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.
`Patent Owner
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`IPR2017-2202
`U.S. PATENT NO. 8,239,852
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`Table of Contents
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`
`INTRODUCTION
`THE PETITION SHOULD BE DENIED AS ESTOPPED
`UNDER § 315(e)(1) BY APPLE’S PRIOR PETITION
` THE PETITION SHOULD BE DENIED AS IMPERMISSIBLY
`REDUNDANT UNDER § 325(d)
`The Board Has Previously Rejected Similar Follow-On
`
`Petitions
`The General Plastic Factors Favor Denial
`Petitioner Does Not Attempt to Justify Its Horizontal
`Redundancy
` THE ‘852 PATENT
`Effective Filing Date of the ’852 Patent
`
`Overview of the ’852 Patent
`Prosecution History of the ’852 Patent
`
`THERE IS NO REASONABLE LIKELIHOOD THAT EVEN
`ONE OF THE CHALLENGED CLAIMS IS UNPATENTABLE
`Claim Construction
`
`No prima facie obviousness for “performs physical device
`recognition” limitations
`No prima facie obviousness for “the unique device identifier
`[being] generated based at least in part on the determined
`machine parameters”
` No Prima Facie Obviousness for Dependent Claims 2‒8 and
`16-17
` THE SUPREME COURT IS CURRENTLY REVIEWING THE
`CONSTITUTIONALITY OF INTER PARTES REVIEW
` CONCLUSION
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`IPR2017-2202
`U.S. Patent No. 8,239,852
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`4
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`5
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`8
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`8
`9
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`10
`11
`11
`11
`15
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`18
`19
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`20
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`23
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`25
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`25
`26
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`ii
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`US. Patent No. 6,880,086 to Kidder
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`Exhibit No.
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`2001
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`2002
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`2003
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`IPR2017-2202
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`US. Patent No. 8,239,852
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`List of Exhibits
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`US. Patent No. 6,467,088 to alSafadi
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`US. Patent Publication No. 2009/0037337, listing
`Baitalmal as inventor
`
`iii
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`

`

`IPR2017-2202
`U.S. Patent No. 8,239,852
`
`
`
`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 IPR2017-2202.
`The Petition should be denied under §§ 315(e)(1) and 325(d) because
`Petitioner had previously filed a substantially similar petition in IPR2017-2041,
`challenging the same patent and the same claims; and of the five asserted references
`in the instant Petition, three of the references and corresponding arguments are
`recycled from IPR2017-2041.
`Notwithstanding the redundancy presented by the instant Petition, and
`because the Board has yet to rule on the earlier-filed petition (IPR2017-2041) and
`procedural defects of the Petition identified herein, Uniloc addresses each ground in
`the instant Petition 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 described in more detail below, the
`Petition fails the All Elements Rules in failing to address every feature of the
`challenged claims.
`Accordingly, Uniloc respectfully requests that the Board decline institution of
`trial on Claims 1-8 and 16-18 of the ’852 Patent.
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`4
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`IPR2017-2202
`U.S. Patent No. 8,239,852
` THE PETITION SHOULD BE DENIED AS ESTOPPED UNDER
`§ 315(e)(1) BY APPLE’S PRIOR PETITION
`Under § 315(e)(1), estoppel will apply to grounds “the petitioner raised or
`reasonably could have raised during [IPR2017-2041]” previously filed by the same
`Petitioner. Citing the Federal Circuit’s decision in Shaw,1 the patent-savvy Eastern
`District of Texas (the same district of the related litigations identified in the Petition)
`recently interpreted this estoppel provision as applying to anything that was or could
`have been raised in a petition, except for art that actually was raised and then rejected
`by the Board for purely procedural reasons, such as redundancy. See Biscotti Inc. v.
`Microsoft Corp., Case No. 2:13-CV-01015-JRG-RSP, 2017 WL 2526231, at *7
`(E.D. Tex. May 11, 2017).
`Here, the instant Petition challenges the same claims and relies on much of
`the same arguments that the same Petitioner raised in its earlier-filed petition in
`IPR2017-2041. More specifically, the instant Petition presents identical arguments
`based on at least the following same three references cited in IPR2017-2041: Villela,
`Shakkarwar, and Hughes. Indeed, the only difference between these two petitions is
`that the instant Petition relies on two cumulative references (Richardson and
`Demeyer) in place of certain references cited in IPR2017-2041.
`As non-limiting examples, the below screenshots show identical arguments
`made in both petitions:
`
`
`1 Shaw Indus. Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293 (Fed.
`Cir. 2016).
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`5
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`

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`First Example: Compare
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`IPR2017-2202
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`US. Patent No. 8,239,852
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`3.
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`Claim 16: “wherein the machine parameters comprise
`information regarding at least one of: device model, device
`model lMEl, device model [MS], and device model LCD”
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`Shakkarwar discloses the collection of device data to uniquely identify a
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`machine. Ex. 1 107, Abstract, [0009], [0023]. Shakkarwar explains that the
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`collected device data “may include the lntemational Mobile Equipment identity
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`(lMEl)” or “the lntemational Mobile Subscriber Identity (lMSl).” Id., [0023]; see
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`also [0033], [0041], [0050].
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`IPR2017-2041, Pet. 36 with
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`3.
`
`Claim 16: “wherein the machine parameters comprise
`information regarding at least one of: device model, device
`model lMEl, device model [MS], and device model LCD”
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`Shakkarwar discloses the collection of device data to uniquely identify a
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`machine. Ex. 1 107, Abstract, [0009], [0023]. Shakkarwar explains that the
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`collected device data “may include the lntemational Mobile Equipment identity
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`(lMEl)” or “the lntemational Mobile Subscriber identity (lMSl).” Id., [0023]; see
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`also [0033], [0041], [0050].
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`IPR2017-2202, Pet. 43.
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`

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`IPR2017-2202
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`US. Patent No. 8,239,852
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`Second Example: Compare
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`4.
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`Claim 3: “wherein the computer program, when executed,
`implements at least one irreversible transformation such
`that the machine parameters cannot be derived from the
`unique device identifier”
`
`Villela discloses that, by using SHA hashing, the “hashes cannot be reversed
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`reversed").
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`Furthermore. a POSITA would have understood that SHA256 hashing is a
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`ne-way, irreversible cryptographic standard. Ex. [003, 1 l 13; Ex. l0] 1, 8 ("This
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`HA-S l2. All four of the algorithms are iterative, one-way hash Motions").
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`
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`o recompose the information used to make the SIGNATURE, thereby preserving
`ser privacy and security." Ex. [008, [0048]; see also Claim 4 (“the hashes (minor
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`
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`tandard specifies four secure hash algorithms. SllA-l, SllA-256, SIM-384. and
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`us. a POSlTA would have understood Villela’s disclosure of using the SHA256
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`rushing digest to be an irreversible transformation on the rmchine parameters such
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`at the parameters could not be derived from the unique device identifier. Ex.
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`IPR2017-2041, Pet. 34 with
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`4.
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`Claim 3: “wherein the computer program. when executed,
`implements at least one irreversible transformation such
`that the machine parameters cannot be derived from the
`unique device identifier”
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`Villela discloses that, by using SHA hashing, the “hashes cannot be reversed
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`to recompose the information used to make the SIGNATURE. thereby preserving
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`user privacy and security." Ex. 1 106, [0048]; see also Claim 4 (“the hashes cannot
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`be reversed”).
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`Furthermore. a POSITA would have understood that SHA256 hashing is a
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`one-way, irreversible cryptographic standard. Ex.
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`1 103,1 I I9; Ex. ”09, 8 ("This
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`standard moifies four secure hash algorithms. SHA-l, SHA—256, SHA—384, and
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`SHA-S 12. All four of the algorithms are iterative. one-way hash functions").
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`Thus. a POSITA would have underswod Villela‘s disclosure of using the SHA256
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`hashing digest to be an irreversible transformation on the machine parameters such
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`that the parameters could not be derived from the unique device identifier. Ex.
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`1103,1119.
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`IPR2017-2202, Pet- 40-41.
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`

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`IPR2017-2202
`U.S. Patent No. 8,239,852
`
`Petitioner has the burden to prove it is entitled to the relief requested, yet
`Petitioner offers no explanation for why it could not reasonably have raised the
`(cumulative) grounds of the instant Petition (IPR2017-2202) only two months earlier
`when it filed its petition in IPR2017-2041. Indeed, Petitioner acknowledges the
`redundancy: “Petitioner has filed another IPR petition against the ’852 patent in
`IPR2017-02041”. Pet. at 2. Petitioner’s attempt to take multiple bites at the apple
`unfairly exposes Patent Owner to double-jeopardy. Such overt gamesmanship is not
`permitted under judicial interpretation of § 315(e)(1).
`
` THE PETITION SHOULD BE DENIED AS IMPERMISSIBLY
`REDUNDANT UNDER § 325(d)
`Yet another procedural basis to deny the Petition is that the present facts
`invoke 35 U.S.C. § 325(d) because, as explained above, the instant Petition presents
`“the same or substantially the same prior art or argument previously . . . presented
`to the Office” in IPR2017-2041 by the same Petitioner. 35 U.S.C. § 325(d).
`
` The Board Has Previously Rejected Similar Follow-On Petitions
`The Board’s decision to deny trial in Google Inc. v. Uniloc Luxembourg S.A.,
`IPR2017-01665 (Paper 10) (PTAB Jan. 11, 2018) is informative here. There, in its
`discussion of the precedential decision in General Plastic2, the Board explained:
`
`Although General Plastic discussed § 314(a) rather than § 325(d),
`General Plastic’s reasoning on this factor in particular guides how we
`view “shifts in the prior art asserted and the related arguments in
`
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`2 General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-
`01357 (Paper 19) (PTAB Sept. 6, 2017) (Paper 19).
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`8
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`IPR2017-2202
`U.S. Patent No. 8,239,852
`follow-on petitions” as it relates to the burden on a Patent Owner. Id. at
`17. In particular,
`Multiple, staggered petitions challenging the same patent
`and same claims raise the potential for abuse. The absence of any
`restrictions on follow-on petitions would allow petitioners the
`opportunity to strategically stage their prior art and arguments in
`multiple petitions, using our decisions as a roadmap, until a
`ground is found that results in the grant of review. All other
`factors aside, this is unfair to patent owners and is an inefficient
`use of the inter partes review process and other post-grant review
`processes. Id. at 17–18 (footnote omitted).
`
`Id. at 22. Here, Petitioner’s redundant petition raises the same “potential for abuse”
`and likewise places an undue burden on the Patent Owner.
`
`
`The General Plastic Factors Favor Denial
`The present facts also align with example factors summarized by the Board in
`General Plastic as favoring denial. First, Petitioner is conspicuously silent on when
`it first learned of the additional references cited in the instant Petition. Petitioner
`does not dispute that Petitioner likely either knew or should have known of those
`references at least as earlier as two months earlier, when it filed its original petition.
`General Plastic, IPR2016-01357, Paper 19, at 9 (factor 4).
`Second, Petitioner fails to even acknowledge the instant Petition redundantly
`challenges the same claims of the same ’852 patent as its prior petition, much less
`offer any explanation for the redundancy. General Plastic, IPR2016-01357, Paper
`19, at 9 (factors 1 and 5).
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`9
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`IPR2017-2202
`U.S. Patent No. 8,239,852
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`Third, at least Petitioner’s application of the Villela, Shakkarwar, and Hughes
`references in the instant Petition demonstrably relies on “the same or substantially
`the same prior art or arguments previously were presented to the Office” in at least
`the earlier-filed Petitions. General Plastic, IPR2016-01357, Paper 19, at 19
`(confirming that a factor to consider under § 325(d) is whether “the same or
`substantially the same prior art or arguments previously were presented to the
`Office”).
`Fourth, “the finite resources of the Board” confirm denial is appropriate here.
`Id. at 9 (factor 6).
`While each one of the above factors set forth in the precedential General
`Plastic Order independently confirms denial is appropriate here, their collective
`weight overwhelmingly invokes the discretion of § 325(d). And while many Board
`opinions have articulated these same factors long before Petitioner filed its petitions,
`Petitioner makes no mention of these factors within the Petition itself, much less
`explain why their collective weight does not favor denial.
`
`Petitioner Does Not Attempt to Justify Its Horizontal Redundancy
`The Board has repeatedly held that multiple grounds for unpatentability for
`the same claim will not be considered unless the petition presenting the redundancy
`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) (emphasis original); see also Berk-Tek LLC v. Belden Techs. Inc., No.
`IPR2013-00057 (Paper 21) at 4-5 (P.T.A.B. May 14, 2013) (When “petitioner makes
`no meaningful distinction between certain grounds, the Board may exercise
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`10
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`IPR2017-2202
`U.S. Patent No. 8,239,852
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`discretion by acting on one or more grounds and regard the others as redundant”
`because “allowing multiple grounds without meaningful distinction by the petitioner
`is contrary to the legislative intent”).
`As clearly laid out above, the instant Petition reuses a collection of references
`it had previously cited in the prior petition for the same reasons. While the instant
`Petition relies on two cumulative references (Richardson and Demeyer) in place of
`certain references cited in IPR2017-2041, the Petition does not articulate how the
`newly-cited references are both stronger and weaker in any way relative to the
`references they replace in IPR2017-2041. Accordingly, by its omission, Petitioner
`has effectively conceded that the instant Petition is impermissibly horizontally-
`redundant with IPR2017-2041.
`
` 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
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`11
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`IPR2017-2202
`U.S. Patent No. 8,239,852
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`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. 994.3
`
`
`3 All citations to Exhibit 1002 (“Ex. 1002”) are made to the page numbering in the
`footer added by Petitioner.
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`12
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`IPR2017-2202
`U.S. Patent No. 8,239,852
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`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:
`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
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`13
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`IPR2017-2202
`U.S. Patent No. 8,239,852
`(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.
`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
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`IPR2017-2202
`U.S. Patent No. 8,239,852
`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
`Electronics N.V. patent that describes how “reconfiguration manager receives a
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`IPR2017-2202
`U.S. Patent No. 8,239,852
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`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.4
`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 at FIG. 1.
`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
`
`
`4 Uniloc notes that U.S. Patents are self-authenticating. Fed. R. Evidence 902.
`
`16
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`IPR2017-2202
`U.S. Patent No. 8,239,852
`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 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
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`17
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`

`

`IPR2017-2202
`U.S. Patent No. 8,239,852
`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 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.
` THERE IS NO REASONABLE LIKELIHOOD THAT EVEN ONE OF
`THE CHALLENGED CLAIMS IS UNPATENTABLE
`While the Board need not reach the substantive merits of the Petition, given
`the procedural defects identified above, Uniloc nevertheless 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.
`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
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`18
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`IPR2017-2202
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`US. Patent No. 8,239,852
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`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.
`
`The Petition is stylized as presenting the following grounds:
`
`Claim(s)
`
`8
`
`Reference(s)
`Richardson5 and Dem er6
`
`Richardson, Dem er, and Hu; hes9
`
`Richardson, Dem er, and Villela7
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`Richardson, Dem er, and Shakkarwar8
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`A.
`
`Claim Construction
`
`Petitioner does not contend that any term from the ’852 Patent requires an
`
`explicit construction and requests that the Board adopt the broadest reasonable
`
`construction of the challenged claims. Pet. at 6. Patent Owner submits that the Board
`
`need not presently construe any claim term in a particular manner in order to arrive
`
`at the conclusion that the Petition is substantively deficient. Wellman, Inc. v.
`
`Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (“need only be construed
`
`to the extent necessary to resolve the controversy”).
`
`5 US. Patent Pubs. 2008/0320607 (“Richardson” or “Ex. 1104”)
`6 US. Patent Pubs. 2005/0076334 (“Demeyer” or “Ex. 1105”)
`7 US. Patent Pub. 2007/0113090 (“I/illela” or “Ex. 1106”)
`8 US. Patent Pub. 2008/0120195 (“Shakkarwar” or “Ex. 1107”)
`9 US. Patent Pub. 2004/0059938 (“Hughes” or “Ex. 1108”)
`
`19
`
`

`

`IPR2017-2202
`U.S. Patent No. 8,239,852
` No prima facie obviousness for “performs physical device
`recognition” limitations
`The Petition fails to establish prima facie obviousness of at least the following
`recitation: “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,” as
`recited in Independent Claims 1 and 18 (and hence all challenged claims).10
`The Petitioner’s reliance on Richardson is misplaced. For example, the
`Petition does not show that Richardson discloses performing physical device
`recognition on the client device to determine machine parameters where the machine
`parameters 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. Instead, Petitioner
`merely speculates through its declarant, outside the four corners of the reference,
`that Richardson might have had the claimed features. Pet. 19 (“A POSITA would
`have recognized that a user’s location is user-specific information that may be
`considered an example of “account information.”) citing EX1003, ¶ 52 (having
`language identical to the corresponding speculative and conclusory paragraph in the
`Petition). This reliance on conclusory speculation of a declarant should be rejected
`because the Federal Circuit has instructed that “legal determinations of obviousness,
`as with such determinations generally, should be based on evidence rather than on
`mere speculation or conjecture.” Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286,
`
`10 The Petition only addresses this limitation in its analysis of claim 18. For claim
`1, the Petition relies solely and exclusively on its discussion of claim 18. See Pet.
`33. Therefore, the Petition’s deficiencies with regard to claim 18 apply equally to
`claim 1.
`
`20
`
`

`

`IPR2017-2202
`U.S. Patent No. 8,239,852
`
`1290 (Fed. Cir. 2006); see also 37 C.F.R. § 42.104(b)(4) (requiring petitions to
`“specify where each element of the claim is found in the prior art patents or printed
`publications relied upon”) (emphasis added); In re Sang Su Lee, 277 F.3d 1338,
`1345 (Fed. Cir. 2002); K/S HIMPP v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365-
`66 (Fed. Cir. 2014) (finding the P.T.A.B. correctly rejected conclusory assertions of
`what would have been common knowledge in the art); W.L. Gore & Assocs., Inc. v.
`Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983) (“To imbue one of ordinary skill
`in the art with knowledge of the invention in suit, when no … reference or references
`of record convey or suggest that knowledge, is to fall victim to the insidious effect
`of a hindsight syndrome wherein that which only the inventor taught is used against
`its teacher.”).
`In tacit acknowledgment of its failure, Petitioner hedges its bets by presenting
`an additional reference, Demeyer, as allegedly disclosing the missing limitations.
`But in doing so, the Petition presents redundancies without any articulation of the
`relative strength and weaknesses of each reference. The Board rejected this approach
`in Eizo Corp. v. Barco N.V.11 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.
`
`
`11 IPR2014-00358, (Paper 11) (P.T.A.B. July 23, 2014).
`
`21
`
`

`

`IPR2017-2202
`U.S. Patent No. 8,239,852
`
`In any event, the unjustified redundant reliance on Demeyer also fails to
`disclose the missing limitations. At minimum, Demeyer fails to disclose determining
`machine parameters including account information for a user, as required by the
`claim language. While the Petition alleges that Demeyer discloses gathering
`“identification information” or “end user identification” (Pet. 20), there is no
`mention in Demeyer of the required “account information for a user”. Petitioner
`appears to acknowledge as much by attempting to cure the deficiency through
`unsupported spelcuation of its declarant. Pet. 20, citing EX1103, ¶ 59 (having nearly
`identical language of the corresponding speculative and conclusory paragraph of the
`Petition); cf. Alza Corp., 464 F.3d at 1290; see also 37 C.F.R. § 42.104(b)(4).
`Furthermore, Demeyer also fails to disclose determining machine parameters
`including features of software that the user of the client device is entitled to use.
`Here, the antecedent basis for “the user” is the “user” for whom the account
`information was required in the immediately preceding limitation. Because Demeyer
`does not disclose “account information for a user”, as discussed above, Demeyer
`also fails to disclose determining features of software for the user of the client device
`is entitled to use. Petitioner’s unsupported reliance on speculation of its expert
`cannot cure this deficiency. Pet. 21 citing EX1103, ¶ 60 (having nearly identical
`language of the corresponding speculative and conclusory paragraph of the