petition should also be rejected as merely offering partial-quotations of
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`the “receiving” claim language, followed by disparate block quotations from Olsen,
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`without providing any analysis or explanation for how those quotations allegedly
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`anticipate the claim language in question. No expert declaration is attached to the
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`Petition as alleged support for the conclusory attorney arguments contained therein.
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`Such a di minimis approach does not establish a prima facie case of anticipation.
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`See, e.g., Ex Parte Christopher James Brown & Ben James Hadwen, Appeal No.
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`2013-001448, 2015 WL 1325459, at *3 (P.T.A.B. Mar. 23, 2015) (finding the
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`burden of showing prima facie anticipation was not met by merely pointing to two
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`figures of a reference and their corresponding descriptions without any explanation
`
`as to how those citations describe recited limitations at issue).
`
`14
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`IPR2017-01291
`U.S. Patent 6,728,766
`Petitioner has the burden to prove anticipation by articulating its reasoning for
`
`each limitation within the Petition itself. The Federal Circuit has held that the Board
`
`is not “free to adopt arguments on behalf of petitioners that could have been, but
`
`were not, raised by the petitioner during an IPR. Instead, the 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.”). See In re Magnum Oil Tools Int'l, Ltd., 829
`
`F.3d 1364, 1381 (Fed. Cir. 2016). For the foregoing reasons, the threshold
`
`evidentiary burden is not met here for the “receiving” limitations recited in Claim 1.
`
` No Prima Facie Anticipation for “determining the license
`availability for the selected one of the plurality of application
`programs for the user based on the maintained license”
`
`Petitioner argues this limitation is anticipated by Olsen’s “‘security
`
`equivalency check’ to determine whether the requesting user is among those
`
`assigned to the license certificate.” Pet. 16. Petitioner has since repudiated its
`
`“security equivalency check” argument by expressing to the district court that the
`
`claimed “‘license availability’ is ‘distinct from any determination that the user is
`
`authorized to access the selected application program.’” EX2002 p. 23 n.11 (Ubisoft,
`
`Inc. et al. v. Uniloc USA, Inc. et al., Case No. 2:16-cv-00393-RWS (lead case), Dkt.
`
`No. 150, at p. 19 n.11).
`
`Petitioner cannot have it both ways. There is a century-old old maxim that
`
`patent claims may not be treated as a “nose of wax” and interpreted one way for
`
`15
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`
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`IPR2017-01291
`U.S. Patent 6,728,766
`purposes of avoiding infringement and another way for challenging patentability.
`
`White v. Dunbar, 119 U.S. 47, 51 (1886). Petitioner’s contradictory arguments
`
`cannot be rescued by invoking the broadest reasonable interpretation standard
`
`applied before the Board. The applicable claim construction standards converge on
`
`the issue of whether there is disclaimer in the intrinsic evidence; and Petitioner
`
`argues before the district court that disclaimer exists.
`
`In its claim construction briefing before the district court, Petitioner explained
`
`its disclaimer argument by first discussing the specification of U.S. Pat. Nos.
`
`6,510,466 (“the '466 Patent”), which the '766 Patent incorporates by reference. See
`
`EX1001, 7:17-21; see also Pet. 5 (acknowledging the same). For the convenience of
`
`the Board, Petitioner’s arguments before the court are copied below:
`
`Turning to the Specifications, the described embodiments all likewise
`
`treat “authoriz[ation]” and “license availability” as separate and
`
`distinct steps. In the disclosure of the ’466 patent, for example, the
`
`on-demand server first “see[s] if the user is authorized to bring up” an
`
`application (highlighted
`
`in orange below). Then, only after
`
`determining that the user is authorized and establishing the user
`
`desktop with the authorized programs, in a second step the on demand
`
`server “processes a license request to determine if a license is
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`available for” that application (highlighted in yellow below). Ex. A,
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`’466 patent at 13:50-56, 13:58-61; FIG. 6-7: as follows:
`
`16
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`IPR2017-01291
`U.S. Patent 6,728,766
`
`EX2002 at pp. 24-25, (Ubisoft, Inc. et al. v. Uniloc USA, Inc. et al., Case No. 2:16-
`
`cv-00393-RWS (lead case), Dkt. No. 150, pp. 20-21 as originally filed).
`
`
`
`Petitioner then offered additional arguments specific to the '766 Patent:
`
`
`
`The ’766 patent similarly incorporates this distinction between
`
`“determin[ing] the license availability for the selected one of the
`
`plurality of application programs” and “determining if a user
`
`requesting execution of the application program is one of the plurality
`
`of authorized users.” First, the ’766 patent incorporates by reference
`
`the description of server 22 from the application that led to the ’466
`
`patent. See Ex. B, ’578 patent at 7:17-21. Second, the ’766 patent
`
`refers
`
`to “combin[ing]”
`
`license use management with user
`
`authorization to “further control access to managed application
`
`17
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`IPR2017-01291
`U.S. Patent 6,728,766
`programs,” treating these as separate actions. See id. at 4:62-67; see
`
`also id. at 5:45-53.
`
`Id. p. 25.
`
`
`
`Petitioner also submitted to the court that “[d]uring prosecution of the '466
`
`patent, the Applicants in fact distinguished claim 9 from the prior art on this basis,
`
`arguing that ‘verifying license availability’ is ‘distinct’ from ‘determining whether
`
`a user is authorized to access a resource.’” Id. (citing '466 patent file history at May
`
`31 remarks).
`
`
`
`Given Petitioner’s more recent interpretation of the intrinsic evidence, as
`
`submitted to the court, Petitioner cannot now reasonably argue before the Board that
`
`Olsen’s “security equivalency check” anticipates “determining the license
`
`availability … for the user” as claimed. If Petitioner is correct that “‘license
`
`availability’ is ‘distinct from any determination that the user is authorized to access
`
`the selected application program”, then there can be no anticipation by Olsen
`
`because, as Dr. DiEuliis testifies, Olsen’s “security equivalency check” “is a
`
`determination that the user is authorized to access the selected application program”,
`
`as least under Petitioner’s analysis of the alleged prosecution disclaimer. EX2002 ¶¶
`
`16-24. That expert testimony is uncontroverted. If anything, Petitioner’s own
`
`characterization of the “security equivalency check” in Olsen verifies Dr. DiEuliis’
`
`conclusion. See, e.g., Pet. 16-17.
`
`18
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`IPR2017-01291
`U.S. Patent 6,728,766
`Accordingly, for the foregoing additional and independent reasons, the Board
`
`should deny institution and save Petitioner from having to argue out of both sides of
`
`its mouth.
`
` Additional Deficiencies in the Means-Plus-Function Analysis
`
`Additional deficiencies arise in Petitioner’s means-plus-function analysis of
`
`independent Claim 7. For example, Petitioner improperly relies on two distinct
`
`elements of Olsen as allegedly anticipating the function and corresponding structure,
`
`respectively, of the “means for maintaining limitations”.
`
`Petitioner points to Olsen’s “license certificate database 112” as the structure
`
`that allegedly anticipates the “means for maintaining license management policy
`
`information for a plurality of application programs at a license management server,
`
`the license management policy information including at least one of a user identity
`
`based policy, an administrator policy override definition or a user policy override
`
`definition,” as recited in Claim 7. Pet. 22. The Petition does not explain how Olsen’s
`
`database 112 allegedly has the functional capabilities recited in Claim 7. Instead, the
`
`Petition merely offers the following conclusory statements: “Olsen discloses the
`
`claimed function. See Olsen applied to Element 1(a).” Id.
`
`In identifying Olsen’s database 112 as the corresponding structure, Petitioner
`
`evidently overlooked the fact that in its analysis of “Element 1(a)”, Petitioner
`
`exclusively relies, instead, on Olsen’s distinct LSP 110. Specifically, in addressing
`
`19
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`
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`IPR2017-012
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