Trials@uspto.gov
`571-272-7822
`
`
`Paper 12
`Entered: December 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
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`571-272-7822
`
`
`Paper 12
`Entered: December 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
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`IPR2017-01291
`Patent 6,728,766 B2
`
`
`Ubisoft, Inc. and Square Enix, Inc. (“Petitioner”) 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. § 311−319.
`Paper 1 (“Pet.”). Uniloc USA, Inc. and Uniloc Luxembourg S.A. (“Patent
`Owner” or “Uniloc”) timely filed a Preliminary Response. Paper 7 (“Prelim.
`Resp.”). On November 1, 2017, we issued a Decision on Institution in
`which we instituted inter partes review for claims 1 and 3, but denied
`institution as to claims 7, 9, 13, and 15. Paper 9 (“Decision” or “Dec.”).
`Petitioner filed a Request for Rehearing on November 15, 2017,
`urging that the panel reconsider our Decision and institute inter partes
`review of the denied claims. Paper 11 (“Request” or “Req. Reh’g”). For the
`reasons that follow Petitioner’s Request for Rehearing is denied.
`The party requesting rehearing has the burden of showing that the
`decision should be modified, and “[t]he request must specifically identify all
`matters the party believes the Board misapprehended or overlooked, and the
`place where each matter was previously addressed in a motion, an
`opposition, or a reply.” 37 C.F.R. § 42.71(d). In our Decision, we disagreed
`with Petitioner’s proposed construction of “means for maintaining” as
`encompassing the structure of “a database and equivalents thereof.” Dec. 6.
`We determined that Petitioner’s argument and evidence did not show that
`the database was clearly linked to the recited function. Id. Instead, we were
`persuaded by Patent Owner’s showing that the Specification of the
`’433 patent linked the function of “maintaining license management policy
`information for a plurality of application programs at a license management
`server” to algorithms for maintaining license management policy
`information. Id. at 7−8.
`
`2
`
`
`
`IPR2017-01291
`Patent 6,728,766 B2
`
`
`Petitioner’s Request does not show a matter that we misapprehended
`or overlooked. For instance, Petitioner argues that “the Board’s construction
`appears to have overlooked or misapprehended the disclosure of the
`’766 patent, as the specification does not disclose—and the Board’s
`construction does not identify—any algorithmic structure.” Req. Reh’g 3.
`Further, Petitioner argues that the “database and equivalents thereof” is the
`only structure that is clearly linked to the function and that does not render
`the claims indefinite. Req. Reh’g. 4. These arguments amount to expressing
`mere dissatisfaction with the Board’s decision, not identifying a matter that
`we overlooked or misapprehended. As we noted in the Decision, Petitioner
`did not proffer any argument as to how “a database and equivalents thereof”
`is linked to the function of “maintaining” the license management policy at
`the server. Dec. 6. The argument presented in Rehearing does not point out
`any argument or evidence included in the Petition that we did not consider or
`that we misapprehended. The Rehearing merely restates what we already
`found lacking: that the “database” is the linked structure.
`
`We are also not persuaded by Petitioner’s contention that the
`“database” is the only structure that is clearly linked such that the claims are
`not indefinite. Req. Reh’g 12. Our reviewing court has made clear that we
`are not permitted to adopt an insufficient corresponding structure. See
`IPCom GmbH & Co. v. HTC Corp., 861 F.3d 1362, 1371 (Fed. Cir. 2017),
`as corrected (Aug. 21, 2017). It stands to reason, therefore, that if the
`“database” has not been shown to be sufficient structure, we are not
`permitted to adopt that structure merely because to not do so would render
`the claims indefinite.
`
`3
`
`
`
`IPR2017-01291
`Patent 6,728,766 B2
`
`
`Now we turn to Petitioner’s argument against our construction of the
`term “means for maintaining.” This argument centers on the contention that
`the Specification of the ’766 patent does not disclose an “algorithm.” Req.
`Reh’g 3−11. This argument is not persuasive for two reasons. First, the
`Petition did not proffer any contentions, argument, or evidence regarding
`whether the ’766 patent disclosed a sufficient (or any) algorithm, and,
`therefore, we could not have misapprehended or overlooked the matter. It is
`Petitioner’s burden to show that the matter was presented previously, and
`that we overlooked or misapprehended the matter. Absent such a showing,
`the Rehearing Request presents new arguments akin to an unauthorized
`reply to the preliminary response, which is not the role of a Request for
`Rehearing under our rules.
`Second, even if we were to agree with Petitioner’s Rehearing
`argument, the claim term “means for maintaining” allegedly would lack
`proper disclosure in the ’733 patent Specification, rendering us powerless to
`review the denied claims. Petitioner’s argument is that “the ‘766 Patent
`provides no disclosure of an algorithm, instructions, or steps for setting
`license management policy information[,which] renders the Board’s
`construction of the ‘means for maintaining’ limitation indefinite.” Req.
`Reh’g 9−10. In the end, given that we have not been persuaded by
`Petitioner’s showing that the “database” is the linked structure, a finding of
`no “algorithm” would result in denial of inter partes review of claim 7, 9,
`13, and 15 based on our inability to construe the claim.
`In summary, Petitioner has not persuaded us that we misapprehended
`or overlooked arguments or evidence that a “database and equivalents
`thereof” is clearly linked to the function recited in the “means for
`
`4
`
`
`
`IPR2017-01291
`Patent 6,728,766 B2
`
`maintaining” limitation. Further, Petitioner has not persuaded us that we
`misapprehended or overlooked any contention that the ’766 patent does not
`disclose an “algorithm” for the “means for maintaining,” as such contention
`was not presented. Consequently, Petitioner’s Request for Rehearing is
`denied.
`
`5
`
`
`
`IPR2017-01291
`Patent 6,728,766 B2
`
`PETITIONER:
`Eric Buresh
`Mark Lang
`Kathleen Fitterling
`ERISE IP
`eric.buresh@eriseip.com
`mark.lang@eriseip.com
`kathleen.fitterling@eriseip.com
`
`PATENT OWNER:
`
`Brett Mangrum
`Ryan Loveless
`ETHERIDGE LAW GROUP
`brett@etheridgelaw.com
`ryan@etheridgelaw.com
`
`Sean Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`6
`
`
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