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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`BITDEFENDER INC.
`Petitioner
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`v.
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`UNILOC USA, INC.
`Patent Owner
`____________
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`Case IPR2017-01315
`Patent 6,510,466
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`Title: Methods, Systems and Computer Program Products for Centralized
`Management of Application Programs on a Network
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`PETITIONER’S INSTITUTION RESPONSE BRIEF
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`TABLE OF CONTENTS
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`INTRODUCTION .............................................................................................. 1
`I.
`II. SCOPE OF INSTITUTION RESPONSE BRIEF ............................................. 1
`III. WAIVER, BURDEN OF PROOF ................................................................... 2
`IV. MATTERS IN WHICH THE BOARD ERRED .............................................. 3
`A. Structure not clearly linked to “means for installing” .................................... 3
`B.
`newly-instituted claims are invalid as indefinite ................................................... 7
`C. Even under the Board’s construction, Kasso in view of Raduchel render
`obvious systems/CRMs including means for installing as claimed ...................... 8
`V. CONCLUSION ................................................................................................ 10
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`If “means for installing” does not come within the In re Katz exception, the
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`ii
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`TABLE OF AUTHORITIES
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`Case/Statutes
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`Page
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`B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997) 6
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`Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015)
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`In re Cuozzo Speed Techs, LLC, 793 F.3d 1268, 1273 (Fed. Cir 2015)
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`Dell Inc. v. Acceleron, LLC, 818 F.3d 1293, 1301 (Fed. Cir. 2016)
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`2
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`7
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`1
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`Genzyme Therapeutic Prods. LP v. Biomarin Pharm. Inc., 825 F.3d 1360, 1365-
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`1367 (Fed. Cir. 2016)
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`2
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`LaRose Indus. LLC v. Capriola Corp., IPR2013-00120, Paper 24 at 2 (PTAB Oct.
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`17. 2013)
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`2
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`Novartis AG v. Torrent Pharms. Ltd., No. 2016-1352, slip. op. at 13-15 (Fed. Cir.
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`2017
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`2
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`SAS Institute, Inc. v. Complementsoft, LLC, 825 F.3d 1341 (Fed. Cir. 2016) 2
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`SAS Institute, Inc. v. Iancu, 2018 WL 1914661 (U.S. Apr. 24, 2018).
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`1
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`Volkswagen Grp. of Am., Inc. v. Emerachem Holdings, LLC, IPR2014-01555,
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`Paper 36 at 5 (PTAB Oct. 9, 2015)
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`5 USC 554 (b)(3), (c), (d)
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`35 USC §112 p6
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`35 USC §316(e)
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`35 USC §311(b)
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`iii
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`1
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`1, 2
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`6
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`2
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`7
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`35 USC §318(a)
`35 USC §318(a)
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`7
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`iv
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`iV
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`I.
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`INTRODUCTION
`Petitioner appreciates the opportunity afforded to the parties to address the
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`institution of claims 15-17, 22-24, 30, and 35-37 in light of SAS Institute, Inc. v.
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`Iancu, 2018 WL 1914661, at *10 (U.S. Apr. 24, 2018). While the present brief
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`is not specifically authorized by the rules, both the present brief and the original
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`SAS Order (Paper 14) are grounded in principles of due process1 that support the
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`parties’ right to be heard2.
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`II. SCOPE OF INSTITUTION RESPONSE BRIEF
`In the Order dated May 25, 2018 (Paper 15), the Panel specified that
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`Petitioner’s Institution Response Brief is, inter alia, for identifying matters in
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`which Petitioner believes the Board erred in its institution decision. Thus, the
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`present brief is broader than a request for rehearing.
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`Forcing the Petitioner to supply evidence with their petition for arguments
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`not yet raised would, in fact, require them to anticipate all possible arguments.
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`Volkswagen Grp. of Am., Inc. v. Emerachem Holdings, LLC, IPR2014-01555,
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`Paper 36 at 5 (PTAB Oct. 9, 2015). The Federal Circuit has interpreted 5 USC
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`§554(b)(3) in the context of IPR proceedings to mean that “an agency may not
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`1 Codified at least in part in the Administrative Procedure Act, 5 USC 554 (b)(3),
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`(c), (d). Dell Inc. v. Acceleron, LLC, 818 F.3d 1293, 1301 (Fed. Cir. 2016).
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`2 A waivable right does not impose an obligation to exercise that right.
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`1
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`change theories in midstream without giving respondents reasonable notice of
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`the change” and the opportunity to present argument under the new theory.” SAS
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`Institute, Inc. v. Complementsoft, LLC, 825 F.3d 1341 (Fed. Cir. 2016). See also
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`Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir. 2015). The Federal
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`Circuit also held that the purpose of the trial in an inter partes review proceeding
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`is to give the parties an opportunity to build a record by introducing evidence,
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`and not simply to weigh evidence of which the Board is already aware. Genzyme
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`Therapeutic Prods. LP v. Biomarin Pharm. Inc., 825 F.3d 1360, 1365-1367
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`(Fed. Cir. 2016). See also Novartis AG v. Torrent Pharms. Ltd., No. 2016-1352,
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`slip. op. at 13-15 (Fed. Cir. 2017).
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`III. WAIVER, BURDEN OF PROOF
` The Order dated May 25, 2018 (Paper 15) stated, citing 35 USC §316(e),
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`that Petitioner retains the burden to prove unpatentability of the previously non-
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`instituted claims, and that this burden is unchanged by Patent Owner’s waiver of
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`supplemental briefing on the newly-added claims. At the same time, the
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`ordinary post-institution briefing sequence is a Patent Owner’s Response (POR),
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`followed by a Petitioner’s Reply, and the Scheduling Order in the present case
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`put the parties on notice that any arguments for patentability not raised in the
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`POR are waived. Paper 8 at 3. See also LaRose Indus. LLC v. Capriola Corp.,
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`IPR2013-00120, Paper 24 at 2 (PTAB Oct. 17. 2013). Patent Owner has
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`2
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`unequivocally stated it will not file a Supplemental POR addressing the newly-
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`instituted claims, and has not raised, and thus has waived, any arguments during
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`the trial phase for the patentability of the newly-instituted claims.
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`IV. MATTERS IN WHICH THE BOARD ERRED
`A. Structure not clearly linked to “means for installing”
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`The Institution Decision (ID) took the position that passages of the ‘466
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`specification describing distribution are clearly linked to the function of
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`installing. Yet the ‘466 patent explicitly distinguishes distribution from
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`installation. See Ex. 1001, ‘466, Abstract: “Finally, software distribution and
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`installation may be provided from a single network management server.” See
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`also Ex. 1001, ‘466, 18:27-29, “an administrator both sends a new application
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`package to all supported on-demand servers and installs the program and
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`configures (registers) it to be available for use. Thus, the ‘466 specification
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`explicitly states that installation is a distinct step, which happens after a new
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`application package is sent to an on-demand server. It would be incongruous to
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`consider installing to include both steps that occur before an application package
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`is sent to an on-demand server (e.g. access control, or determining a location to
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`read data from at the source server), and a step that occurs after the application
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`package is sent (i.e. storage at the destination server).
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`3
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`In addition, at 12:25-31, the ‘466 specification describes receiving an
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`application program for installation. Thus installation occurs after the program
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`is received, which is also after it has been sent or distributed.
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`Furthermore, the 466 specification states that “A plurality of application
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`programs are installed at the server. The plurality of application programs may
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`be installed on a network drive.” Id. 4:24-27. This passage confirms that the
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`‘466 specification treated installing as storing, just as the Examiner understood
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`the
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`term during prosecution. Treating “installing” as “distributing”
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`is
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`inconsistent with the statement that application programs are installed on a
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`network drive. The above passage describes storing, rather than distributing,
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`application programs on a network drive. Perhaps the application programs are
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`distributed to a network drive, but “to” is not the preposition employed by the
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`‘466 specification.
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`The passages identified by the ID as corresponding to “means for
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`installing” (the description of Fig. 8, steps 112–116) are not clearly linked to
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`installing. Fig. 8 shows three pre-distribution steps (110-114), a distribution step
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`(step 116), and two post-distribution steps (118-120). None of these steps are
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`clearly linked to the function of installing, and the word “installing” is not to be
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`found anywhere in the passage cited by the ID.
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`4
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`The first passage, 17:55-58, states that “the application program source
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`and destination locations are specified at block 112.” The second passage,
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`17:58-60, describes the optional execution of a pre-distribution program at the
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`source server. Both of these passages relate to distribution, which is distinct
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`from installation, as explained above. The third passage, 17:60-62, states that
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`“the application program is then distributed by Tivoli™ server 20 to specified
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`on-demand servers 22, 22’ at block 116.” This passage relates to the distinct
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`function of distributing, and does not describe structure clearly linked to the
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`installing function. The fourth passage, 17:62-67, states that “In addition, the
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`destination servers 22, 22’ may be provided user identification and password
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`information controlling access to the application program and any supporting
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`database and may further be notified as to which end users and/or clients 24,
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`24’, 26, 26’ should be given access to the application program.” The
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`immediately-subsequent passage (18:1-5) states that “The software distribution
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`operations at block 116 may be accomplished using the software deployment
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`capabilities, for example, of the TME 10™ package.” This description sequence
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`makes it clear that the entire passage from 17:60 to 18:5 relates to block 116,
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`including the description of access control at 17:62-67. Both parts of 17:62-67
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`(providing user identification and password information controlling access to the
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`application program, and notifying the destination server which end users and/or
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`5
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`clients should be given access to the application program) describe the
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`distribution of data (application programs and user/client identities) at step 116.
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`In other words, both parts of 17:62-67 describe aspects of distributing
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`application programs rather than the distinct function of installing.
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`In the Decision Denying Petitioner’s Request for Rehearing (Paper 10),
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`the Board noted in a footnote that the ‘466 specification references “various
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`steps in the installation process” at 3:31-36. This generic statement does not
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`eliminate the patentee’s duty to clearly link structure to function, which is the
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`quid pro quo for the convenience of employing 35 USC §112 p6. B. Braun
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`Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed. Cir. 1997). If the
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`disclosure is ambiguous or inartfully drafted, the burden of failing to clearly link
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`structure to function should be borne by the patentee, who had control over the
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`drafting, rather than the public, who did not.
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`The Institution Decision (ID) stated the corresponding structure for
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`“means for installing” includes “at least an algorithm for specifying application
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`program source and destination locations, executing a pre-distribution program
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`(if specified), and distribution the application program software to an on-
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`demand server (and equivalents of such an algorithm).” (Paper 7 at 13)
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`(emphasis added). So the record is clear, the relevant algorithm is the one (if
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`any) for implementing the function at issue, i.e. installing, and the Board erred
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`6
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`in requiring an algorithm for the identified steps, in part because the cited
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`passages of the ‘466 specification describe no such algorithm.
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`B. If “means for installing” does not come within the In re Katz
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`exception, the newly-instituted claims are invalid as indefinite
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`In the Decision Denying Petitioner’s Request for Rehearing, the Board
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`stated that it “need not address these arguments because even if correct, they
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`would not change the outcome of our Decision as to these claims.” (Paper 10 at
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`5). These claims are now instituted. If “means for installing” were deemed not
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`to come within the In re Katz exception, the ‘466 patent specification contains
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`no structure at all clearly linked to “means for installing,” which renders the
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`claims indefinite.
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`The PTAB is endowed with broad powers to “issue a final written
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`decision with respect to the patentability of any patent claim challenged by the
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`petitioner” after an IPR proceeding is instituted. 35 USC §318(a). While 35
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`USC §311(b) limits the petition to patents and printed publications, §318(a) is
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`not so limited. In re Cuozzo Speed Techs, LLC, 793 F.3d 1268, 1273 (Fed. Cir
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`2015) (“Nor does the IPR statute expressly limit the Board’s authority at the
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`final decision stage to the grounds alleged in the IPR Petition. It simply
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`authorizes the Board to issue a final written decision with respect to the
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`patentability of any patent claim challenged by the petitioner and any new claim
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`7
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`added under section 316(d).”). Patent Owner has had both notice and
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`opportunity to argue the indefiniteness of the present claims, and has not done
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`so. The Board should decide that the challenged MPF claims are unpatentable as
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`indefinite.
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`C. Even under the Board’s construction, Kasso in view of
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`Raduchel render obvious systems/CRMs including means for
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`installing as claimed
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`The Board identified the following as clearly linked to the installing
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`function: i. specifying application program source and destination locations, ii.
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`executing a pre-distribution program (if specified), and iii. distributing the
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`application program software to an on-demand server. Kasso teaches and/or
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`renders obvious systems/CRMs including these limitations.
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` i. specifying application program source and destination location
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`Specifying source and destination locations are broad terms, and are
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`inherent parts of the basic functions of reading and writing data, respectively.
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`Reading and writing data are performed by machines, which cannot read/write
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`data without identifying, at some level of abstraction, locations to read/write the
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`data from/to. An operating system may specify locations at one level of
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`abstraction, while a hardware device (e.g. disk or solid state memory) may
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`specify locations at a different level, but in any event, data do not get
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`8
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`read/written magically without a machine at some level determining where to
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`read/write the data from/to.
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`Even if the relevant structure were deemed limited to specifying
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`application program source and destination locations at a particular level of
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`abstraction, e.g. at the level of the operating system, Kasso in view of Raduchel
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`render obvious systems/CRMs including the limitations. Kasso describes the
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`limitation(s) for properties lists, including application and host properties. Ex.
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`1009 (Kasso) at 8:6-24 and 9:18-33. These locations are source/destination
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`locations for reading/writing the properties lists. The properties lists include
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`Java code. Id., Table 1, 8:58-9:15. It would have been obvious to apply Kasso’s
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`teachings on specifying locations of properties lists to Kasso’s Java applets in
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`order to allow retrieval/storage of the applets from/to their sources/destinations.
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`ii. executing a pre-distribution program (if specified)
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`Kasso teaches executing a pre-distribution program (a bootstrap loader) at
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`5:20-22. The bootstrap loader is executed if present in the host read-only
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`memory.
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`iii. distributing the application program software to an on-demand server
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`Distribution is a broad term. Kasso’s applets cannot have magically
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`manifested themselves on HTTP server 208 without being somehow distributed
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`9
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`to the HTTP server 208. To the extent distribution is deemed limited to a
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`particular kind of distribution, for example distribution over a network, it would
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`have been obvious to distribute Kasso’s applets to HTTP server 208 over a
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`network for the same reason that any objects (including Kasso’s applets and
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`property lists) were distributed over a network, for example to the same HTTP
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`server 208 in the case of property lists, or from the same HTTP server 208 in the
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`case of applets. Ex. 1009 (Kasso), 6:4-24, 5:12-18, 2:35-37. Distribution over a
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`network was simply not inventive in 1998.
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`V. CONCLUSION
`Petitioner requests that all instituted claims be canceled.
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`Date: June 4, 2018
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`By:
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`Respectfully submitted,
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`/Andrei D. Popovici, Reg. No. 42,401/ /Mihai H. Murgulescu, Reg. No. 72,512/
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`Andrei D. Popovici, Reg. No. 42,401
`Lead Counsel for Petitioner
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`Mihai H. Murgulescu, Reg. No. 72,512
`Backup Counsel for Petitioner
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`10
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`42.6(e) CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e), we certify that we served an electronic
`copy of the foregoing PETITIONER’S INSTITUTION REPLY BRIEF via
`PTAB E2E to Patent Owner’s counsel of record at the following addresses:
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`Brett A. Mangrum brett@etheridgelaw.com
`Lead Counsel for Patent Owner, Reg. No. 64,783
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`Sean D. Burdick sean.burdick@unilocusa.com
`Back-up Counsel for Patent Owner, Reg. No. 51,513
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`Ryan Loveless ryan@etheridgelaw.com
`Back-up Counsel for Patent Owner, Reg. No. 51,970
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`James Etheridge jim@etheridgelaw.com
`Back-up Counsel for Patent Owner, Reg. No. 37,614
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`Jeffrey Huang jeff@etheridgelaw.com
`Back-up Counsel for Patent Owner, Reg. No. 68,639
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`Date of Service: June 4, 2018
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`Law Office of Andrei D. Popovici, P.C.
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`Telephone: 650-530-9989
`Facsimile: 650-530-9990
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`/Andrei D. Popovici/
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`Andrei D. Popovici
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`Registration No. 42,401
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`/Mihai H. Murgulescu/
`Mihai H. Murgulescu
`Registration No. 72,512
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`A
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