Trials@uspto.gov
`571-272-7822
`
`Paper 9
`Entered: November 1, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UBISOFT, INC. and SQUARE ENIX, INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01291
`Patent 6,728,766 B2
`
`____________
`
`Before SALLY C. MEDLEY, MIRIAM L. QUINN, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`DECISION
`Partial Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`Paper 9
`Entered: November 1, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UBISOFT, INC. and SQUARE ENIX, INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01291
`Patent 6,728,766 B2
`
`____________
`
`Before SALLY C. MEDLEY, MIRIAM L. QUINN, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`DECISION
`Partial Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2017-01291
`Patent 6,728,766 B2
`
`
`Ubisoft, Inc. and Square Enix, Inc. (“Petitioner”)1 filed a Petition to
`
`institute inter partes review of claims 1, 3, 7, 9, 13, and 15 of U.S. Patent
`
`No. 6,728,766 B2 (“the ’766 patent”) pursuant to 35 U.S.C. § 311319.
`
`Paper 1 (“Pet.”). Uniloc USA, Inc. and Uniloc Luxembourg S.A., (“Patent
`
`Owner” or “Uniloc”)2 timely filed a Preliminary Response. Paper 7
`
`(“Prelim. Resp.”). We have authority under 35 U.S.C. § 314.
`
`For the reasons that follow, we institute inter partes review regarding
`
`claims 1 and 3 of the ’766 patent.
`
`I.
`
`BACKGROUND
`
`A. RELATED MATTERS
`
`Petitioner identifies the ʼ766 patent as the subject matter of the district
`
`court cases pending in the U.S. District Court for the Eastern District of
`
`Texas (Case No. 2:16-cv-00397-RWS and Case No. 2:16-cv-00872-RWS).
`
`Pet. 32; Ex. 1006; Ex. 1007.
`
`B. THE ’766 PATENT (EX. 1001)
`
`The ’766 patent is titled “Methods, Systems and Computer Program
`
`Products for License Use Management on a Network.” Ex. 1001, at [54].
`
`The ’766 patent relates in particular to application program management on
`
`
`
` 1
`
` Petitioner identifies additional real parties-in-interest, such as Ubisoft
`Entertainment, S.A., Square Enix of America Holdings, Inc. and Square
`Enix Holdings Co., Ltd. Pet. 32.
`2 Although the Preliminary Response initially identifies only Uniloc
`Luxembourg S.A. as the patent owner (Prelim. Resp. 1), Patent Owner’s
`Mandatory Notice identifies both Uniloc USA, Inc. and Uniloc Luxembourg
`S.A. as Patent Owner in this case. Paper 5, 1.
`
`2
`
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`Patent 6,728,766 B2
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`a computer network. Id. at 1:2224. According to the ’766 patent, control
`
`over software, such as application programs, is a challenge with respect to
`
`“maintaining proper licenses for existing software and deploying new or
`
`updated application programs across the network.” Id. at 1:4557. In
`
`particular, the ’766 patent states that “[a] distributed network environment
`
`with a plurality of client stations and a plurality of different users accessing
`
`the applications from different clients increases the challenge associated
`
`with managing license use to [ensure] compliance with limitations
`
`established by software designers.” Id. at 3:28–32. According to the ’766
`
`patent, management of license use for a network is provided as follows:
`
`License management policy information for a plurality
`of application programs is maintained at a license
`management server. Requests are received at the license
`management server for a license availability of a
`selected one of the plurality of application programs
`from a user at a client. The license management server
`determines the license availability for the selected one of
`the plurality of application programs for the user based
`on
`the maintained
`license management policy
`information and provides 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.
`
`Id. at 5:3952.
`
`C. ILLUSTRATIVE CLAIM
`
`Challenged claims 1, 7, and 13 of the ’766 patent are independent.
`
`Illustrative claim 1 is reproduced below.
`
`1. A method for management of license use for a
`
`3
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`Patent 6,728,766 B2
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`
`network comprising the steps of:
`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;
`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;
`determining the license availability for the selected one
`of the plurality of application programs for the user based on
`the maintained licenses management policy information;
`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.
`
`Ex. 1001, 14:6415:16.
`
`
`D. ASSERTED REFERENCE AND GROUND OF UNPATENTABILITY
`
`Petitioner asserts one ground of unpatentability based on the
`
`anticipation of claims 1, 3, 7, 9, 13, and 15 by U.S. Patent No. 5,758,069,
`
`issued to Olsen (Ex. 1002, “Olsen”).
`
`
`
`II. ANALYSIS
`
`A. CLAIM CONSTRUCTION
`
`In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142–46 (2016).
`
`Consistent with that standard, claim terms also are given their ordinary and
`
`4
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`customary meaning, as would be understood by one of ordinary skill in the
`
`art in the context of the entire disclosure. See In re Translogic Tech., Inc.,
`
`504 F.3d 1249, 1257 (Fed. Cir. 2007). There are, however, two exceptions
`
`to that rule: “1) when a patentee sets out a definition and acts as his own
`
`lexicographer,” and “2) when the patentee disavows the full scope of a claim
`
`term either in the specification or during prosecution.” See Thorner v. Sony
`
`Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).
`
`Petitioner proposes constructions for terms drafted in means-plus-
`
`function format, recited in independent claim 7. Pet. 35. Patent Owner
`
`responds to Petitioner’s constructions and challenges the structures that
`
`Petitioner identifies for each term recited in claim 7. Prelim. Resp. 5–11.
`
`Neither party addresses the terms recited in claim 13. As detailed below, we
`
`analyze the claim construction for only those terms needed to make the
`
`determination whether to institute inter partes review. In our analysis, we
`
`recognize that construing a means-plus-function limitation requires first
`
`defining the particular function of the limitation and then identifying the
`
`corresponding structure for that function in the specification. Golight Inc. v.
`
`Wal-Mart Stores Inc., 355 F.3d 1327, 1333-34 (Fed. Cir. 2004). Further,
`
`under 37 C.F.R. § 42.104(b)(3), “the petition must set forth . . . [h]ow the
`
`challenged claim is to be construed,” including identifying “the specific
`
`portions of the specification that describe the structure, material, or acts
`
`corresponding to each claimed function,” where the claim to be construed
`
`contains a “means-plus-function or step-plus-function limitation as permitted
`
`under 35 U.S.C. § 112(f).”
`
`5
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`
`1. Means for Maintaining
`
`The parties agree that the function for the claim 7 term is “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.”
`
`Pet. 3; Prelim. Resp. 5. With regard to corresponding structure, Petitioner
`
`identifies “a database and equivalents thereof.” Pet. 3.
`
`Patent Owner takes issue with the structure identified by Petitioner.
`
`In particular, Patent Owner argues that identifying a database in general is
`
`misleading. Prelim. Resp. 56. Patent Owner further points out the claim
`
`language describing that the “means must reside ‘at a license management
`
`server’” and that the server stores license use management policy
`
`information in a database. Prelim. Resp. 5. Consequently, Patent Owner
`
`argues Petitioner does not tie the structure recited in the claim with the
`
`database alleged to perform the function. Id. at 56.
`
`We agree with Patent Owner. The claim language plainly states that
`
`“maintaining” occurs “at a license management server.” Ex. 1001,
`
`15:4850. The Specification describes the server system as storing license
`
`use management policy information in hierarchical centralized preference
`
`database 208 (id. at 12:5052), but that description refers only to “storing”
`
`the information in a specific type of database, which may be useful while
`
`managing licenses across a distributed network. Petitioner, however, does
`
`not tie the “storing” to the entire function of “maintaining” the information,
`
`as recited. A structure disclosed in the specification qualifies as
`
`“corresponding” structure only if the specification or prosecution history
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`6
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`Patent 6,728,766 B2
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`clearly links or associates that structure to the function recited in the claim.
`
`B. Braun Med. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997). The
`
`“clear linkage or association” in the specification of the structure to the
`
`function recited in the claim is determined based on the understanding of an
`
`artisan of ordinary skill. See AllVoice Computing PLC. v. Nuance
`
`Commc’ns, Inc., 504 F.3d 1236, 1242 (Fed. Cir. 2007). The portions of the
`
`Specification Petitioner points out do not convey that database 208 performs
`
`the function of maintaining the recited information. Petitioner proffers no
`
`other evidence or testimony regarding this issue. Consequently, we are not
`
`persuaded that Petitioner has shown that a person of ordinary skill would
`
`understand that a database, alone, is clearly linked to “maintaining license
`
`management policy information for a plurality of application programs at a
`
`license management server . . . .”
`
`Nevertheless, on the present record, Patent Owner has shown
`
`sufficiently that the corresponding structure for this limitation includes, at a
`
`minimum, a processor executing algorithms for performing the function. As
`
`Patent Owner points out, the Specification discloses a processor for
`
`executing instructions because the Specification, for example, describes all
`
`the flowcharts depicted in Figures 25 as follows:
`
`It will be understood that each block of the flowchart
`illustrations, and combinations of blocks in the flowchart
`illustrations, can be implemented by computer program
`instructions. These program instructions may be provided
`to a processor to produce a machine, such that the
`instructions which execute on the processor create a means
`for implementing the functions specified in the flowchart
`block or blocks. The computer program instructions may
`be executed by a processor to cause a series of operational
`steps to be performed by the processor to produce a
`
`7
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`IPR2017-01291
`Patent 6,728,766 B2
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`
`computer implemented process such that the instructions
`which execute on
`the processor provide steps for
`implementing the functions specified in the flowchart
`block or blocks.
`
`Ex. 1001, 7:2639.
`
`Patent Owner also has shown that the Specification discloses
`
`algorithms for maintaining license management policy information. Prelim.
`
`Resp. 6. For example, the Specification states that license use “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).” Ex. 1001, 12:3746. The Specification also
`
`describes that the license management policies have default values that are
`
`customized by applying administrator overrides (id. at 12:4244) and user
`
`license policy preferences (id. at 12:4547).
`
`On the present record, therefore, we determine that the corresponding
`
`structure for this limitation, at a minimum, is a processor programmed to
`
`carry out the algorithms for maintaining license management policy
`
`information for a plurality of application programs at a license management
`
`server, where the algorithms are setting policies such as limiting the number
`
`of users, whether crossing the limit of users is allowed or not, and how users
`
`are counted.
`
`2. Computer Readable Program Code Means
`
`Claim 13 recites “a computer readable storage medium having
`
`computer readable program code means embodied in said medium” and
`
`“computer readable program code means for maintaining license
`
`management policy information,” among several additional computer
`
`8
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`IPR2017-01291
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`readable program code means limitations. This claim language utilizes the
`
`word “means” which triggers a rebuttable presumption that § 112, ¶ 6
`
`applies. Williamson v. Citrix Online, 792 F.3d 1339, 1349 (Fed. Cir. 2015).
`
`If the “computer readable program code means” terms recited in claim 13
`
`are indeed means-plus-function terms, then the Petition is deficient, as it
`
`fails to present the required claim construction analysis.
`
`37 C.F.R. § 42.104(b)(3). In other words, in light of the presumption that
`
`applies to a claim reciting “means,” we look for an explanation by
`
`Petitioner, who has the burden of showing in its Petition how the challenged
`
`claim is to be construed and how that construed claim is unpatentable. Id.
`
`Petitioner proffers no analysis of the scope of these claim terms and, more
`
`particularly, why or how the presumption is rebutted.3
`
`Because neither party has rebutted the presumption that § 112, ¶ 6
`
`applies to the “computer readable program code means,” for purposes of this
`
`Decision, we address this term as a means-plus-function term. Accordingly,
`
`the limitation “computer readable program means for maintaining a license
`
`management information policy,” at a minimum encompasses the algorithms
`
`linked to the function “maintaining license management policy information.”
`
`Those algorithms, following our analysis for the term “means for
`
`maintaining” discussed above are, at a minimum: setting policies such as
`
`limiting the number of users, whether crossing the limit of users is allowed
`
`or not, and how users are counted.
`
`
`
` 3
`
` We recognize that with reference to the prior art, the Petition maps the
`“computer readable program means” to a license service provider software.
`Pet. 27. This showing, however, is insufficient to explain a rebuttal of the
`presumption borne by the use of “means.”
`
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`We do not construe expressly any other claim term, as it is not
`
`necessary to decide whether to institute inter partes review. Vivid Techs.,
`
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (only
`
`claim terms in controversy need to be construed, and only to the extent
`
`necessary to resolve the controversy).
`
`B. PETITIONER’S OVERALL CONTENTIONS
`
`Petitioner contends that all limitations of independent claims 1, 7, and
`
`13 are disclosed by Olsen. Pet. 831. Olsen is titled “Electronic Licensing
`
`System.” Ex. 1002, at [54]. Olsen describes methods and apparatus for
`
`licensing software in a network environment, where a distributed database
`
`stores license information among several servers. Id. at 2:3135. “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.” Id. at 2:3942. Olsen also states that other relevant
`
`information is provided, “such as the user’s name.” Id. at 2:4243. Olsen’s
`
`server receives the request for the server to check a database for license
`
`information that satisfies the criteria. Id. at 2:4448. According to Olsen,
`
`“[i]f the requested license rights are available, the license service provider
`
`(LSP) constructs a license certificate object and collects those rights into the
`
`object,” and the information in the database is adjusted to reflect the granting
`
`of the license. Id. at 2:4854.
`
`3. Claim 1
`
`With regard to claim 1, Petitioner argues that Olsen discloses license
`
`certificate records (“license management policy information”) stored in a
`
`database, where data fields are associated with particular license certificates.
`
`10
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`IPR2017-01291
`Patent 6,728,766 B2
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`Pet. 10–12 (citing Ex. 1002, 5:3540, 9:2250, Fig. 3.). Petitioner points to
`
`Olsen’s disclosure of each entry in a data field containing license certificate
`
`information, such as publisher name, product name, version, number of
`
`license units, start date, and expiration date. Id. The entries are also
`
`configured to include “various policy attributes to handle the consumption of
`
`license units and error conditions.” Id. at 11. Petitioner also points out that
`
`a license certificate record may be assigned to a specific user or group of
`
`users because Olsen discloses that “the administrator may assign a license to
`
`an individual, machine, group, container, or other selected users.” Id. at 12
`
`(citing Ex. 1002, 8:2935).
`
`For “receiving . . . a request for a license availability . . . from a user
`
`at a client,” Petitioner argues that Olsen’s server 104 receives a request for a
`
`license to a specified application program. Pet. 12–13 (citing Ex. 1002,
`
`3:5461, 3:624:3). In particular, Petitioner points out Olsen’s disclosure of
`
`the client assembling a request, with information including a request for the
`
`number of license units and user’s name. Id. at 13–14 (citing Ex. 1002,
`
`10:4311:9, 2:3847). Petitioner further argues that Olsen determines
`
`license availability for the user because it discloses that the database is
`
`searched for license certificates that could fulfill the request, and that the
`
`“user’s login information is suitably used for accessing the various license
`
`records in the database.” Id. at 1618 (citing Ex. 1002, 11:2112:17).
`
`According to Petitioner, Olsen discloses that specific users can be assigned
`
`to a license certificate because Olsen states that “[t]he license certificate
`
`object facilitates adding assignment information to license certificates to
`
`assign or delete particular users to an application for access” and that “[i]n
`
`11
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`addition, ownership of the license may be transferred to another user.” Id. at
`
`18 (citing Ex. 1002, 4:47–52, 13:5255).
`
`Finally, with respect to claim 1, Petitioner argues that Olsen discloses
`
`providing the recited unavailability and availability indications by pointing
`
`out that Olsen provides an error message if the assignment does not include
`
`the user or there are no available license units. Pet. 1820 (citing Ex. 1002,
`
`12:739). Petitioner also points out that Olsen’s client receives a response
`
`(along with the application and license handle) when the license is shipped
`
`to the client. Id.
`
`4. Claim 3
`
`Claim 3, which depends directly from claim 1, recites that the license
`
`management server “is an on demand server associated with the client which
`
`provides an instance of the selected one of the application programs to the
`
`client for execution.” Petitioner argues that Olsen discloses this limitation,
`
`because Olsen’s server transmits the license and the application to the
`
`requesting client. Pet. 2021 (citing Ex. 1002, Abstract).
`
`5. Claims 7, 9, 13, and 15
`
`We note here only those contentions that are germane to our
`
`determination whether to institute inter partes review. In particular, we note
`
`that Petitioner maps the “means for maintaining” recited in claim 7, and
`
`discussed in Section II, A.1 supra, to Olsen’s license certificate database 112
`
`of server 104. Pet. 22. We also note that for claim 13, Petitioner relies
`
`generally on the license management software as the “computer program
`
`product” and the LSP software as the “computer-readable program code.”
`
`Id. at 27. In particular, Petitioner maps “computer readable program code
`
`for maintaining license management policy information,” recited in claim
`
`12
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`13, to two aspects of Olsen: (1) license database 112, which stores
`
`“fundamental information relating to the license . . . in addition to other
`
`‘policy attributes’”; and (2) database access system 208 of LSP 110. Id. at
`
`2829.
`
`C. PATENT OWNER’S ARGUMENTS
`
`Patent Owner challenges the Petition on the basis of three arguments.
`
`First, Patent Owner argues that Olsen neither receives a request for “license
`
`availability” nor is the request received “from a user at a client.” Prelim.
`
`Resp. 1112. According to Patent Owner, Olsen’s requests are not
`
`associated with users, a distinction that was argued during prosecution. Id.
`
`at 13 (arguing that “Olsen is analogous to the art already successfully
`
`distinguished by Applicants during prosecution”).
`
`Second, Patent Owner argues that Petitioner should not be allowed to
`
`take its current position regarding how Olsen discloses the recited “license
`
`availability” because of different claim construction arguments presented by
`
`Petitioner during district court litigation. Prelim. Resp. 1518. Patent
`
`Owner offers expert testimony that Olsen’s security equivalency check is a
`
`“determination that the user is authorized to access the selected application
`
`program.” Id. at 18 (citing Ex. 2002 ¶¶ 1624). And Petitioner allegedly
`
`has argued that “verifying license availability” is different from
`
`“determining whether a user is authorized.” Id.
`
`Finally, Patent Owner argues deficiencies in how Petitioner has
`
`mapped the means-plus-function terms to Olsen. Id. at 1920. In particular,
`
`Patent Owner takes issue with Petitioner’s reliance on Olsen’s database 112
`
`and also LSP 110 as both disclosing the means for maintaining. Id.
`
`13
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`According to Patent Owner, these are two distinct structures and the
`
`functions of one are not attributed to the other. Id. at 20.
`
`D. DETERMINATION OF REASONABLE LIKELIHOOD THRESHOLD
`
`Having considered the information presented in the Petition and in the
`
`Preliminary Response, we are persuaded that Petitioner has demonstrated a
`
`reasonable likelihood of prevailing on its assertion that claims 1 and 3 of the
`
`’766 patent are unpatentable. The denial of institution for all remaining
`
`challenged claims is discussed below.
`
`On the present record, the Petition reasonably maps the limitations of
`
`claims 1 and 3 to pertinent disclosures in Olsen. A summary of the mapping
`
`is discussed above in Petitioner’s Overall Contentions. Patent Owner’s
`
`arguments to the contrary are not persuasive at this time.
`
`With regard to whether “license availability” is associated with users,
`
`Petitioner has shown sufficiently, under a reasonable likelihood threshold,
`
`that Olsen discloses the client assembling a request, with information
`
`including a request for the number of license units and user’s name. Pet.
`
`13–14 (citing Ex. 1002, 10:4311:9, 2:3847). Although it appears that a
`
`“client” sends Olsen’s request, we can infer preliminarily from the Olsen
`
`disclosures addressed in the Petition—utilizing the user’s name and
`
`assigning ownership of licenses to users—that the request is associated with
`
`the requesting user, not just the client. This preliminary inference, of course,
`
`is an issue of fact that will be resolved on a full record.
`
`Further, with regard to “license availability,” we are not persuaded by
`
`Patent Owner’s argument that Olsen can be distinguished because Olsen
`
`does not request “availability,” but instead requests “a license.” Prelim.
`
`Resp. 11. Patent Owner has failed to show at this juncture that the intrinsic
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`record supports a reading of “license availability” that excludes a user’s
`
`requests for a license. And to the extent the litigation history between the
`
`parties reveals that Petitioner has taken a narrower stance regarding the
`
`scope of “license availability,” Patent Owner presents no persuasive legal
`
`authority compelling us to deny the Petition for that reason.
`
`Neither do we find persuasive the testimony of Dr. DiEuliiss, Patent
`
`Owner’s expert, on this matter. The DiEuliiss Declaration attempts to
`
`distinguish Olsen based on Petitioner’s claim construction position in district
`
`court, which neither party proposes here. See Ex. 2001. In addition, we find
`
`the testimony conclusory and factually unsupported by Olsen. For example,
`
`DiEuliiss opines, without further explanation, that the “security equivalency
`
`check” in Olsen is a “determination that the user is authorized to access the
`
`selected application program.” Id. ¶ 19. Olsen states that the “security
`
`equivalency check” is performed to “determine whether the requesting client
`
`106 is among those assigned to the license certificate.” Ex. 1002, 12:1417.
`
`Olsen’s description of the security equivalency check seems to concern the
`
`assignment of the license certificate to a client. This portion of Olsen,
`
`however, is silent as to whether checking an assignment to the license
`
`certificate is the same as authorizing user access to the application program.
`
`The DiEuliiss Declaration fails to explain its interpretation of Olsen.
`
`Nevertheless, Olsen’s descriptions of the client’s requests, relied on in
`
`the Petition, do not solely focus on the “security equivalency check.” For
`
`instance, Olsen states that the request includes information relating to the
`
`application and the number of licenses requested. Ex. 1002, 10:4311:9
`
`(cited in Petition at 1314). In particular, Olsen states that the server
`
`receiving the request first determines if a database search matches the
`
`15
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`
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`IPR2017-01291
`Patent 6,728,766 B2
`
`request, then it accesses a license record to determine whether the license
`
`record is compatible with the request, and then “[t]he 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 attributes of the license, the user information associated
`
`with the request, any existing license agreements, and the raw number of
`
`units originally installed.” Ex. 1002, 11:2112:17 (cited in Petition at
`
`1618).
`
`We have reviewed Patent Owner’s arguments against institution for
`
`claims 1 and 3, and we do not find them persuasive. As stated above, having
`
`found reasonable the Petition’s mapping of the claim elements to the
`
`disclosures in Olsen, and after considering the evidence supporting the
`
`Petition, we determine that the Petition presents a reasonable likelihood of
`
`prevailing in its assertion that claims 1 and 3 are unpatentable as anticipated
`
`by Olsen.
`
`The Petition, however, does not present a reasonable likelihood of
`
`prevailing with respect to the other challenged claims because it fails to
`
`show, at a minimum, the corresponding structure for “means for
`
`maintaining,” recited in claim 7. The Petition is also deficient in its showing
`
`for claim 13.
`
`With regard to claim 7, we stated above that the structure
`
`corresponding to the “means for maintaining” is a “processor programmed
`
`to carry out the algorithms for maintaining license management policy
`
`information for a plurality of application programs at a license management
`
`server, where the algorithms are setting policies such as limiting the number
`
`of users, whether crossing the limit of users is allowed or not, and how users
`
`16
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`
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`IPR2017-01291
`Patent 6,728,766 B2
`
`are counted.” The Petition relies on Olsen’s database as meeting the “means
`
`for maintaining” limitation. Pet. 22. Petitioner fails to show how the Olsen
`
`database is the required processor programmed to carry out the specified
`
`algorithms and points to no other structure in Olsen as meeting the
`
`limitation. Accordingly, we determine that Petitioner has failed to
`
`demonstrate a reasonable likelihood of prevailing in its assertions that claims
`
`7 and 9 (dependent therefrom) are anticipated by Olsen.
`
`With regard to claim 13, we stated, in Section II.A.2 supra, that the
`
`term “computer readable program code means” encompasses the same
`
`algorithms as the “means for maintaining” recited in claim 7. Petitioner
`
`alleges in the Petition that Olsen’s LSP software discloses the “computer
`
`readable program code means.” Pet. 2728 (also pointing to LSP 110 for
`
`the term “computer readable program code means for maintaining license
`
`management policy information”). Petitioner fails to point out that LSP 110
`
`includes algorithms or instructions for setting policies such as limiting the
`
`number of users, whether crossing the limit of users is allowed or not, and
`
`how users are counted. Furthermore, Petitioner points to Olsen’s database
`
`access system 208 and database 112, which also have not been shown to
`
`store any of the aforementioned algorithms.4 Accordingly, we determine
`
`
`
` 4
`
` This contention would also be flawed because Petitioner asserts that the
`recited “computer readable storage medium” is “memory of server 104”
`(Pet. 27) and we fail to understand how license certificate records stored in a
`distributed database could constitute instructions stored in the memory of
`server 104. On this point, we find persuasive Patent Owner’s argument that
`the Petition fails to show how the capabilities of LSP 110 are attributed to
`database 112, especially in light of Figure 1 of Olsen depicting server 104
`
`17
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`IPR2017-01291
`Patent 6,728,766 B2
`
`that Petitioner has failed to demonstrate a reasonable likelihood of prevailing
`
`in its assertions that claims 13 and 15 (dependent therefrom) are anticipated
`
`by Olsen.
`
`
`
`III. CONCLUSION
`
`Petitioner has demonstrated a reasonable likelihood of prevailing in
`
`the contention that claims 1 and 3 are unpatentable as anticipated by Olsen.
`
`Accordingly, we institute inter partes review only for claims 1 and 3. The
`
`Petition is denied as to all other challenged claims.
`
`
`
`IV. ORDER
`
`It is ORDERED that inter partes review is instituted for claims 1 and
`
`3;
`
`FURTHER ORDERED that the Petition is denied as to the remaining
`
`challenged claims (claims 7, 9, 13, and 15); and
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`
`partes review of the ’766 patent is hereby instituted with trial commencing
`
`on the entry date of this decision, and pursuant to 35 U.S.C. § 314(c) and
`
`37 C.F.R. § 42.4, notice is hereby given of the institution of trial.
`
`
`
`
`and database 112 as distinct elements communicating over a communication
`system. Prelim. Resp. 20.
`
`18
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`IPR2017-01291
`Patent 6,728,766 B2
`
`PETITIONER:
`
`Eric A. Buresh (Reg. No. 50,394) (LEAD)
`eric.buresh@eriseip.com
`
`
`Mark C. Lang (Reg. No. 55,356) (Back-up)
`mark.lang@eriseip.com
`
`Kathleen D. Fitterling (Reg. No. 62,950) (Back-up)
`kathleen.fitterling@eriseip.com
`
`
`PATENT OWNER:
`
`Brett Mangrum (Reg. No. 64,783) (LEAD)
`Brett.mangrum@unilocusa.com
`
`Sean Burdick (Reg. No. 51,513) (Back-up)
`Sean.burdick@unilocusa.com
`
`Ryan Loveless (Reg. No. 51,970) (Back-up)
`ryan@etheridgelaw.com
`
`
`19
`
`
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