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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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` ____________
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`UBISOFT, INC. AND SQUARE ENIX, INC.,
`Petitioners
`
`v.
`
`UNILOC USA, INC. AND UNILOC LUXEMBOURG, S.A.,
`Patent Owners.
`
`____________
`
`Case No. IPR2017-01291
`U.S. Patent No. 6,728,766
` ____________
`
`
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`
`
`PETITIONERS’ REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(D)
`
`
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`TABLE OF CONTENTS
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`INTRODUCTION ............................................................................................... 1
`I.
`II. APPLICABLE STANDARDS .......................................................................... 5
`III. ARGUMENT .................................................................................................... 7
`IV. CONCLUSION ............................................................................................... 12
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`
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`
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`I.
`
`INTRODUCTION
`
`In response to the Decision of Partial Institution of Inter Partes Review
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`entered November 1, 2017, (Paper 9, hereinafter “Decision”) and pursuant to 37
`
`C.F.R. § 42.71(d), Ubisoft, Inc. and Square Enix, Inc. (“Petitioners”) hereby
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`respectfully request the Patent Trial and Appeal Board (“Board”) reconsider its
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`decision denying institution for inter partes review of claims 7, 9, 13, and 15 of
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`U.S. Patent No. 6,728,766 (EX1001, “the ‘766 Patent”).
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`The grounds of invalidity raised by Petitioners in the Petition (Paper 1,
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`hereinafter “Petition”) are based on U.S. Patent 5,758,069 (“Olsen”). Decision at 4.
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`The Board instituted inter partes review of the two challenged method claims
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`(claims 1 and 3) of the ‘766 Patent in view of Olsen, finding that “the Petition
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`reasonably maps the limitations of claims 1 and 3 to pertinent disclosures in Olsen.”
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`Decision at 14-16). The Decision references the “Petitioner’s Overall Contentions”
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`section as support for institution, noting that “Olsen describes methods and
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`apparatus for licensing software in a network environment, where a distributed
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`database stores license information among several servers.” Decision at 10; see
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`also id. at 15-16.
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`However, the Decision denied institution of claims drafted in means-plus-
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`function format based on the Board’s construction of the “means for maintaining
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`license management policy information” limitation recited in claims 7 and similar
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`1
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`
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`“computer readable program code means for maintaining” limitation recited in
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`claim 13 (collectively, the “means for maintaining” limitations). Decision at 16-18.
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`The “means for maintaining” limitations are as follows:
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`• Claim 7: means for maintaining license management policy
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`information for a plurality of application programs at a license
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`management server, the license management policy information
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`including at least one of a user identity based policy, an
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`administrator policy override definition or a user policy override
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`definition;
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`• Claim 13: computer readable program code means for maintaining
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`license management policy
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`information for a plurality of
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`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 override definition
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`As to these claims, the Petition proposed that the corresponding structure be
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`construed as “a database and equivalents thereof.” Petition at 3; Decision at 6. At
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`the urging of Patent Owners, the Board disagreed with Petitioners’ proposed
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`construction, and construed the “means for maintaining” limitations to require the
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`following corresponding structure:
`
`2
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`
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`a processor programmed to carry out the algorithms for maintaining
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`license management policy information for a plurality of application
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`programs at a license management server, where the algorithms are
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`setting policies such as limiting the number of users, whether crossing
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`the limit of users is allowed or not, and how users are counted.
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`Decision at 6-8, 16. The Board determined that the Petition did not show how
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`Olsen met this construction, and denied institution on this basis. Decision at 17
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`(“Petitioner fails to show how the Olsen database is the required processor
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`programmed to carry out the specified algorithms”).
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`Petitioners respectfully request rehearing of the Decision as to the
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`construction of the “means for maintaining” limitations found in claims 7 and 13,
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`as the Board’s construction does not identify algorithmic structure that is clearly
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`linked to the recited function. Specifically, the Board’s construction appears to
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`have overlooked or misapprehended the disclosure of the ‘766 Patent, as the
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`specification does not disclose – and the Board’s construction does not identify –
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`any actual algorithmic structure. The Board’s construction appears to require a
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`“processor to carry out algorithms” that are “setting policies,” but does not identify
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`any actual steps or instructions that could constitute an “algorithm” or how such an
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`“algorithm” would set the required policies. Decision at 6-8. Thus, at best, the
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`construction merely restates functional steps recited in the claim language, but
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`3
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`
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`does not provide any algorithm or algorithmic structure for how license
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`management information is actually maintained.
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`Petitioners submit
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`that
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`the Board’s construction does not
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`identify
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`corresponding structure that is clearly linked to the recited function, and thus
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`would render the claims invalid as indefinite. Petitioners submit that their
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`proposed structure, “a database and equivalents thereof,” is the only structure that
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`is clearly linked to the claimed function that does not render the claims indefinite,
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`and that Olsen discloses this proposed structure.1 On this basis, Petitioners request
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`reconsideration.
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`1
`Petitioners note that their proposed construction, “a database and equivalents
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`thereof,” is disclosed in the specification of the ‘766 Patent and is clearly linked to
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`the function recited in the “means for maintaining” limitations. Petition at 3, citing
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`EX1001 at 12:50-52 (“server system 22 stores license use management policy
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`information in a hierarchial centralized preference database 208”), 5:40-42. The
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`Petition makes clear that Petitioners’ proposed constructions were “not a waiver of
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`any argument in any litigation that claim terms in the ‘766 Patent are indefinite or
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`otherwise invalid or unpatentable.” Petition at 2-3. Moreover, Petitioners could
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`not have raised indefiniteness challenges in the Petition. See Cuozzo Speed Techs.
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`v. Lee, 579 U.S. –, slip op. at 11 (2016) (“nor does our interpretation enable the
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`agency to act outside its statutory limits by, for example, canceling a patent claim
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`4
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`
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`This request is timely under 37 C.F.R. §42.71(d)(1) because it was filed
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`within 14 days of the Board’s decision to institute a trial as to at least one ground
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`of unpatentability asserted in the Petition on the ‘766 Patent.
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`II. APPLICABLE STANDARDS
`
`“A party dissatisfied with a decision may file a request for rehearing,
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`without prior authorization from the Board.” 37 C.F.R. §42.71(d). “The request
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`must specifically identify all matters the party believes the Board misapprehended
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`or overlooked, and the place where each matter was previously addressed in a
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`motion, an opposition, or a reply.” Id. The Board reviews a decision for an abuse
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`of discretion. 37 C.F.R. §42.71(c).
`
`Claim construction is a question of law. Markman v. Westview Instruments,
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`52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). In an
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`inter partes review, claim terms in an unexpired patent are interpreted according to
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`their broadest reasonable construction in light of the specification of the patent in
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`which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136
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`S.Ct. 2131, 2142 -46 (2016). Consistent with that standard, claim terms are also
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`given their ordinary and customary meaning, as would be understood by one of
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`ordinary skill in the art in the context of the entire disclosure. See In re Translogic
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`for ‘indefiniteness under §112’ in inter partes review”); 35 U.S.C. § 311(b).
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`
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`5
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`
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`Tech. Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
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`In the context of means-plus-function limitations, claim construction
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`requires first defining the particular function of the limitation and then identifying
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`the corresponding structure for that function in the specification. Golight Inc. v.
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`Wal-Mart Stores Inc., 355 F.3d 1327, 1333-34 (Fed. Cir. 2004). The function is
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`construed to “include the limitations contained in the claim language, and only
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`those limitations.” Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296 F.3d
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`1106, 1113 (Fed. Cir. 2002). Once the function is properly identified, the next
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`inquiry is “what structure, if any, disclosed in the specification corresponds to the
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`claimed function.” Cardiac Pacemakers, 296 F.3d at 1113. “[W]hen a patentee
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`invokes means-plus-function claiming to recite a software function, it accedes to
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`the reciprocal obligation of disclosing a sufficient algorithm as corresponding
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`structure.” EON Corp. IP Holdings LLC v. AT&T Mobility, LLC, 785 F.3d 616,
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`623 (Fed. Cir. 2015); Ergo Licensing LLC v. CareFusion 303, Inc., 673 F.3d 1361,
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`1364-65 (Fed. Cir. 2012); WMS Gaming Inc. v. Int’l Gaming Tech., 184 F.3d 1339,
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`1348- 49 (Fed. Cir. 1999). In the absence of such an algorithm, the claim is
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`indefinite. Ergo Licensing, 673 F.3d at 1365.
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`6
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`
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`III. ARGUMENT
`Petitioners request reconsideration of the decision not to institute inter
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`partes review on claims 7, 9, 13, and 15 challenged in the Petition because the
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`Decision misapprehends or overlooks the construction of the “means for
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`maintaining” limitations included in those claims.
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`Claim Language
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`Function
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`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
`
`[computer readable
`program code] 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
`
`
`
`Board’s Construction of
`Corresponding
`Structure
`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
`
`
`The Board, in construing the “means for maintaining” limitations to require
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`a “processor programmed to carry out the algorithms for maintaining license
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`management policy information,” appears to have misapprehended and/or
`
`overlooked that the claims do not specify, and the ‘766 Patent does not describe,
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`7
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`
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`any algorithm or instructions for how license management policy information is to
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`be maintained at a server. The only reference to “maintaining” license
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`management policy information in the specification is found at 5:40-42 of
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`EX1001, which merely re-states a portion of the function recited in the claims:
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`“License management policy information for a plurality of application programs is
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`maintained at a license management server.” This statement is not, itself, an
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`algorithm or other instructions by which license management policy information is
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`maintained, as it does not explain how such information is maintained or provide
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`any algorithm for doing so.
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`Patent Owner and the Board cite to 7:26-39 of the ‘766 Patent to show that
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`the corresponding structure for the means for maintaining limitation includes, at a
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`minimum, a processor executing algorithms for performing the function.
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`Petitioners respectfully suggest that the Board appears to have misapprehended
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`and/or overlooked the fact that 7:26-39 of the ‘766 Patent merely refers to “the
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`flowcharts of FIGS. 2 through 5,” and states that “each block of the flowchart
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`illustrations, and combinations of blocks in the flowchart illustrations, can be
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`implemented by computer program instructions.” EX1001 at 7:26-39 (emphasis
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`added). But the actual “computer program instructions” are never disclosed in the
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`‘766 Patent, and nothing in this portion of the specification describes any algorithm
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`or actual instructions to be implemented by the computer. Petitioners also contend
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`8
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`
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`that this disclosure is not specifically or clearly linked to the “means for
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`maintaining” limitation. Similarly, the flowcharts of FIGS. 2 through 5 that are
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`referenced in this portion of the specification also are not related to the “means for
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`maintaining” limitation. See, e.g., EX1001 at 6:10-28.
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`The Board also found that 12:37-46 of the ‘766 Patent discloses “algorithms
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`for maintaining license management policy information.” Decision at 8. This
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`portion of the specification states:
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`One further aspect of a managed application environment according to
`the present invention is the ability to provide for license use
`management. License use management involves controlling how
`many users can use a particular application. License use, according to
`the present invention, is managed by setting certain policies, such as
`the limit of the number of users, whether crossing the limit of users is
`allowed or not and how users are counted (simultaneous number
`logged on, total number of clients that can use the application, and so
`on).
`
`EX1001 at 12:37-46. The Board appears to have misapprehended and/or
`
`overlooked the fact that 12:37-46 merely provides exemplary types of “license
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`use” information, but does not provide any algorithm or instructions for “setting
`
`policies” to which the license use information may apply. The very fact that the
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`‘766 Patent provides no disclosure of an algorithm, instructions, or steps for setting
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`9
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`
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`license management policy information renders the Board’s construction of the
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`“means for maintaining” limitation indefinite.
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`The ‘766 Patent simply does not provide any disclosure regarding the way a
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`server would be programmed to maintain license management policy information –
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`i.e., “at least one of a user identity based policy, an administrator policy override
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`definition or a user policy override definition.” For example, the ‘766 Patent
`
`provides no disclosure regarding how the license management server is
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`programmed to set, install, accept, modify, delete, configure, or otherwise maintain
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`any of these policies (i.e., user identity based policy, administrator policy override
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`definition, user policy override definition). The ‘766 Patent also provides no
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`disclosure regarding the difference between a “user identify based policy,” an
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`“administrator policy override definition,” or a “user policy override definition”
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`and how a user, software developer, and/or administrator would set any such
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`policies or whether or not the policies need to be set prior to use of the licensing
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`system.
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`Accordingly, Petitioners contend that the ‘766 Patent fails to disclose an
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`algorithm that shows how to “maintain [ ] license management policy information
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`for a plurality 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
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`policy, an administrator policy override definition or a user policy override
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`10
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`
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`definition” as recited in the claim. It would not be apparent to one of ordinary skill
`
`in the art how to achieve the recited function for the “means for maintaining”
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`limitation using a particular structure, as one of ordinary skill in the art would not
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`know from the specification of the ‘766 Patent which specific algorithms were
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`covered by the patent, and which were not. Petitioners further submit that a
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`construction that requires “algorithm” for performing the function – without
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`specifying the actual algorithm disclosed in the specification – is legally improper.
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`WMS Gaming, 184 F.3d at 1349 (“In a means-plus-function claim in which the
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`disclosed structure is a computer, or microprocessor, programmed to carry out an
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`algorithm, the disclosed structure is not the general purpose computer, but rather
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`the special purpose computer programmed to perform the disclosed algorithm.”);
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`Aristocrat, 521 F.3d at 1336-37 (rejecting argument that “even if there is no
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`disclosure of an algorithm in the patent, the disclosure of a microprocessor with
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`‘appropriate programming’ is a sufficient disclosure of structure,” and finding
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`claim indefinite because “there was no algorithm at all disclosed in the
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`specification”).2
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`2 See also Harris Corp. v. Ericsson, Inc., 417 F.3d 1241, 1253 (Fed. Cir.
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`2005) (“the corresponding structure is the algorithm”); id. at 1249 (“[T]he
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`corresponding structure for a §112 ¶6 claim for a computer-implemented function
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`is the algorithm disclosed in the specification.”).
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`11
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`In light of the lacking disclosure in the ‘766 Patent regarding the “means for
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`maintaining” limitation, Petitioners proposed the only structure that is clearly
`
`linked to the claimed function that does not render the claims indefinite: “a
`
`database and equivalents thereof.” There is no dispute that Olsen discloses this
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`structure. See, e.g., Decision at 12-13 (referencing “Olsen’s database 112” and
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`“LSP 110”); 16-17. Accordingly, Petitioners hereby request reconsideration of the
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`Decision, and request that the Board institute inter partes review of claims 7, 9, 13,
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`and 15 of the ‘766 Patent.
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`IV. CONCLUSION
`In view of the foregoing, Petitioners respectfully request that the Board
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`reconsider its Decision and institute inter partes review of claims 7, 9, 13, and 15
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`of the ‘766 Patent.
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`Date: November 15, 2017
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`Respectfully submitted,
`ERISE IP, P.A.
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`BY: /s/ Eric A. Buresh
`
`
`Eric A. Buresh, Reg. No. 50,394
`Counsel for Petitioners
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`12
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`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that on November
`15, 2017, a true and correct copy of this PETITIONERS’ REQUEST FOR
`REHEARING UNDER 37 C.F.R. § 42.71(d) was served on the counsel for Patent
`Owner by electronic means.
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`BY:
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`CERTIFICATE OF SERVICE ON PATENT OWNER
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`ERISE IP, P.A.
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` /s/ Mark C. Lang
`
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`Eric A. Buresh, Reg. No. 50,394
`Mark C. Lang, Reg. No. 55,356
`Kathleen D. Fitterling, Reg. No. 62,950
`6201 College Blvd., Suite 300
`Overland Park, KS 66211
`P: (913) 777-5600
`F: (913) 777-5601
`eric.buresh@eriseip.com
`mark.lang@eriseip.com
`kathleen.fitterling@eriseip.com
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`ATTORNEYS FOR PETITIONERS
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