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 LUXEMBOURG S.A., INC.
`Patent Owner.
`____________
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`Case IPR2017-01291
`Patent 6,728,766 B2
`____________
`
`Record of Oral Hearing
`Held August 7, 2018
`___________
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`Before: SALLY C. MEDLEY, MIRIAM L. QUINN, and
`JESSICA C. KAISER, Administrative Patent Judges
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`UBISOFT, INC. and SQUARE ENIX, INC.,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A., INC.
`Patent Owner.
`____________
`
`Case IPR2017-01291
`Patent 6,728,766 B2
`____________
`
`Record of Oral Hearing
`Held August 7, 2018
`___________
`
`Before: SALLY C. MEDLEY, MIRIAM L. QUINN, and
`JESSICA C. KAISER, Administrative Patent Judges
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`Case IPR2017-01291
`Patent 6,728,766
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`APPEARANCES
`
`ON BEHALF OF THE PETITIONER:
` ERIC BURESH, ESQUIRE
` MARK LANG, ESQUIRE
` ERISE IP
` 7015 College Boulevard
` Oakland Park, Kansas 66211
`
`FOR THE PATENT OWNER:
` BRETT MANGRUM, ESQUIRE
` LAW OFFICES OF ANDREI POPOVICI, P.C.
` 4030 Moorpark Avenue, #108
` San Jose, California 95117
`
`
`
`The above-entitled matter came on for hearing on August 7, 2018,
`commencing at 1:30 p.m., at the U.S. Patent and Trademark Office, Texas
`Regional Office, 207 S Houston Street, #159, Dallas, Texas 75202.
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` JUDGE QUINN: We are here today to listen in the
`proceeding IPR2017-01291.
` This is the oral argument between Ubisoft, Inc. and
`Square Enix, Inc. versus Uniloc U.S.A. and Uniloc Luxembourg.
` With me are Judge Jessica Kaiser, joining us
` from the Denver hearing room, and Judge Sally Medley,
` joining us from the hearing room in Alexandria,
` Virginia.
` Let's hear from petitioner, who is here to
` make arguments today.
` MR. BURESH: Thank you, Your Honor. And Your
`Honors. I'm going to dive right in. I'm going to ask for 30
`minutes in my opening, and reserve 15 minutes for rebuttal,
`Your Honor.
` JUDGE QUINN: Okay. And your name is?
` MR. BURESH: My name is Eric Buresh. I represent
`the petitioners in this matter. I'm lead counsel.
` JUDGE QUINN: And with you? I asked for appearances
`for the record.
` MR. BURESH: My apologies, Your Honor.
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` JUDGE QUINN: (Inaudible).
` MR. BURESH: My apologies. With me is Mark Lang
`from my law firm, as well.
` JUDGE QUINN: Okay. Welcome.
` MR. BURESH: Thank you.
` JUDGE QUINN: And for patent owner?
` MR. MANGRUM: Good afternoon, Your Honor, and Your
`Honors attending remotely. My name is Brett Mangrum. I am
`lead counsel for Uniloc Luxembourg SA, Inc. I will be
`presenting today on behalf of patent owner.
` JUDGE QUINN: Thank you. Before we begin, let's
`start with some housekeeping matters regarding the
`demonstratives.
` We have received from both parties objections to
`each other's slides, and we have reviewed them, and we are
`overruling the objections to the demonstratives. So, reminder
`that demonstratives are not evidence, they're just here to --
`for you to illustrate your positions as they are briefed.
` To the extent that there are objections concerning
`the substance of the briefing that would be outside the
`scope, or arguments that are outside the scope of what is
`permissible per our rules, you can make that argument while
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`you have the opportunity to present to us today, and we will
`reserve ruling on that later on as that pertains to what
`information to use in order to draft a final written
`decision.
` Are there any questions about that ruling?
` MR. BURESH: No, Your Honor.
` MR. MANGRUM: Not from patent owner, Your Honor.
` JUDGE QUINN: Okay. Thank you.
` So with that, Mr. Buresh, you requested 30 minutes.
`I will keep time on my iPhone, and I will let you know when
`you're getting close.
` If you have not presented with us before, the judges
`in the remote offices cannot see the screen. So if you're
`going to present something, either at the ELMO or at the
`screen, please call out the exhibit number or slide number so
`they can follow you along.
` MR. BURESH: Yes, Your Honor.
` JUDGE QUINN: Okay?
` MR. BURESH: And in light of that, I'm going to rely
`on the hard copy here, I'm not going to put slides up on the
`screen, since they'll be inaccessible. So I will be working
`off of petitioner's demonstrative slides, which were
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`submitted via email, and also filed in the matter.
` JUDGE QUINN: Okay. Have you provided the slides to
`the court reporter?
` MR. BURESH: We have, Your Honor.
` JUDGE QUINN: Thank you. You may start whenever
`you're ready.
` MR. BURESH: All right. Just to orient Your Honors,
`there are really two sets of claims. I'm going to call it
`the originally-instituted method claims that were subject to
`the original Institution Decision, I'm going to be addressing
`those first, and then I will move to the newly-instituted
`means plus function claims that were addressed in the Post
`SAS Institution Decision.
` If you could turn with me to Slide 3 of
` petitioner's demonstrative exhibits. With respect to
` the originally-instituted method claims, there was
` really a challenge from patent owner with respect to a
` single limitation; however, there were two aspects to
` that single limitation that were addressed by patent
` owner and that I'm going to address here today.
` The first one I'm going to address is whether
` the request -- the license request disclosed in
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` Olsen -- and again, just to orient, we are looking at
` anticipation ground based upon the single reference of
` Olsen in this particular IPR proceeding.
` One of the challenges with respect to Olsen
` from patent owner is whether the license request
` disclosed in Olsen is from a user at a client, which
` is underlined in blue on petitioner's DX3.
` The second challenge from patent owner is
` whether the license request described in Olsen
` satisfies the requirement of being a request for
` license availability. I will address that issue
` second.
` So going to the user issue first, Olsen is, at
` the highest level, an electronic licensing system.
` That's the title of Olsen.
` The field of invention in Olsen is the
` invention relates to licensing software, and more
` particularly, to licensing software electronically in
` a network environment.
` So big-picture-wise, we have a licensing
` system for licensing. In a specific example in Olsen,
` applications so that a user at a client can access
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` those applications, there is a license check performed
` to determine whether the user is an authorized user of
` the application and whether there is sufficient
` licensing credentials available to issue a license to
` that user.
` Now, one of the discussions in Olsen is that
` Olsen was designed to be a flexible system. And what
` Olsen means by being a flexible system is that it
` provided an API on the client side, and that API could
` be adjustable so that you could require different
` information to be submitted or not submitted with a
` licensing request.
` Then, correspondingly, on the server side,
` which in Olsen is called the license service provider,
` or LSP for short, there is a corresponding check
` that's done based upon the information that's required
` by the client side API. So the flexibility in Olsen
` came from the fact you could modify the API, you could
` modify the server requirements on the LSP so that the
` checks that were performed matched up to the
` information that was provided.
` And so then you look at Olsen -- and I'm going
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` to go to Slide DX4, Your Honors -- and we see in this
` disclosure that there is -- that the -- the discussion
` of the administrator, or the LSP assigning a license,
` and it describes a whole host of ways you could assign
` a license. You can assign a license to an individual,
` you can assign a license to a machine, a group, or
` other selective users.
` JUDGE QUINN: I want to ask you about that
`statement, because it seems, from the very plain language of
`that statement, that when it says "for other selected users",
`that "users" may be referring to machines, like a printer,
`like a network printer, for example, or an individual, which
`could be an individual machine, like a client PC or a user.
` So it seems that the word "user" is loaded with meaning
`something other than what you want it to be.
` MR. BURESH: Well, it's interesting -- it's an
`interesting thought. One would have to say then that the
`word "user" in the challenged claims is also loaded with that
`same meaning so that the match would be one-to-one. You have
`a plain and ordinary meaning in the challenged claims that
`requires "user" without further definition, we have
`disclosure in the prior art of "users".
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` JUDGE QUINN: Mm-hmm.
` MR. BURESH: It's a one-to-one correspondence. So
`if you want to modify to that understanding out of Olsen, you
`would modify as well on a plain and ordinary meaning in the
`challenged claims.
` JUDGE QUINN: But it seems to me that the claims are
`more specific in that they differentiate what things are
`performed by the user versus what things are sent and
`received from a client.
` So there, there seems to be more of a distinction
`than that particular sentence in Olsen. Do you have anything
`else that is particularly user-ID-related that we could say
`it's more likely than not that a user, meaning not the client
`alone, is --
` MR. BURESH: Sure.
` JUDGE QUINN: Doing this --
` MR. BURESH: Yeah, absolutely. Let's continue on.
` And I'll refer next to DX5. And the bottom blow-out
`on DX5 talks about the request that can a assemble -- or the
`information that can assembled into a request and then sent
`to the LSP.
` And here, other relevant information that's
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`provided, according to Olsen, is the user's name. So we have
`another example.
` Building out on that, out of Column 5 --
` excuse me -- Column 11 in Olsen, and specifically, for
` the record, Olsen is Exhibit 1002.
` JUDGE QUINN: I'm sorry. Where are you right now?
`What slide?
` MR. BURESH: I'm not on a slide currently, Your
`Honor.
` JUDGE QUINN: Okay. So where are you then?
` MR. BURESH: I'm in Olsen.
` JUDGE QUINN: Uh-huh.
` MR. BURESH: Exhibit 1002, Column 11.
` If we could look at lines 32, and following it
`discusses the user log-in information being provided, which
`is suitably used for accessing the license records.
` So we have user's name as an example, we have user's
`log-in information as an example.
` Going on in Column 11, which also corresponds to the
`disclosure in DX6, depending on your preference for which you
`prefer to look at, if we go down to line 40, Olsen describes
`that, "The license certificate object suitably determines
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`whether the license units corresponding to the license record
`are available to the requesting client by reviewing, for
`example, policy attributes of the license, the user
`information associated with the request, any existing license
`agreements, and the raw number of units."
` So again, we see what information is being sent with
`the request. It includes things like user name, we see user
`password as another example of something that can be sent
`with the request, and in the determination step in Olsen,
`where it determines whether a license is going to be issued
`in response to that request, the information that is
`considered is user information associated with the request.
` When a license is granted, if we go back in Olsen to
`Column 5, and line 30, this is describing the license record
`itself, and Olsen describes here that, "For example, space
`may be added to the record for information" -- excuse me.
`Let me start over.
` "For example, space may be added to the record
` for entry of information relating to the user, license
` handle, number of licenses, license units consumed,
` the last time of update assignment, and owner."
` So again, we're seeing both the request
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` containing user information, we are seeing the
` determination that is made in Olsen, looking at the
` user information that is provided with the request,
` and the license record itself is then attached to the
` user.
` JUDGE QUINN: That sentence you just read to me in
`Column 5, that's not referring to the request, that is
`information that is stored in the license certificate once an
`administrator, for example, enters the license into the
`system. So -- and it's consistent with something else that
`you have shown us, which is that there may be an assignment
`made, but the questions is where the request comes from.
` So my question to you is, going back to Column 11 --
` MR. BURESH: Mm-hmm.
` JUDGE QUINN: -- at lines 40 to 45, that sentence
`that you read in the record, it says, "whether the license
`units corresponding to the license record are available to
`the requesting client."
` So that leads me to believe that the assignment --
`the assignment of the license is being checked for the
`client, not necessarily for the user, even though user
`information is being used.
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` So what is your response?
` MR. BURESH: My response to that is that this is
`nearly identical disclosure to what's described in the '766.
`The fact of the matter is, Olsen physically operates on the
`basis of a client. So there is ample generic disclosure in
`Olsen of a client doing things and checks being made for the
`client that's making the request, or a client request that
`client receives the license, because that is physically what
`is happening.
` JUDGE QUINN: But there's a difference between the
`client performing the steps in the network versus requesting
`that a license be granted to a user in the network that is
`using a client to connect to the network.
` So reading Olsen, it's kind of vague as to
` which one it is. I think it's clear that it's
` assigning something to a client, the question is
` whether it goes that extra step where license
` availability is checked for the user and eventually
` does grant the license to a user rather than just a
` plain client.
` So do you have any response to that?
` MR. BURESH: Yeah. It's -- the disclosure is -- and
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`I would say this: The license response is always going to go
`back to a client in Olsen and in the '766 patent. That is
`how it's going to be transmitted, it's going to be back to a
`client.
` When the request considers user information
` and ties the request to that user by looking at the
` licensing record with the user information and doing
` that comparison, is this an authorized user, that
` request and that license is tied to the user and
` satisfies the limitations of this claim. Because we
` have a user that's been identified, whether by name or
` by password.
` That request is now from a user, whether the
` client actually does the transmitting or not, and that
` request is responsive to a user and tied to that user,
` whether the client is receiving the license back or
` not.
` JUDGE QUINN: Okay. I think -- I think what we may
`want to hear from you then what is this “license availability,” the scope
`of that. Because what we have now is a dispute as to whether
`“license availability” may encompass the concept of
`authorization to use a license rather than just check for
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`availability. Can you speak to that?
` MR. BURESH: I can. And I think it's an important
`question because we're going to hear argument from patent
`owner that user authorization by itself is not sufficient.
` First of all, that in and of itself acknowledges
`that Olsen discloses user authorization and tying the request
`to a user.
` Going beyond that, it has never been our contention
`that user authorization by itself is enough. That would not
`satisfy the requirement of checking license availability.
` But where you have the potential for an authorized
`user, so a check is done to determine whether a user is
`authorized by their password or by their name, and then there
`is the possibility that they are still refused a license
`because there are insufficient licensing units availability
`to satisfy that request, you now have a license availability
`request, and that is -- again, the disclosure alignment
`between the '766 patent and Olsen are almost identical on
`that. Let me show you this.
` If we turn first to --
` JUDGE QUINN: So before you get there, let me
`understand what you just said.
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` MR. BURESH: Yes.
` JUDGE QUINN: You're saying that as long as a
`request, regardless of whether that request is for a license
`authorization or license availability or something related to
`getting that license from the server, as long as there is a
`check for availability somewhere, you determine whether that
`client has a license available to that user, then that
`request is a request for license availability.
` MR. BURESH: That is -- that is my point. Yes.
`That if you have a scenario where you have the potential for
`an authorized user who has submitted their credentials and
`are authorized to still be refused based upon numerical
`limits on available licenses, that it is a license check
`availability, or a request for license availability.
` JUDGE QUINN: So it's not the request itself you're
`focused on, it's the effect of the request and what happens at
`the server based on that request.
` MR. BURESH: And the possibility of a -- of the
`refusal.
` JUDGE QUINN: Okay. What do I do with the claim
`language that says that you're receiving that request “for
`license availability”?
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` MR. BURESH: A request for license availability --
`if you would turn with me to DX7. And this is from the '466
`patent which you just looked at in the previous hearing, Your
`Honor, but it is incorporated by reference into the '766
`patent in total, and it describes the licensing request that
`is part of the '766 patent in more detail.
` And interestingly, it uses the word "license
`request". Okay? Which is the same exact wording that's used
`in Olsen. And what makes this -- in the disclosure of the
`'766 and the '466 incorporated by reference, what makes this
`license request into a request for license availability are
`the responses that can come back.
` If there are sufficient units in the '766 patent, if
`there are sufficient licenses, you see at the bottom
`highlighting, "If a license is available, an instance of the
`requested application is executed." Okay? So we send the
`application to the client and the client can execute it.
` But if we back up, "If no licenses are available,
`the system is configured to provide an error message and stop
`processing."
` That's what makes a license request a request
` for license availability; it can either be accepted
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` and a license issued, or it can be rejected and it
` will present an error message.
` Now, if we turn to the disclosure in Olsen
` that corresponds to this on DX8 --
` JUDGE QUINN: I'm sorry. So your position is that
`the disclosure for this comes from the '466 patent, but not
`really the substance of the '766 on its own.
` MR. BURESH: The '766 doesn't speak to the
`terminology of the license request in this level of detail.
` I'm not sure what you -- I would contend that this
`disclosure from the '466 is specifically what's incorporated
`by reference into the '766. So these details.
` What I would disagree with your statement is that I
`do believe these are part and parcel of the '766 patent.
` JUDGE QUINN: Okay. So what -- so for what purposes
`should we rely on this disclosure in the '466 patent?
` MR. BURESH: When you're looking at claim language,
`Your Honor, you're looking at -- one of the key principles of
`claim construction is that it's almost always wrong to
`exclude a preferred embodiment or a disclosed embodiment from
`the specification.
` So if we're discussing what a request for license
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`availability is, we would need to go to the intrinsic record
`and say how do they use it there, and we want to make sure
`that our understanding of request for license availability
`would not exclude that.
` The disclosed explanation of what a request for
`license availability is in the '766 patent, via the
`incorporation by reference, is that a request for license
`availability is simply a license request that can be denied.
`So to exclude that concept from the understanding that the
`Board would apply to a request for license availability
`would, by presumption, according to law, be wrong.
` JUDGE QUINN: So are you asking us to construe the
`terms so that we find this embodiment illustrative or --
` MR. BURESH: My opinion, Your Honor, is that request
`for license availability does not require any construction.
`That's plain language that says you're making a request to
`determine if a license available -- is available. That's
`what we're showing in the prior art. I don't believe any
`claim construction is necessary.
` JUDGE QUINN: Because I recall reading in your
`petition for the means-plus-function terms that you are
`relying on some incorporation by reference theory to identify
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`structure for the “means for providing,” and that may be a
`different issue of plain construction, because for means-plus-
`function terms incorporation by reference doesn't do it.
` So we cannot rely on this for that purpose,
` then what else is there in the '766 patent disclosure
` that we can look to?
` MR. BURESH: If you're -- if you're simply looking
`at the '766 patent in isolation from what's incorporated by
`reference, I would refer you to --
` (Pause in the proceedings)
` MR. BURESH: -- the -- I'm going to have to
`backtrack because, really, this request for license
`availability is not described in detail in the '766 patent,
`that concept is described in detail by its incorporation and
`reference from the '466 patent.
` JUDGE QUINN: So other than the claim language
`itself -- okay.
` MR. BURESH: I would contend straight out of the
`'766 patent only in isolation, the plain language itself
`looks at a request for license availability.
` I believe Olsen, if we could look at the disclosure
`of Olsen -- this is DX8, and it's out of Column 12 of Olsen.
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`"When the request is submitted to the LSP, a determination is
`made in Olsen, just like in the '766 patent." And again, "If
`there are insufficient license -- license units located, a
`detailed error code is issued."
` And I want to highlight in Olsen, at
` Figure 8B, which is a continuation of Figure 8A, this
` is the process described in Olsen for accessing
` applications to determine whether there is a license
` available.
` In 8B of Olsen, you have this -- the -- the
` two steps. You have step 828, which is security okay.
` You're checking the credentials that are supplied
` request to make sure it's an authorized and
` appropriate user. And then you have 834, which asks
` if there's enough units.
` So even if you have security okay, you have an
` authorized user, that authorized user may still be
` rejected and see an error response if there are not
` sufficient license units available.
` That is the disclosure of Olsen in response to
` a request for a license. And the possibility of a
` denial here shows that you're requesting whether or
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` not a license is available.
` On the plain and ordinary language of the
` claim, I believe that satisfies the claim limitation.
` JUDGE QUINN: All right.
` MR. BURESH: Your Honor, I don't have anything else
`on the original claims for purposes of opening. I'm going to
`transition to the Supplemental Institution or Post SAS
`Institution Decision.
` JUDGE QUINN: Okay.
` MR. BURESH: In the -- the primary impact of the
`Post SAS Institution Decision was to initiate the proceeding
`with respect to a means plus function limitations, Claims
`7 and 13.
` I'm going to refer now to Slide DX10. And what I
`want to answer is primarily patent owner's objections to our
`Post Institution brief where we, as carefully as we could,
`mapped the existing disclosures cited and provided in the --
`in the petition -- in the original petition to the Board's
`claim construction which was issued in the Institution
`Decision. That was the entire purpose of the Post
`Institution brief that we submitted. And we provided very
`specific citations and showed how the mapping had not changed
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`from the original petition to map to the Board's construction
`that came forth in the Institution Decision. And I want to
`explain why that is the case.
` In the means plus function claims, I have the
` function for the claim listed at the top of DX10.
` "Maintaining license management policy information,"
` et cetera. That function from the means for
` maintaining limitation is identical to element 1A
` which is the -- the corresponding element of the
` method claim.
` JUDGE QUINN: But you see, the issue for me is we
`had this discussion during our conference calls concerning
`the scope of your Institution reply brief, and I thought we
`were clear that your position could not deviate from what was
`presented in the petition since, under SAS, the petition is
`what controls the trial.
` And so what I thought you were going to come back
`with is clarification of why our claim construction may need
`to be retooled, refined, thrown out, whatever that may be
`your position.
` Instead, we see a completely new mapping of the
`Claim, as we construed it, to the prior art.
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` So with Claim 7, on the petition, you don't have any
`mappings to algorithms, your mapping is strictly to a
`database and a server.
` So given that we have some constraints here for due
`process, notice to the patent owner as to what is your
`contention, what do we do with this mapping that came in
`potentially too late?
` MR. BURESH: And Your Honor, I believe you said
`this. "The petition maps to the database and to the server."
`The server is the LSP, and that is what the petition mapped
`to effectively was the LSP. And petitioner knew this -- I'm
`sorry -- patent owner knew this, by the way. You can see it
`in their patent owner preliminary response.
` Their primary argument was, you can't say the
`corresponding structure is a database because you've mapped
`to an LSP, which is the processer. That mapping was in the
`petition.
` The Board's construction, if we turn to DX11 -- I'm
`sure you know your construction -- the corresponding
`structure that the Board provided was a processer programmed
`to carry out the algorithms for repeat functional language.
`The functional language was already mapped in element 1A.
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` And what we mapped to was the LSP, which was the
`processer for performing that function, and that processer,
`if it's programmed to software, is performing algorithms.
` So my contention, Your Honor, is that it was not a
`new mapping. The mapping to the Board's construction fleshed
`out one thing. We have a processer that performs algorithms
`that performed the function. That was the mapping. And it
`was the mapping that was present in the petition. Which is
`why, in our Post Institution brief, we were able to go
`through and literally just chart back to the petition. I
`don't believe it is a new mapping.
` And secondarily, to the extent the Board is
`interested in moving the direction of saying, ipso facto, we
`provided this construction that says processer program to
`carry out algorithms, and you couldn't possibly in your
`petition have anticipated that, that is what was in the
`petition, first of all, and secondly, that minor change from
`"functional language" to "processer plus algorithms", if we
`don't have the ability to at least say in response to the
`Post Institution -- or to the Supplemental Institution
`Decision, if we don't at least have the chance to say, wait a
`minute, the LSP is the processer with algorithms, there is no
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`proceeding.
` JUDGE QUINN: Well, that's a risk you took by
`drafting the petitions and related it to database and this
`generic processor. I mean, we require petitions to be
`very precise and particular about what the contentions are.
` So my concern would be that you -- you have
`something there that we may look at, but procedurally, it may
`be deficient.
` So what else do you have vis-à-vis these claims that
`you want us to look at that we actually can rule upon?
` MR. BURESH: I believe you can. I believe you
`should. I think it is not uncommon in proceedings,
`instituted proceedings, for the Board to have the parties
`address claim construction. It is not uncommon for claim
`constructions to arrive late in the proceeding, even as late
`as a reply brief, and to be addressed at oral argument.
` New constructions, which, again, by their very
`
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