UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A.1
`Patent Owner
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`IPR2017-1993
`PATENT 9,414,199
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`PATENT OWNER RESPONSE SUR-REPLY
`PURSUANT TO BOARD’S ORDER (PAPER 18)
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`1 The owner of this patent is Uniloc 2017 LLC.
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner
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`v.
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`
`
`UNILOC LUXEMBOURG, S.A.1
`Patent Owner
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`
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`
`IPR2017-1993
`PATENT 9,414,199
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`
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`PATENT OWNER RESPONSE SUR-REPLY
`PURSUANT TO BOARD’S ORDER (PAPER 18)
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`1 The owner of this patent is Uniloc 2017 LLC.
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`Table of Contents
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`IPR2017-1993
`U.S. Patent 9,414,199
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`1
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`1
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`5
`7
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`II.
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`I.
`II.
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`INTRODUCTION
`Petitioner fails to show that the only proposed construction for
`“within the predetermined maximum amount of time”
`improperly imports limitations and excludes an embodiment
`Petitioner fails to show fails to show that the only proposed
`construction contradicts the prosecution history
`III. CONCLUSION
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`
`
`ii
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`IPR2017-1993
`U.S. Patent 9,414,199
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`I.
`
`INTRODUCTION
`Pursuant to the Board’s Order (Paper 18), Uniloc 2017 LLC (the “Patent
`Owner” or “Uniloc”) submit Uniloc’s Sur-Reply in the inter partes review (case no.
`IPR2017-01993) of United States Patent No. 9,414,199 (“the ’199 patent” or
`“EX1001”) filed by Apple Inc. (“Petitioner”).
`The Board stated in its Order that “a sur-reply would be an appropriate vehicle
`to respond to the arguments regarding prosecution disclaimer and the Tseng
`reference as requested by Patent Owner.”
`
`II.
`
`Petitioner fails to show that the only proposed construction for “within
`the predetermined maximum amount of time” improperly imports
`limitations and excludes an embodiment
`The parties dispute the proper construction of the phrase “… within the
`predetermined maximum amount of time.” As set forth in Uniloc’s Response, “[o]ne
`having ordinary skill in the art, having reviewed the specification, would readily
`recognize that the plain and ordinary meaning is a predetermined maximum quantity
`of time (e.g., a predetermined number of days, hours, minutes, and/or seconds, etc.)
`starting from when the “predicting” calculation is executed.” Resp. (Paper 14) at
`6‒14. Neither the Petition nor its attached declaration proposes and defends any
`competing construction.2 In its Reply, Petitioner provides no supplemental
`
`
`2 Petitioner and its declarant offer certain arguments, in the alternative, in the event
`that “a predetermined maximum amount of time is interpreted narrowly to indicate
`a time period calculated from the current time to the predicted arrival time.” See,
`e.g., Pet. at 68 and 70; EX1003 ¶ 209. Neither Petitioner nor its declarant defend
`such a construction nor explain whether or why it is too narrow. Only Patent Owner
`has addressed the merits of Petitioner’s construction. See Resp. 11 n.9.
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`1
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`IPR2017-1993
`U.S. Patent 9,414,199
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`declaration and again makes no attempt to propose and defend a competing
`construction. Rather, Petitioner newly relies on attorney argument to attack Uniloc’s
`construction as allegedly inconsistent with certain intrinsic evidence. Petitioner is
`wrong.
`First, the Reply newly offers (through attorney argument only)3 a
`misinterpretation of the ’199 patent’s description of its “current context” set forth
`under the section heading “Summary of the Invention.” Rep. 5‒6 (citing EX1001,
`1:52‒64). According to Petitioner, the cited description of the “current context”
`allegedly discloses two distinct embodiments, which Petitioner differentiates as “(1)
`a time duration starting from the current time and (2) a time window in the future.”
`Id. Petitioner acknowledges what it identifies as the first embodiment is consistent
`with the proposed construction. Id. It is only what Petitioner alleges is a distinct and
`second embodiment that is purportedly excluded by the proposed construction. Id.
`Petitioner overlooks that the full breadth of cited passage expressly pertains
`to what the ’199 patent consistently refers to as its “current context.” The cited
`paragraph introduces the concept as follows: “[t]o make a prediction regarding
`future locations of the user device, the server considers the user device’s location
`history in a current context.” Id., 1:47‒50 (emphasis added). The description then
`unambiguously states that “[o]ne part of the current context is the current day and
`
`
`3 Contrary to what Petitioner suggests, its declarant did not testify that the cited
`passage discloses two distinct embodiments, only one of which applies a time
`duration starting from the current time. Compare Rep. 5‒6 with EX1003 ¶ 44.
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`2
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`IPR2017-1993
`U.S. Patent 9,414,199
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`the current time.” Id., 1:49‒50. This definitive aspect, therefore, expressly applies to
`all predictions in the “current context.”
`This definitive description is then followed by “an example” (in the singular)
`expressly offered “[t]o appreciate this [current] context.” Id., 1:50. The example
`includes the following description quoted (in part) by Petitioner:
`
`Consider that a new department store has opened at a given
`location. The manager of the department store can request that
`anyone that is at least 50% likely to visit a store considered to be
`in competition of the department store within one hour should be
`sent a promotional code entitling that person to a discount. To do
`so, the manager can specify locations of all competing stores
`within a five-mile radius of the given location as the one or more
`predetermined locations. In addition, the manager can specify 50%
`as the predetermined minimum likelihood and one hour as the
`predetermined maximum amount of time. The manager can also
`specify days and times at which the actions are applicable, e.g.,
`only during hours at which the new department store is open.
`Id., 1:51‒64. This description of a “current context,” where the predetermined
`maximum amount of time is “within one hour” of when the predicting calculation is
`executed, expressly invokes the corresponding “within” claim language.
`Petitioner cites no testimony of its declarant (because there is none) allegedly
`supporting the attorney argument that the last sentence of the above block quotation
`applies something other than the disclosed predetermined maximum amount of time
`of “within one hour.” Id. That last sentence simply recognizes “actions,” such as
`making a predictive calculation or sending a promotional advertisement, may not be
`applicable when the manager’s store is not currently open.
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`3
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`IPR2017-1993
`U.S. Patent 9,414,199
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`Thus, even if all other conditions of the “current context” would otherwise be
`met (e.g., a prediction as disclosed would confirm that someone is currently at least
`50% likely to visit a store considered to be in competition of the department store
`within one hour, etc., and thus satisfies the proposed construction), the manager can
`nevertheless customize the system, for example, such that no current prediction
`should be calculated or no promotional code should be sent while the store is closed.
`Id. This does not mean the predictions, when made, are not calculated in terms of
`“within one hour” from the present, as Petitioner argues. Rather, it simply adds to
`the “current context” an optional programable condition to account for store hours.
`That the last sentence of the above block quotation necessarily pertains to the
`“current context” is also confirmed by the very next sentence, which introduces a
`new paragraph as follows: “[a]nother aspect of the current context ….” Id., 1:65.
`Second, Petitioner argues (through its counsel only) that the so-called
`“restaurant example” in the ’199 patent does not support the only proposed
`construction. Id. citing Resp. 10 n.8. Tellingly, however, Petitioner has no answer
`for the previously-raised and undisputable fact that the ’199 patent explicitly defines
`the “current context” of that example as “a combination of the current day and time
`and the current location of the user device.” Resp. 10 n.8 (quoting EX1001 2:17‒
`27) (emphasis added). Thus, a prediction executed in the “current context” defined
`in that example also supports the only proposed construction.
`Third, Petitioner collects citations and argues (though its counsel only) that
`those citations defeat the only proposed and defended construction ostensibly
`because they include phrases such as “in the future” or “at a particular time.”
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`4
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`IPR2017-1993
`U.S. Patent 9,414,199
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`Petitioner ignores, once again, the fact that the ’199 patent expressly defines its
`“current context” in terms of predicting future locations: “[t]o make a prediction
`regarding future locations of the user device, the server considers the user device’s
`location history in a current context.” Id., 1:47‒50 (emphasis added). As explained
`above, the specification provides an example of predictions occurring “in the future”
`and “at a particular time” in the “current context” defined, in part, as “within one
`hour” of the predicting calculation. Id., 1:51‒64. Petitioner admits at least this
`example is encompassed by Uniloc’s construction. Rep. 5‒6. The specification’s
`particular use of the cited phrases, therefore, supports and does not refute the
`proposed construction.
`
`II.
`
`Petitioner fails to show fails to show that the only proposed construction
`contradicts the prosecution history
`In newly advancing an argument of prosecution history disclaimer, Petitioner
`focuses primarily on the statement that the claim scope encompasses “a time window
`in which a device is predicted to be somewhere in the future.” Rep. 8 (citing EX1002
`at 31). As explained above, this statement is consistent with the description of a
`“current context,” where the predetermined maximum amount of time is “within one
`hour” of when the predicting calculation is executed, and where that current context
`is described as “mak[ing] a prediction regarding future locations of the user device.”
`Petitioner has admitted this specific disclosure in the ’199 patent is encompassed by
`Uniloc’s construction. Rep. 5‒6. It is axiomatic that the statement made during
`prosecution does not give rise to the exacting demands of disclaimer at least where
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`5
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`IPR2017-1993
`U.S. Patent 9,414,199
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`it is strikingly similar to a description of an example “current context” admittedly
`encompassed by the proposed construction.
`Indeed, under Petitioner’s faulty reasoning, the embodiment applying a
`predetermined maximum amount of time of “within one hour” should be excluded
`ostensibly because Applicant disclaimed a time window extending from the
`predicting calculation. Rep. 8. However, such a conclusion is inconsistent with
`Petitioner’s acknowledgment that the claim scope should be interpreted as
`encompassing the example applying predetermined maximum amount of time of
`“within one hour.” Id. 5‒6.
`Petitioner also glosses over one of the key statements from the cited passage
`of the prosecution history: “Applicant finds no evidence in Tseng of any appreciation
`for predicting a future state of a device.” EX1002, p. 31 (quoted in Rep. at p. 8). At
`least one of the distinctions, therefore, was the failure to predict where the device
`will be, which is distinguishable from the “predicting” recitation explicitly defined
`in terms of “whether the user device will be at any of the one or more predetermined
`locations within the predetermined maximum amount of time.”
`The claim language itself further confirms that the prosecution history does
`not, and indeed could not, disclaim application of any current parameter in making
`the “predicting” calculation, as Petitioner appears to argue. For example, dependent
`claim 3, challenged in the Petition, recites the “predicting” further comprises
`“analyzing a location history of the user device for day- and time-based patterns
`related to a current time and a current day.” EX1001, 8:28‒31. As another example,
`dependent claim 4, also challenged in the Petition, recites the “predicting” further
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`6
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`IPR2017-1993
`U.S. Patent 9,414,199
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`comprises “analyzing a location history of the user device for movement patterns
`related to a current location of the user device.” Id., 32‒35.
`For at least the foregoing reasons, Petitioner has not met its exacting burden
`to prove the prosecution history gives rise to any disclaimer that allegedly defeats
`Uniloc’s proposed construction. See, e.g., Avid Tech. Inc. v. Harmonic, Inc., 812
`F.3d 1040, 1045 (Fed. Cir. 2016) (disclaimer requires “clear and unambiguous”
`disavowal of claim scope and “remarks made to distinguish claims from the prior art
`are broader than necessary to distinguish the prior art, the full breadth of the remark
`is not a clear and unambiguous disavowal of claim scope as required to depart from
`the meaning of the term provided in the written description.”).
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`III. CONCLUSION
`It is questionable whether the Board should give any consideration to claim
`construction arguments that Petitioner offers for the first time in its Reply. This is
`especially true here where Petition recognized this term would likely be disputed
`and presented arguments (in the alternative) in the event that the Board interprets “a
`predetermined maximum amount of time” to mean “a time period calculated from
`the current time to the predicted arrival time.” See, e.g., Pet. at 68 and 70; EX1003
`¶ 209; see also n.2, supra (citing Resp. 11 n.9).
`In any event, a claim construction dispute is clearly ripe for resolution; and,
`although Petitioner was given the opportunity to provide a competing construction,
`only Patent Owner has proposed a viable claim construction. Petitioner’s challenge
`of that construction should be rejected for the reasons set forth herein and further
`explained in Patent Owner’s Response.
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`7
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`Date: October 23, 2018
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`Respectfully submitted,
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`IPR2017-1993
`U.S. Patent 9,414,199
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`
`
`
`By: /s/ Brett A. Mangrum
`Brett A. Mangrum; Reg. No. 64,783
`Lead Counsel for Patent Owner
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`8
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`IPR2017-1993
`U.S. Patent 9,414,199
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that an electronic
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`copy of the foregoing Patent Owner’s Sur-Reply was served (along with any
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`accompanying exhibits) via the Patent Review Processing System (PRPS) and/or
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`email to Petitioner’s counsel of record at the following address:
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`Date: October 23, 2018
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`Respectfully submitted,
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`
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`By: /s/ Brett A. Mangrum
`Brett A. Mangrum; Reg. No. 64,783
`Lead Counsel for Patent Owner
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`i
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