Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 9
`Entered: January 18, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UBISOFT ENTERTAINMENT S.A. and SQUARE ENIX,
`Petitioner
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01827
`Patent 7,069,293 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, BARBARA A. BENOIT, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`571-272-7822
`
`
`Paper No. 9
`Entered: January 18, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UBISOFT ENTERTAINMENT S.A. and SQUARE ENIX,
`Petitioner
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01827
`Patent 7,069,293 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, BARBARA A. BENOIT, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2017-01827
`Patent 7,069,293 B2
`
`
`Ubisoft Entertainment S.A. and Square Enix (collectively,
`“Petitioner”) filed a Petition pursuant to 35 U.S.C. §§ 311–19 to institute an
`inter partes review of claims 1, 12, and 17 of U.S. Patent No. 7,069,293 B2,
`issued on June 27, 2006 (Ex. 1001, “the ’293 patent”). Paper 3 (“Pet.”).
`Uniloc USA, Inc. and Uniloc Luxembourg S.A.1 (collectively, “Patent
`Owner”) filed a preliminary response. Paper 7 (“Prelim. Resp.”). Applying
`the standard set forth in 35 U.S.C. § 314(a), which requires demonstration of
`a reasonable likelihood that Petitioner would prevail with respect to at least
`one challenged claim, we deny Petitioner’s request and do not institute an
`inter partes review of any challenged claim.
`I. BACKGROUND
`A. The ʼ293 Patent (Ex. 1001)
`The ʼ293 patent relates to centralized control of software distribution
`for a computer network managed by a network management server. Ex.
`1001, 4:14–16. Figure 1 of the ’293 patent is reproduced below.
`
`
`
`
`1 The Preliminary Response identifies only Uniloc Luxembourg S.A. as the
`patent owner (Prelim. Resp. 1), but its Mandatory Notice identifies Uniloc
`Luxembourg S.A. as Patent Owner and Uniloc USA Inc. as the exclusive
`licensee in this case. Paper 4, 1.
`
`
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`2
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`IPR2017-01827
`Patent 7,069,293 B2
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`
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`Figure 1 illustrates a computer network according to an embodiment of the
`invention. Id. at 6:60–63. In particular, network management server 20 is
`connected to on-demand servers 22 and 22’ which are in turn connected to
`client stations 24 and 24’ and 26 and 26’ respectively. Id. at 6:63–7:9. The
`’293 patent describes a method of distributing software from the network
`management server to the on-demand servers. Id. at 17:20–18:36.
`
`
`
`Illustrative Claim
`B.
`Claims 1, 12, and 17 are independent. Claim 1 is illustrative of the
`challenged claims and is reproduced below:
`1. A method for distribution of application programs to a
`target on-demand server on a network comprising the following
`
`
`
`3
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`IPR2017-01827
`Patent 7,069,293 B2
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`
`executed on a centralized network management server coupled
`to the network:
`providing an application program to be distributed to the
`network management server;
`specifying a source directory and a target directory for
`distribution of the application program;
`preparing a file packet associated with the application
`program and including a segment configured to initiate
`registration operations for the application program at the target
`on-demand server; and
`distributing the file packet to the target on-demand server
`to make the application program available for use by a user at a
`client.
`Id. at 21:22–36.
`
`C. Related Proceedings
`Petitioner identifies a number of related lawsuits involving the ʼ293
`patent filed in the Eastern District of Texas. Pet. 50–51. Patent Owner also
`identifies lawsuits pending in the Eastern District of Texas as well as the
`Northern District and Central District of California. Paper 4, 2.
`D. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are
`construed according to their broadest reasonable interpretation in light of the
`specification of the patent in which they appear. See 37 C.F.R. § 42.100(b);
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under
`that standard, claim terms are generally given their ordinary and customary
`meaning, as would be understood by one of ordinary skill in the art in the
`context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249,
`1257 (Fed. Cir. 2007).
`Petitioner offers constructions of a number of claim terms in its
`Petition. Pet. 2–6. Patent Owner disputes several of Petitioner’s proposed
`
`
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`IPR2017-01827
`Patent 7,069,293 B2
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`constructions. Prelim. Resp. 6–9. For purposes of this decision, we need
`not construe any terms, except as discussed below in the context of
`Petitioner’s asserted ground. See Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need
`be construed that are in controversy, and only to the extent necessary to
`resolve the controversy”); see also Nidec Motor Corp. v. Zhongshan Broad
`Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs.
`in the context of an inter partes review).
`
`E. Asserted Ground
`
`Petitioner relies on The TME Deployment Cookbook (“TME
`Cookbook”) dated April 1997 as anticipating claims 1, 12, and 17 of the
`ʼ293 patent under 35 U.S.C. § 102(b). Petitioner further relies on testimony
`from Mark C. Lang, an attorney with Erise IP, P.A., as establishing that
`TME Cookbook qualifies as a printed publication. Pet. 10–11 (citing Ex.
`1004). Patent Owner does not challenge the printed publication status of
`TME Cookbook at this stage of the proceeding. See Prelim. Resp. For
`purposes of this decision, we assume without deciding that Petitioner has
`sufficiently shown TME Cookbook qualifies as a printed publication under
`35 U.S.C. § 102(b).
`Petitioner does not provide any expert testimony in support of its
`asserted ground.
`
`
`
`II. ANALYSIS
`Petitioner contends that claims 1, 12, and 17 are anticipated by TME
`Cookbook. Pet. 10–50. For the reasons that follow, we are persuaded,
`
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`IPR2017-01827
`Patent 7,069,293 B2
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`based on this record, that Petitioner has not demonstrated a reasonable
`likelihood of prevailing on this challenge.
`1.
`Overview of TME Cookbook
`TME Cookbook is dated April 1997, and Petitioner contends it
`qualifies as prior art under 35 U.S.C. § 102(b). Pet. 10–11. TME Cookbook
`states that its “pages are web versions of some embryonic IBM Redbook
`material” and “provides guidance on how to understand and use TME 10
`Software Distribution.” Ex. 1002, 1, 17.2 It spans 812 pages with 450
`figures. Id. at 7–15.
`
`
`Analysis of Petitioner’s Challenge
`2.
`To establish anticipation, each and every element in a claim, arranged
`as recited in the claim, must be found in a single prior art reference.
`See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir.
`2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed.
`Cir. 2001). Although the elements must be arranged or combined in the
`same way as in the claim, “the reference need not satisfy an ipsissimis verbis
`test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d
`1331, 1334 (Fed. Cir. 2009); accord In re Bond, 910 F.2d 831, 832 (Fed.
`Cir. 1990).
`Independent claims 1, 12, and 17 all recite “preparing a file packet
`associated with the application program and including a segment configured
`to initiate registration operations for the application program at the target on-
`demand server” (the “file packet” limitation). Ex. 1001, 21:31–34 (claim 1),
`
`
`2 We refer to the page numbers of Exhibit 1002 added by Petitioner in the
`bottom right corner.
`
`
`
`6
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`IPR2017-01827
`Patent 7,069,293 B2
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`22:26–30 (claim 12, reciting means for the same), 23:4–8 (claim 17, reciting
`computer readable program code means that prepares the same). Petitioner
`contends TME Cookbook discloses this limitation. Pet. 12, 28–39, 50.
`Specifically, Petitioner contends TME Cookbook’s Tivoli Management
`Region (“TMR”) server discloses a centralized network management server,
`its managed nodes disclose target on-demand servers, and its PC managed
`nodes disclose clients. Id. at 13–14. Petitioner further contends that TME
`Cookbook names an exemplary network management server FOXTROT, an
`exemplary on-demand server ROMEO, and an exemplary client JULIET.
`Id. at 14–15. Petitioner also contends TME Cookbook’s file package or file
`package block discloses the recited “file packet.” Id. at 28.
`Regarding the recited “segment configured to initiate registration
`operations for the application program at the target on-demand server,”
`Petitioner contends in TME Cookbook “[w]hen the ‘User ID or User Name’
`parameter is set for a file package, the file package includes a segment
`configured to initiate ‘registration operations’ for the application at the target
`on-demand server.” Id. at 29. Specifically, Petitioner states “[t]his
`parameter allows an administrator to provide a list identifying various
`application files and/or directories available for execution by specified users,
`including a designation of which application files and/or directories are
`authorized with respect to individual users.” Id. at 29–31 (citing Ex. 1002,
`153, 155, 162, 163, 203). Petitioner also points to TME Cookbook’s
`“During Commit script,” its before and after distribution programs, and its
`log file path. Id. at 31–34.
`Patent Owner contends that Petitioner has not shown TME Cookbook
`teaches the “file packet” limitation. Prelim. Resp. 9–14. Patent Owner
`
`
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`IPR2017-01827
`Patent 7,069,293 B2
`
`contends that TME Cookbook does not disclose registration “as a function
`performed at a ‘target on-demand server.’” Id. at 10–11. Patent Owner
`further argues that even if the recited registration operations include
`“maintaining at the on-demand server a profile management list identifying
`application programs available for use by the user,” as argued by Petitioner,
`TME Cookbook does not teach maintaining such a list. Id. at 11–14.
`We have reviewed Petitioner’s arguments and evidence, and find they
`do not sufficiently show that TME Cookbook discloses the “file packet”
`limitation. In particular, Petitioner has not sufficiently shown that TME
`Cookbook’s file package or file package block includes “a segment
`configured to initiate registration operations for the application program at
`the target on-demand server” as recited in the challenged claims.
`For the recited “segment,” Petitioner points to TME Cookbook’s
`“User ID or User Name.” Pet. 29. Petitioner cites a table in TME
`Cookbook which lists User ID and User Name as “Included Files Options,”
`which specify a user ID that can be assigned to a file or a directory. Id. at 30
`(citing Ex. 1002, 162–163). Petitioner also points to a pkgadd command,
`which requires the user ID to be set as a “super user.” Id. at 31 (quoting Ex.
`1002, 203).
`As an initial matter, we note that Petitioner relies on dependent claims
`4 and 5 to support its argument that “a segment configured to initiate
`registration operations for the application program at the target on-demand
`server” includes “a segment configured to designate a list of authorized users
`for the application program.” Pet. 4. Claim 4 depends indirectly from claim
`1 and recites, in relevant part, “registration operations include maintaining at
`the target on-demand server a profile management list identifying
`
`
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`IPR2017-01827
`Patent 7,069,293 B2
`
`application programs available for use by the user.” Ex. 1001, 21:47–50.
`Claim 5 depends from claim 4 and further recites “the profile management
`list includes a designation of authorized users for application programs
`identified in the profile management list.” Id. at 21:54–57. While we agree
`that these dependent claims, as well as the portions of the ’293 patent
`Petitioner cites (Pet. 4), inform the meaning of “registration operations” in
`claim 1, we disagree with Petitioner’s contention that “a segment configured
`to initiate registration operations for the application program at the target on-
`demand server” includes “a segment configured to designate a list of
`authorized users for the application program.” In particular, we note that
`Petitioner’s contention omits the recited location for the “registration
`operations,” namely “at the target on-demand server,” and the recited
`operation in claim 4, namely maintaining the list. In other words, the recited
`“segment” cannot simply be a list contained in the file package; it must be
`configured to “initiate registration operations for the application program at
`the target on-demand server.”
`We agree with Patent Owner that Petitioner has not sufficiently shown
`TME Cookbook discloses such a segment. As discussed above, Petitioner
`cites portions of TME Cookbook that allow a User ID to be assigned to a
`specific file or directory and run a certain command to install a package
`(pkgadd) when the User ID of a “super user” is specified. Id. at 29–31
`(citing Ex. 1002, 162–63, 203).3
`
`
`3 Petitioner also cites without explanation pages 153 and 155 of TME
`Cookbook. Pet. 30. These cited pages mention specifying the user under
`which a script must run and UNIX default access privileges for users or
`groups. See Ex. 1002, 153, 155. Without further evidence or argument from
`9
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`IPR2017-01827
`Patent 7,069,293 B2
`
`
`The portions of TME Cookbook cited by Petitioner, however, do not
`establish that such a User ID or User Name disclose “a segment configured
`to initiate registration operations for the application program at the target on-
`demand server.” In particular, the table cited by Petitioner identifies that a
`User ID or User Name can be assigned to each file or directory to be packed
`for distribution (Ex. 1002, 162–63), but does not disclose how the User ID
`or User Name is used at the target on-demand server once the file package or
`file package block is received. In other words, the cited table does not
`disclose that the User ID or User Name initiates registration operations for
`the application program at the target on-demand server.
`In addition, TME Cookbook discloses that a command (pkgadd) can
`run if a certain parameter is set with the user ID of a super user. Pet. 31
`(citing Ex. 1002, 203). Petitioner, however, does not explain how, if at all,
`the user ID for the pkgadd command relates to the user ID specified for the
`files in the file package discussed above. Petitioner also does not provide
`evidence or explanation regarding the meaning of “super user” in the context
`of TME Cookbook or how the pkgadd command relates to registration
`operations. Indeed, pkgadd appears to be a command in TME Cookbook for
`installing a package (Ex. 1002, 198), and as Patent Owner points out
`(Prelim. Resp. 10), the ’293 patent distinguishes between installation and
`registration. E.g., Ex. 1001, 4:18–22 (“install and register the application
`program on the on-demand server”), 4:25 (“install and register the
`program”), 17:49–50 (“install and register a transferred file packet”), 18:31–
`33 (“[A]n administrator both sends a new application package to all
`
`
`Petitioner, we determine these citations do not sufficiently show the recited
`“segment.”
`
`
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`IPR2017-01827
`Patent 7,069,293 B2
`
`supported on-demand servers and installs the program and configures
`(registers) it to be available for use.”).
`Petitioner also points to TME Cookbook’s “During Commit script,”
`its before and after distribution programs, and its log file path. Pet. 31–34.
`The Petition is unclear whether these are being relied on as disclosing “a
`segment configured to initiate registration operations for the application
`program at the target on-demand server.” Assuming they are, Petitioner
`again provides insufficient evidence or explanation to show the cited
`portions of TME Cookbook teach that limitation.
`For the “During Commit script,” Petitioner states: “TME Cookbook
`discloses that an administrator can provide a During Commit script to
`control when a distributed application program becomes available for use at
`each target on-demand.” Pet. 31 (citing Ex. 1002, 248–250, 715–720). We
`are not persuaded that this script discloses the recited segment at least in part
`because Petitioner has not shown this script is part of TME Cookbook’s file
`package or file package block. Instead, TME Cookbook appears to suggest
`that its commit.bat is either available on a subscriber or stored on a host. Ex.
`1002, 248, 715.
`Petitioner further states “TME Cookbook additionally discloses that,
`like the [’]293 Patent, the administrator can specify before and after
`distribution programs” and “an exemplary After Distribution script that will
`‘generate a program icon after file package distribution.’” Pet. 31–32 (citing
`Ex. 1002, 91, 240–41, 696). Again, however, Petitioner has not shown such
`scripts are part of TME Cookbook’s file package or file package block. See
`Ex. 1002, 241 (“Select the Subscribers radio button in the Get
`
`
`
`11
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`IPR2017-01827
`Patent 7,069,293 B2
`
`BAT/EXE/C[O]M file from field to specify the node where the script file is
`stored.”).
`Petitioner concedes the cited example provides that the After
`Distribution script is stored at the “‘Subscriber’ (i.e., target) node,” but
`Petitioner contends that “selection of the ‘Source Host’ is also an option, in
`which case the script can be distributed as a file with the file package.” Pet.
`33–34 (citing Ex. 1002, 256–257, 750–752). Petitioner neglects to
`recognize, however, that in the cited example, the source host is “romeo”
`which Petitioner maps to the target on demand server, and the file package is
`being distributed to PC managed nodes, which Petitioner maps to the recited
`clients. Ex. 1002, 256 (“Select romeo as the Source Host,” and “[s]elect the
`four files that we previously copied, to distribute them to the PC managed
`nodes.”); see also id. at 254 (stating that the AGENT007.DIF file and the
`UPDAGENT.BAT script file are copied to the managed node romeo (i.e.,
`the target on-demand server)); Pet. 13–14. In other words, TME Cookbook
`appears to suggest that files are copied to the managed nodes such as romeo
`and distributed in file packages to the PC managed nodes. Petitioner does
`not explain how this example shows “a segment configured to initiate
`registration operations for the application program at the target on-demand
`server” (emphasis added) (i.e., at romeo). The same is true for the other
`exemplary before distribution and after distribution scripts cited by
`Petitioner (Pet. 34): they pertain to file packages distributed from romeo (a
`target on-demand server) to juliet (a client). Ex. 1002, 246 (“select the data
`from romeo you want to distribute”), 247 (“create the directories . . . on
`juliet”).
`
`
`
`12
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`IPR2017-01827
`Patent 7,069,293 B2
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`
`Finally, Petitioner states in TME Cookbook, “the administrator can
`provide a log file path allowing the TMR server to track the results of the
`software distribution operation, including detecting any errors.” Pet. 34
`(citing Ex. 1002, 147, 240, 6944). Petitioner does not adequately explain
`how setting the name of a log file on a host that is used for distribution
`errors and progress teaches a segment that is configured to initiate
`registration operations. In addition, the cited example again pertains to file
`packages distributed to juliet, a client. See Ex. 1002, 241.
`In sum, Petitioner has not persuasively explained, or provided
`sufficient evidence to show, that TME Cookbook discloses “preparing a file
`packet associated with the application program and including a segment
`configured to initiate registration operations for the application program at
`the target on-demand server,” as recited in the challenged claims.5 For the
`reasons discussed above, Petitioner has not demonstrated a reasonable
`likelihood of prevailing in showing that claims 1, 12, and 17 are anticipated
`by TME Cookbook.
`
`
`III. SUMMARY
`We determine that Petitioner has not demonstrated a reasonable
`
`likelihood of prevailing on its challenges to claims 1, 12, and 17 of the ’293
`patent.
`
`
`
`
`4 Petitioner’s citation to page 294 of Exhibit 1002 appears to be a
`typographical error because Figure 372 is on page 694 of that exhibit.
`5 Because we find Petitioner has not shown a reasonable likelihood of
`prevailing on this challenge for the reasons discussed above, we do not reach
`Patent Owner’s other arguments as to this challenge.
`13
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`IPR2017-01827
`Patent 7,069,293 B2
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`
`IV. ORDER
`
`It is, therefore,
`ORDERED that the Petition is DENIED and no trial is instituted.
`
`
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`IPR2017-01827
`Patent 7,069,293 B2
`
`PETITIONER:
`Eric A. Buresh
`Mark C. Lang
`Kathleen D. Fitterling
`ERISE IP, P.A.
`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 D. Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`
`
`
`
`
`
`
`
`
`
`
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`15
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`
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