UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`
`
`
`
`UNILOC LUXEMBOURG, S.A.
`Patent Owner
`
`
`
`
`IPR2017-2041
`U.S. PATENT NO. 8,239,852
`
`
`
`
`
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
`
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`APPLE INC.,
`Petitioner
`
`v.
`
`
`
`
`
`UNILOC LUXEMBOURG, S.A.
`Patent Owner
`
`
`
`
`IPR2017-2041
`U.S. PATENT NO. 8,239,852
`
`
`
`
`
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
`
`
`
`
`
`
`
`
`Table of Contents
`
`
`I.
`II.
`
`IPR2017-2041
`U.S. Patent No. 8,239,852
`
`4
`5
`5
`5
`8
`12
`
`15
`16
`
`17
`18
`19
`20
`22
`26
`
`28
`
`28
`29
`
`INTRODUCTION
`THE ‘852 PATENT
`Effective Filing Date of the ‘852 Patent
`
`Overview of the ‘852 Patent
`Prosecution History of the ‘852 Patent
`
`IV. THE PETITION IS IMPERMISSIBLY REDUNDANT
`V.
`THERE IS NO REASONABLE LIKELIHOOD THAT EVEN
`ONE OF THE CHALLENGED CLAIMS IS UNPATENTABLE
`Claim Construction
`
`No prima facie obviousness for “the unique device identifier
`[being] generated based at least in part on the determined
`machine parameters”
`1. Michiels is deficient
`2.
`Edwards is deficient
`3.
`Eisen is deficient
`4.
`Schull is deficient
`5.
`Sprong is deficient
`No Prima Facie Obviousness for Dependent Claims 2‒8 and
`16-17
`VII. THE SUPREME COURT IS CURRENTLY REVIEWING THE
`CONSTITUTIONALITY OF INTER PARTES REVIEW
`VIII. CONCLUSION
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`ii
`
`
`
`
`
`Exhibit No.
`2001
`2002
`
`2003
`2004
`
`IPR2017-2041
`U.S. Patent No. 8,239,852
`
`List of Exhibits
`
`Description
`U.S. Patent No. 6,467,088 to alSafadi
`U.S. Patent Publication No. 2009/0037337, listing
`Baitalmal as inventor
`U.S. Patent No. 6,880,086 to Kidder
`Opening Claim Construction Brief in U.S. District
`Court Case No 2:17-cv-258 between Petitioner and
`Patent Owner
`
`iii
`
`
`
`IPR2017-2041
`U.S. Patent No. 8,239,852
`
`I.
`
`INTRODUCTION
`Pursuant to 35 U.S.C. §313 and 37 C.F.R. §42.107(a), Uniloc USA, Inc. and
`Uniloc Luxembourg S.A. (the “Patent Owner” or “Uniloc”) submit Uniloc’s
`Preliminary Response to the Petition for Inter Partes Review (“Pet.” or “Petition”)
`of United States Patent No. 8,239,852 (“the ‘852 patent” or “Ex. 1001”) filed by
`Apple Inc. (“Petitioner”) in IPR2017-2041.
`In view of the reasons presented herein, the Petition should be denied in its
`entirety as failing to meet the threshold burden of proving there is a reasonable
`likelihood that at least one challenged claim is unpatentable. As a procedural
`deficiency, the Petition should be denied as presenting at least five redundant
`challenges of Claims 1-8 and 16-18 without providing the requisite justification for
`such redundancy.
`Notwithstanding the redundancies in the Petition, and because the Board has
`yet to decide which grounds it intends to dismiss as impermissibly redundant, Uniloc
`addresses each redundant ground and provides specific examples of how Petitioner
`failed to establish that it is more likely than not that it would prevail with respect to
`at least one of the challenged ‘852 Patent claims. As a non-limiting example
`described in more detail below, the Petition fails the all-elements-rule in not
`addressing every feature of the claim.
`Accordingly, Uniloc respectfully requests that the Board decline institution of
`trial on Claims 1-8 and 16-18 of the ‘852 Patent.
`
`4
`
`
`
`IPR2017-2041
`U.S. Patent No. 8,239,852
`
`II. THE ‘852 PATENT
` Effective Filing Date of the ‘852 Patent
`The ‘852 patent is titled “Remote Update of Computer Based on Physical
`Device Recognition.” The ‘852 Patent issued on August 7, 2012 from United States
`Patent Application No. 12/818,906, which claims priority to provisional Application
`No. 61/220,092, filed on June 24, 2009. The Petition does not dispute the effective
`filing date of the ‘852 patent is June 24, 2009.
` Overview of the ‘852 Patent
`The ‘852 Patent discloses various embodiments for remote updating of
`software. The ‘852 discloses, in a client-server system, a specialized software
`program stored on the client device that generates a unique device identifier for the
`client device, which is derived from multiple machine parameters readable on the
`client device. The unique device identifier when transmitted to the server along with
`the unique software identifier allows the server to determine, among other things,
`whether the client device is licensed to receive an upgrade for the application
`identifier. See, e.g., Ex.1002 (Prosecution History), pp. 994.1
`
`
`
`1 All citations to Exhibit 1002 (“Ex. 1002”) are made to the page numbering in the
`footer added by Petitioner.
`
`5
`
`
`
`IPR2017-2041
`U.S. Patent No. 8,239,852
`
`The unique device identifier is generated based, at least in part, on the
`determined machine parameters, which include account information for a user of the
`client device and features of software that the user of the client device is entitled to
`use. The unique software identifier is unique to a particular copy of the software
`and to a particular user of the software.
`
`The ‘852 patent issued with two independent claims, copied below for the
`convenience of the Board:
`
`6
`
`
`
`IPR2017-2041
`U.S. Patent No. 8,239,852
`1. A system for remotely updating a program configuration,
`comprising a client device and an update server wherein:
`
`(a) the client device is configured to execute a computer
`program to perform a remote update of a program configuration
`on the client device, the client device comprising:
`
`a first processor coupled to a memory storing the computer
`program which, when executed by the first processor, (i) performs
`physical device recognition on the client device to determine
`machine parameters including account information for a user of
`the client device and features of software that the user of the client
`device is entitled to use, (ii) generates a unique device identifier
`for the client device, the unique device identifier is generated
`based at least in part on the determined machine parameters, and
`(iii) collects a unique software identifier for the software on the
`client device, the unique software identifier being unique to a
`particular copy of the software and to a particular user of the
`software; and
`a first transceiver configured to send the unique device
`identifier and the unique software identifier to the update server
`via the Internet; and
`(b) the update server is configured to receive the unique
`device identifier and the unique software identifier from the client
`device, the update server comprising:
`
`a second processor coupled to a memory and configured to
`analyze the unique device identifier and the unique software
`identifier at the update server, and to determine, based on the
`analyzed unique device identifier and the analyzed unique
`software identifier, an updated program configuration if the user
`associated with the unique device identifier is entitled to use
`features of the updated program configuration according to a
`license associated with the unique software identifier; and
`a second transceiver configured to deliver, via the Internet,
`data representing the updated program configuration to the client
`device for storage therein.
`
`7
`
`
`
`IPR2017-2041
`U.S. Patent No. 8,239,852
`18. A client device configured to execute a computer
`program to perform a remote update of a program configuration
`on the client device, the client device comprising:
`a processor;
`a memory coupled to the processor and storing the computer
`program which, when executed by the processor, (i) performs
`physical device recognition on the client device to determine
`machine parameters including account information for a user of
`the client device and features of software that the user of the client
`device is entitled to use, (ii) generates a unique device identifier
`for the client device, the unique device identifier is generated
`based at least in part on the determined machine parameters, and
`(iii) collects a unique software identifier for the software on the
`client device, the unique software identifier being unique to a
`particular copy of the software and to a particular user of the
`software; and
`a transceiver configured to (i) send the unique device
`identifier and the unique software identifier to an update server via
`the Internet to determine, based on analyzing the unique device
`identifier and the unique software identifier, an updated program
`configuration, and (ii) receive, from the update server, the updated
`program configuration if the user associated with the unique
`device identifier is entitled to use features of the updated program
`configuration according to a license associated with the unique
`software identifier.
`Prosecution History of the ‘852 Patent
`
`The Petition contains no discussion of the art applied in the prosecution
`history of the ‘852 Patent, including what the Examiner considered the “closest cited
`prior art,” (Ex.1002 at 1022), namely: (1) U.S. Patent No. 6,477,088 to alSafadi (Ex.
`2001), (2) U.S. Patent Publication No. 2009/0037337, listing Baitalmal as inventor
`(Ex. 2002), and (3) U.S. Patent No. 6,880,086 to Kidder (Ex. 2003).
`The first, U.S. Patent No. 6,467,088 to alSafadi, is a Koninklijke Philips
`
`8
`
`
`
`IPR2017-2041
`U.S. Patent No. 8,239,852
`
`Electronics N.V. patent that describes how “reconfiguration manager receives a
`reconfiguration request, e.g., a software upgrade request from the electronic device,
`and determines one or more device components that are required to implement the
`reconfiguration request. The reconfiguration manager also determines, e.g., from
`information in the request, identifiers of one or more additional components
`currently implemented in the electronic device.” (Ex. 2001, Abstract)
`In an Office Action, the Patent Office alleged that this “reconfiguration
`manager 10 [update server] obtains [collects] information regarding the hardware
`and software configuration of device X, i.e., electronic device 12 [client device] of
`FIG. 1.” (Ex. 1002 at 820); see, also, Ex. 2001, FIG. 1.
`
`9
`
`
`
`IPR2017-2041
`U.S. Patent No. 8,239,852
`
`In the same Office Action, the Patent Office indicated that U.S. Patent No.
`6,4677,088 to alSafadi did not explicitly disclose the following claim features: the
`“account information for a user of the client device and features of software that the
`user of the client device is entitled to use; the software identifier being unique to a
`particular user of the software; and if the user associated with the device identifier
`is entitled to use features of the updated program configuration according to a license
`associated with the software identifier.” (Ex. 1002 at 935). However, the Office
`alleged that the secondary reference, U.S. Patent Publication No. 2009/0037337,
`listing Baitalmal, would render obvious such a feature because such information
`would be communicated between a device and a marketplace application. Id. at 935-
`936
`
`U.S. Patent Publication No. 2009/0037337, listing Baitalmal as inventor,
`describes, a “method [] performed at one or more servers, hosting a marketplace
`application. A software application is received from a vendor for distribution.
`License terms are generated in response to a selection by the vendor from options
`provided by the marketplace application. The license terms are associated with the
`software application. The software application is made available for distribution
`through the marketplace application, in accordance with the license terms.” (Ex.
`2002, Abstract).
`The third reference, U.S. Patent No. 6,880,086 to Kidder, describes “hot
`upgrades of software components within a telecommunications network device
`through the use of “signatures” generated by a signature generating program. After
`installation of a new software release within the network device, only those software
`
`10
`
`
`
`IPR2017-2041
`U.S. Patent No. 8,239,852
`
`components whose signatures do not match the signatures of corresponding and
`currently executing software components are upgraded. Signatures promote hot
`upgrades by identifying only those software components that need to be upgraded.
`Since signatures are automatically generated for each software component as part of
`putting together a new release a quick comparison of two signatures provides an
`accurate assurance that either the software component has changed or has not. Thus,
`signatures provide a quick, easy way to accurately determine the upgrade status of
`each software component.” (Ex. 2003, Abstract).
`The Office relied upon Kidder for disclosure of “hash codes” in the dependent
`claims, noting it describes using SHA-1 to generate a signature based upon an input
`of software components. (Ex. 1002 at 824).
`In ultimately determining that the cited art of record (including these three
`references) did not anticipate or render obvious the claims, the Examiner of the
`application leading to the ‘852 Patent stated:
`
`The cited prior art taken alone or in combination fail to teach, in
`combination with the other claimed limitations, "a first processor
`coupled to a memory storing the computer program which, when
`executed by the first processor, (ii) generates a unique device identifier
`for the client device, the unique device identifier is generated based at
`least in part on the determined machine parameters; a second processor
`coupled to a memory and configured to analyze the unique device
`identifier and the unique software identifier at the update server, and to
`determine, based on the analyzed unique device identifier and the
`
`11
`
`
`
`IPR2017-2041
`U.S. Patent No. 8,239,852
`analyzed unique software identifier, an updated program configuration
`if the user associated with the unique device identifier is entitled to use
`features of the updated program configuration according to a license
`associated with the unique software identifier" as recited in independent
`Claim 1; and further fail to teach, in combination with the other claimed
`limitations, similarly-worded limitations as recited in independent
`Claim 21
`(Ex. 1002 at 1022).
`IV. THE PETITION IS IMPERMISSIBLY REDUNDANT
`The Board has repeatedly held that multiple grounds for unpatentability for
`the same claim will not be considered unless the petition itself explains the relative
`strengths and weaknesses of each ground. See Liberty Mut. Ins. Co. v. Progressive
`Cas. Ins. Co., No. CBM2012-00003, Paper 7 (P.T.A.B. Oct. 25, 2012).
`Redundant grounds place a significant burden on both the Board and Uniloc,
`causing unnecessary delay, compounding costs to all parties involved, and
`compromising the ability to complete review within the statutory deadline. See
`Liberty Mutual, Paper No. 7 at 2; 37 C.F.R. § 42.1(b); 37 C.F.R. § 42.208. As such,
`analyzing the Petition and eliminating redundant grounds streamlines the
`proceeding. Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26 at 4–5
`(PTAB June 11, 2013); Liberty Mut., CBM2012-00003, Paper 7 at 2. The burden is
`especially onerous when the redundancies are multiplied as they are in the present
`Petition.
`In its submission of ten different references in nine grounds, the Petition
`presents multiple instances of both horizontal and vertical redundancies without any
`
`12
`
`
`
`IPR2017-2041
`U.S. Patent No. 8,239,852
`
`articulation of the relative strength and weaknesses of each ground. EMC Corp. v.
`PersonalWeb Techs., LLC, IPR2013-00087, Paper 25 at 3–4 (PTAB June 5, 2013).
`Petitioner makes no attempt to differentiate the redundant grounds in terms of their
`relative strengths and weaknesses – other than a conclusory allegation that the
`“different” references are cited. Petition at 65. This is insufficient.
`While Independent Claims 1 and 18 may appear to have only two grounds
`(Grounds 1 and 5), a close inspection (discussed more fully below) reveals that five
`different references have been identified as corresponding to the same claim
`limitation. Making matters worse, the Petitioner has made no attempt to distinguish
`these five new references to ones already considered by the USPTO in the original
`examination of the ‘852 Patent. As an example, the original prosecution principally
`applied U.S. Patent No. 6,4677,088 to alSafadi, a Koninklijke Philips Electronics
`N.V reference (Ex. 2001). The Petition applies another Koninklijke Philips
`Electronics N.V reference, Michels (Ex. 1004), without any explanation as to why
`this second Koninklijke Philips reference is relatively better or worse (other than
`arguing it is a different reference). The burden on both the Board and Uniloc is
`obvious. The new Michels reference– has the same deficiencies concerning
`generation of unique identifiers (discussed below) as the previously referenced
`alSafadi patent. The Petition repeats the same approach of the original U.S.
`Examiner supplementing a Koninklijke Philips disclosure that has the exact same
`deficiency as the earlier applied Koninklijke Philips disclosure.
`Petitioner’s approach of slinging allegedly five equally-sufficient redundant
`challenges, like spaghetti against the wall in the hope that something might stick,
`
`13
`
`
`
`IPR2017-2041
`U.S. Patent No. 8,239,852
`
`falls squarely within the Board’s regulations and accompanying case law
`admonishing such unjustified redundancy.
`In applying these five redundant references, the Petition makes repeated
`statements that first rely upon a primary reference and then argues to the extent such
`a primary reference doesn’t disclose such a feature, that the board should consider a
`secondary reference. This approach is improper as recognized by the board in Board
`in Eizo Corp. v. Barco N.V.2 There, the Board found insufficient the petitioner’s
`“conclusory assertion” that “[t]o the extent [the first prior art reference] may not
`explicitly teach” the limitation, the second prior art reference “explicitly teaches this
`limitation.” The Board explained that “such an assertion fails to resolve the exact
`differences sought to be derived from” the second prior art reference. Id. Here, the
`same reasoning proscribes Petitioner’s attempt to disguise two alternative and
`admittedly redundant anticipation theories as an omnibus obviousness theory.
`Had Petitioner truly had a rational basis to submit these multiple redundant
`references, surely it would have carefully articulated the requisite bidirectional
`explanation of relative strengths and weaknesses of each. Instead, Petitioner merely
`threw in a paragraph at the end of its Petition (Petition at 65), as an apparent
`afterthought, and in the hopes that such de minimis effort would be enough to force
`Uniloc and the Board to then sort through the redundant grounds and determine, in
`the absence of any explanation from Petitioner, the relative strengths and
`weaknesses of each. This is precisely the wasteful and harassing approach repeatedly
`
`
`2 IPR2014-00358, Paper 11 (P.T.A.B. July 23, 2014).
`
`14
`
`
`
`IPR2017-2041
`U.S. Patent No. 8,239,852
`
`admonished by the Board in Liberty Mut. and its progeny. Because the Petition
`squarely invokes § 325(d), the Board should limit the substantive analysis to one of
`the myriad of redundant grounds.
`
`V.
`
`THERE IS NO REASONABLE LIKELIHOOD THAT EVEN ONE OF
`THE CHALLENGED CLAIMS IS UNPATENTABLE
`Notwithstanding the impermissible redundancies in the Petition, and because
`the Board has yet to decide which grounds it intends to dismiss as impermissibly
`redundant, Uniloc addresses each redundant ground and provides specific examples
`of how Petitioner failed to establish that it is more likely than not that it would prevail
`with respect to at least one of the challenged ‘852 Patent claims. By not addressing
`additional arguments, Uniloc in no way concedes that any argument by Petitioner is
`correct.
`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
`§ 42.108(c). Because the Petition only presents a theory of obviousness, Petitioner
`must demonstrate a reasonable likelihood that at least one of the challenged patent
`claims would have been obvious in view of the references cited in the Petition.
`Petitioner “must specify where each element of the claim is found in the prior art
`patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). The Board
`should reject the Petition because Petitioner fails to meet this burden for any of the
`redundant grounds.
`
`
`
`
`15
`
`
`
`IPR2017-2041
`U.S. Patent No. 8,239,852
`
`The Petition is stylized as presenting the following grounds:
`
`Ground
`1
`2
`3
`4
`5
`6
`7
`8
`9
`
`Reference(s)
`Statute
`Claim(s)
`103 Michiels3 and Eisen4
`1, 5-6, and 18
`103 Michiels, Eisen, and Villela5
`2-4
`103 Michiels, Eisen, and Shakkarwar6
`7, 8, and 16
`103 Michiels, Eisen, and Hughes7
`17
`103
`Schull8 and Sprong9
`1 and 18
`103
`Schull, Sprong, and Villela
`2-4
`103
`Schull, Sprong, and Eisen
`5-6
`103
`Schull, Sprong, and Shakkarwar
`7-8 and 16
`103
`Schull, Sprong, and Hughes
`17
` Claim Construction
`For all claim terms, Uniloc requests that the Board adopt the broadest
`reasonable construction in light of the specification. In re Man Mach. Interface
`Techs. LLC, 822 F.3d 1282, 1287 (Fed. Cir. 2016) (emphasis original), citing
`Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015) (“A
`construction that is unreasonably broad and which does not reasonably reflect the
`plain language and disclosure will not pass muster.”). The petitioner does not
`provide any claim construction for terms despite arguing in related litigation that the
`terms of the ‘852 Patent should be construed in a particular manner. (Ex. 2004) As
`a non-limiting example, Petitioner has argued that “updated program configuration”
`should mean “a software update.” (Ex. 2004 at 4). It is presently unclear as to
`
`3 International Patent Pub. WO 2007/107905 (“Michiels” or “Ex. 1004”)
`4 International Patent Pub. WO 2007/001394 (“Eisen” or “Ex. 1005”)
`5 U.S. Patent Pub. 2007/0113090 (“Villela” or “Ex. 1008”)
`6 U.S. Patent Pub. 2008/0120195 (“Shakkarwar” or “Ex. 1009”)
`7 U.S. Patent Pub. 2004/0059938 (“Hughes” or “Ex. 1010”)
`8 U.S. Patent Pub. 2002/0004785 (“Schull” or “Ex. 1006”)
`9 U.S. Patent No. 6,134,659 (“Sprong” or “Ex. 1007”)
`
`16
`
`
`
`IPR2017-2041
`U.S. Patent No. 8,239,852
`
`whether Petitioner believes the references cited in its Petition disclose such an
`“updated program configuration” if one were to adopt such a litigation position.
`Patent owner need not address such a limitation because the references fail to
`disclose other claim features as discussed below.
`
` No prima facie obviousness for “the unique device identifier [being]
`generated based at least in part on the determined machine parameters”
`
`The Petition fails to establish prima facie obviousness of at least the following
`claim feature: “the unique device identifier [being] generated based at least in part
`on the determined machine parameters,” as recited in Independent Claims 1 and 18
`(and hence all challenged claims). In both Independent Claim 1 and 18, the following
`antecedent context is referenced: “perform[ing] physical device recognition on the
`client device to determine machine parameters including account information for a
`user of the client device and features of software that the user of the client device
`is entitled to use.” (Emphasis added). Given this arrangement, the Petition provides
`no explanation as to how in any reference “the unique device identifier is generated
`based at least in part on the determined machine parameters” when the “machine
`parameters includ[e] account information for a user of the client device and features
`of software that the user of the client device is entitled to use.”
`While the Petition is stylized as presenting two grounds (1 and 5) for
`Independent Claims 1 and 18, the Petition in fact points to no less than five different
`references as allegedly corresponding to the referenced “unique device identifier”
`claim feature. This shotgun approach is procedurally defective for the reasons
`articulated above. Nevertheless, given that the Board has not yet had the opportunity
`
`17
`
`
`
`IPR2017-2041
`U.S. Patent No. 8,239,852
`
`to address which grounds will be denied as impermissibly redundant, Uniloc
`addresses herein example deficiencies for each one of the five redundant challenges.
`1. Michiels is deficient
`As recognized by the Petitioner, the Michiels reference is principally directed
`to so-called “blockades” in programs. These blockades activate based on things such
`as passage of time or the number of times a program is used. Thus, for example, as
`one reaches the end of the license term of a program, the blockade activates to
`prevent further use.
`
`To avoid activation of the blockade, an update request 32 can be made that
`effectively suspends the blockade and allows continued use of software. Such a
`suspension may be viewed as time extension on a license. These update requests can
`include a Product ID 23 and a Terminal ID 24.
`The Petition identifies the “Terminal ID” as allegedly satisfying the “unique
`device identifier” limitation (Petition at 20), but then fails to explain how such an
`
`18
`
`
`
`IPR2017-2041
`U.S. Patent No. 8,239,852
`
`alleged “unique device identifier” is generated based at least in part on the
`determined machine parameters” when the “machine parameters includ[e] account
`information for a user of the client device and features of software that the user of
`the client device is entitled to use” as claimed. This is because there is only one
`reference to generating the “Terminal ID” in Michiels as follows: “The terminal ID
`[] can be compiled based on a number of properties of the hardware which, when
`combined, form a unique identifier.” Ex. 1004, 11:25-28.
`Because Michiels undeniably does not contain the same level of detail of the
`claims and, also, because the Petition identifies nothing in Michiels as satisfying this
`limitation (other than a general allegation it is disclosed or rendered obvious), the
`Petition fails to satisfy the all-elements-rule. See, e.g., Verdegaal Bros. v. Union Oil
`Co. of California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987).
`Patent Owner also notes this deficiency in the Michiels reference, a
`Koninklijke Philips Electronics N.V. reference is identical to the deficiency seen in
`the original prosecution where U.S. Patent No. 6,4677,088 to alSafadi, another
`Koninklijke Philips Electronics N.V. reference, also did not disclose this claim
`feature. The Petition contains no discussion of U.S. Patent No. 6,4677,088 and
`simply repeats much of the same arguments.
`Edwards is deficient
`2.
`Evidently recognizing Michiels is deficient, though unwilling to overtly admit
`any substantive weakness, the Petition slips in Edwards10 as an alternative argument
`
`
`10 U.S. Patent No. 5,014,234 (“Edwards” or “Ex. 1012”).
`
`19
`
`
`
`IPR2017-2041
`U.S. Patent No. 8,239,852
`
`that should Michiels not disclose the details of generating the unique device
`identifier, it would be obvious. (Petition at 16). The Edwards reference is NOT
`offered as a reference for a ground for a challenge, but rather cited simply as
`purported knowledge of one of ordinary skill in the art. However, the cited portions
`of Edwards do not cure Michiels’ deficiency and simply discusses passing a name
`and an address for registration of software. (Ex. 1012, 6:55-58). This citation is
`nearly
`identical
`to
`the secondary reference U.S. Patent Publication No.
`2009/0037337 (Ex. 2003) relied upon in the original prosecution for the same
`features, but with a different named reference.
`Just like the such features were rejected as disclosing the claim limitations in
`U.S. Patent Publication No. 2009/0037337 (Ex. 2003), Edwards does not disclose
`how such an alleged “unique device identifier” is generated based at least in part on
`the determined machine parameters” when the “machine parameters includ[e]
`account information for a user of the client device and features of software that the
`user of the client device is entitled to use” as claimed.
`Because the purported knowledge of one of ordinary skill in the art via
`Edwards does not cure the deficiencies of Michaels, the Petition should be denied.
`Eisen is deficient
`3.
` In the same ground of reference where both Michiels and Edwards are cited,
`the Petition supplies without explanation a third redundant reference for the same
`claim feature, namely Eisen. In particular, the Petition argues that “[s]imilarly, Eisen
`discloses generating a unique “customer computer identifier 31” based on the
`
`20
`
`
`
`IPR2017-2041
`U.S. Patent No. 8,239,852
`
`determined machine parameters, which include user account and software feature
`information.” (Petition at 20).
`Again, the Board in Eizo Corp. v. Barco N.V.11 flatly rejected a similar attempt
`to hedge bets and unnecessarily multiply the work of both the Board and the Uniloc.
`There, there Board found insufficient the petitioner’s “conclusory assertion” that
`“[t]o the extent [the first prior art reference] may not explicitly teach” the limitation,
`the second prior art reference “explicitly teaches this limitation.” Id. Here, the
`Petition cites Michiels and then Edwards (to the extent that Michiels doesn’t
`disclose) followed by Eisen (to the extent Michiels and Edwards do not disclose).
`Such an approach is improper.
`Even assuming arguendo that this redundant argument be considered, just like
`Michiels and Edwards, the Petition does not explain how Eisen’s customer computer
`identifier 31, the alleged “unique device identifier,” is “generated based at least in
`part on the determined machine parameters” when the “machine parameters
`include[e] account information for a user of the client device and features of software
`that the user of the client device is entitled to use” as claimed. Petitioner’s inability
`to find these feature in Eisen is due in part to the fact that Eisen is directed to a
`completely different art area. Unlike Michiels which prevents blockades to software,
`Eisen attempts to prevent fraud prevention on Internet browsers. Eisen explains that
`the “customer computer identifier (CI) [is] used in detecting fraud in connection with
`online commercial transactions.” (Ex. 1005, ¶0037). Eisen does not disclose and has
`
`
`11 IPR2014-00358, Paper 11 (P.T.A.B. July 23, 2014).
`
`21
`
`
`
`IPR2017-2041
`U.S. Patent No. 8,239,852
`
`no interest in account information for a user of the client device and features of
`software that the user of the client device is entitled to use, let alone using such
`information to generate a “unique device identifier.” Eisen simply wants other types
`of information from an Internet browser to prevent fraud in a transaction.
`Because the purported knowledge of Eisen does not cure the deficiencies of
`Michaels or Edwards, the Petition should be denied.
`Additionally, because Eisen is neither from same field of endeavor nor
`reasonably pertinent to the particular problem faced, Eisen should not be considered
`in the proposed obviousness allegation concerning Michels. Innovention Toys, LLC,
`v. MGA Entertainment, Inc., No. 2010-1290, slip op. at 12 (Fed. Cir. 2011); In re
`Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); In re Clay, 966 F.2d 656, 658 (Fed.
`Cir. 1992).
`Schull is deficient
`4.
` Continuing the parade of redundancies, the Petition identifies a fourth
`reference as allegedly showing the same claim feature. However, this fourth
`redundant reference still does not disclose a “unique device identifier,” that is
`“generated based at least in part on the determined machine parameters” when the
`“machine parameters includ[e] account information for a user of the client device
`and features of software that the user of the client device is entitled to use” as
`claimed.
`
`22
`
`
`
`Schull discloses a Laissez Faire Distribution – that is, a model where users
`freely distribute a copy of software to others. (Ex. 1006., ¶0031 and FIG.1 – below).
`
`IPR2017-2041
`U.S. Patent No. 8,239,852
`
`In order to activate features of the freely distributed software, the user must obtain a
`valid password or key, which is checked against a so-called passwordable ID. If the
`
`23
`
`
`
`IPR2017-2041
`U.S. Patent No. 8,239,852
`
`password on the machine is valid (check 45 in FIG. 1), the program executes with
`such features. (path 50 in Fig. 1). However, if the password is not valid or there is
`no password on the machine (box 55), a valid password must be obtained by
`corresponding over an authorization channel 80 a
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
