`
`Paper No. 9
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`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner
`
`____________________
`
`Case IPR2017-02202
`Patent No. 8,239,852 B2
`____________________
`
`PETITIONER’S REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(D)
`
`
`
`
`
`Case IPR2017-02202
`Patent No. 8,239,852 B2
`
`TABLE OF CONTENTS
`
`B.
`
`
`I.
`INTRODUCTION ........................................................................................... 1
`LEGAL STANDARDS ................................................................................... 3
`II.
`III. ARGUMENT ................................................................................................... 3
`A.
`The Board’s Interpretation Of “Performs Physical Device
`Recognition … To Determine Machine Parameters” Is Legally
`Erroneous Because It Is Inconsistent With The Claims And
`Specification .......................................................................................... 3
`The Board’s Narrow Implicit Construction Is Unreasonable
`Because The Record Contains No Evidence On Which The
`Board Could Have Based Its Decision .................................................. 7
`Richardson And Demeyer Disclose “Perform[ing] Physical
`Device Recognition … To Determine Machine Parameters …” ........ 11
`The Board Misapprehended Petitioner’s Argument Regarding
`The “Unique Device Identifier” And The “Unique Software
`Identifier” ............................................................................................ 12
`IV. CONCLUSION .............................................................................................. 13
`
`C.
`
`D.
`
`
`
`i
`
`
`
`Case IPR2017-02202
`Patent No. 8,239,852 B2
`TABLE OF AUTHORITIES
`
`Cases
`Alcon Research Ltd. v. Apotex Inc., 687 F.3d 1362
`(Fed. Cir. 2012) ..................................................................................................... 6
`Hutchinson Tech. Inc. v. Nitto Denko Corp.,
`Case IPR2017-01607 (P.T.A.B. Feb. 2, 2018) .................................................4, 8
`In re Gleave,
`560 F.3d 1331 (Fed. Cir. 2009) ............................................................................ 7
`Oatey Co. v. IPS Corp.,
`514 F.3d 1271 (Fed. Cir. 2008) ............................................................................ 8
`Teva Pharms. USA, Inc. v. Sandoz, Inc.,
`135 S.Ct. 831 (2015) ............................................................................................. 4
`Ultratec, Inc. v. CaptionCall, LLC,
`872 F.3d 1267 (Fed. Cir. 2017) ............................................................................ 3
`Westerngeco LLC v. PGS Geophysical,
`Case IPR2015-00313 (P.T.A.B. Feb. 3, 2017) ............................................ 2, 4, 6
`Rules
`37 C.F.R. § 42.71(c) ................................................................................................... 3
`37 C.F.R. § 42.71(d) ..............................................................................................3, 6
`
`
`
`ii
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`
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`
`
`I.
`
`INTRODUCTION
`Pursuant to 37 C.F.R. § 42.71(d), Petitioner Apple Inc. respectfully requests
`
`rehearing of the Board’s Decision Denying Institution of Inter Partes Review
`
`(“Decision,” Paper 8). The Board’s Decision was based on a misinterpretation of
`
`the claim language of U.S. Patent No. 8,239,852 (the “’852 Patent”) and a
`
`misapprehension of Petitioner’s arguments.
`
`In its Decision, the Board implicitly construed the claim limitation
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`“performs physical device recognition … to determine machine parameters” in a
`
`way that excludes two types of data explicitly recited by the ’852 Patent’s claims
`
`and described in the specification. Specifically, the ’852 Patent’s claims explicitly
`
`state that the term “machine parameters” includes both “account information for a
`
`user of a client device” and “features of software that the user of the client device
`
`is entitled to use.” Ex. 1101, Claims 1, 18. The Board acknowledged that the prior
`
`art presented in the Petition discloses acquiring “account information” and
`
`“features of software.” Decision at 18. But the Board, nonetheless, found that this
`
`data—the same data expressly identified by the claims as “machine parameters”—
`
`do not qualify as “machine parameters” under the Board’s implicit construction of
`
`that limitation. Id. Instead, the Board mistakenly construed the claims to require
`
`this data to be “present in” some other, undefined machine parameter. Id. This
`
`incorrect claim construction also led the Board to construe “physical device
`
`1
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`
`
`
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`recognition” in a manner contrary to its description in the ’852 Patent specification.
`
`Because the Board’s interpretation of the claim language excludes the examples
`
`recited in the claims and described in the specification, it is legally erroneous. See
`
`Westerngeco LLC v. PGS Geophysical, Case IPR2015-00313, Paper 45 at 4-11
`
`(P.T.A.B. Feb. 3, 2017) (granting request for rehearing because the original
`
`decision rested on an incorrect implicit construction of a claim term).
`
`Moreover, the Board’s decision is also unsupported by the evidence of
`
`record. The Board’s implicit construction appears to require each “machine
`
`parameter” to uniquely identify a computer. Decision at 18-19. But there is no
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`evidence in the record supporting such a requirement. Rather, as demonstrated in
`
`the Petition, the “machine parameters” term is used by the ’852 Patent to describe
`
`different types of hardware-, software-, and user-related data. The ’852 Patent
`
`recognizes that each “machine parameter” need not be unique, and it describes
`
`using a combination of multiple parameters to uniquely identify a machine. Thus,
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`the Board’s denial of institution is not supported by the record evidence.
`
`Under the proper interpretation of the claim language, the prior art presented
`
`in the Petition discloses the “performs physical device recognition … to determine
`
`machine parameters” claim limitation. Because the Decision rests on an incorrect
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`implicit construction of a claim term, Petitioner respectfully requests that the
`
`Board modify its Decision and institute review on all challenged claims.
`
`2
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`
`
`
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`II. LEGAL STANDARDS
` “A party dissatisfied with a decision may file a single request for rehearing
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`without prior authorization from the Board.” 37 C.F.R. § 42.71(d). “When
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`rehearing a decision on petition, the panel will review the decision for an abuse of
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`discretion.” 37 C.F.R. § 42.71(c). “The Board abuses its discretion if the decision:
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`(1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an erroneous
`
`conclusion of law; (3) rests on clearly erroneous fact findings; or (4) involves a
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`record that contains no evidence on which the Board could rationally base its
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`decision.” Ultratec, Inc. v. CaptionCall, LLC, 872 F.3d 1267, 1271-72 (Fed. Cir.
`
`2017).
`
`III. ARGUMENT
`A. The Board’s Interpretation Of “Performs Physical Device
`Recognition … To Determine Machine Parameters” Is Legally
`Erroneous Because It Is Inconsistent With The Claims And
`Specification
`The Board’s implicit construction of “performs physical device recognition
`
`… to determine machine parameters” is legally erroneous. Claim interpretation is
`
`a question of law. Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831, 839
`
`(2015). A claim term must be interpreted in a manner consistent with the claim
`
`language and examples disclosed by the specification. See, e.g., Westerngeco LLC,
`
`Case IPR2015-00313, Paper 45 at 4-11; Hutchinson Tech. Inc. v. Nitto Denko
`
`Corp., Case IPR2017-01607, Paper 12 at 2-8 (P.T.A.B. Feb. 2, 2018). In its
`
`3
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`
`
`
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`Decision, the Board held that the prior art references presented in the Petition,
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`Richardson and Demeyer, do not disclose the limitation “perform[ing] physical
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`device recognition … to determine machine parameters including account
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`information for a user of [a] client device and features of software that the user of
`
`the client device is entitled to use.” Decision at 15-19. The Board did not
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`explicitly construe this claim limitation (id. at 6), but applied a narrow
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`interpretation that contradicts both the claim language and the patent specification.
`
`The Board’s decision is therefore based on an erroneous conclusion of the law.
`
`First, the Board’s implicit construction of the “machine parameters” term
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`contradicts the language of the claims themselves. The Board agreed with
`
`Petitioner that Demeyer discloses identifying “account information for a user of the
`
`client device” and “features of software that the user of the client device is entitled
`
`to use.” Decision at 18. The Board, however, stated that there is “no teaching or
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`suggestion … that such identification could be present in a machine parameter, as
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`recited in claims 1 and 18.” Id. (emphasis added). But the claims of the ’852
`
`Patent expressly define “account information …” and “features of software …” as
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`“machine parameters.” Ex. 1101, Claims 1, 18. Specifically, Claims 1 and 18
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`both require “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
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`4
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`
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`
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`to use.” Id. (emphasis added); Petition at 4, 18-19. Thus, the claim language
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`makes clear that “account information …” and “features of software …” are
`
`themselves “machine parameters” and need not be “present in” some other
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`parameter. Id. By excluding Demeyer’s “account information …” and “features
`
`of software …” from the scope of “machine parameters,” the Board’s implicit
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`construction of this limitation conflicts with the explicit claim language that such
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`data are two types of “machine parameters.” See id.
`
`The scope of a claim term—construed under either the Philips standard or
`
`the “broadest reasonable interpretation” standard—cannot exclude the examples
`
`recited in the claim language. See, e.g., Alcon Research Ltd. v. Apotex Inc., 687
`
`F.3d 1362, 1367 (Fed. Cir. 2012) (finding the claim term “therapeutically effective
`
`amount” “must cover at least” the range recited by the claims). In Westerngeco
`
`LLC, the Board held that “implicitly” construing a claim term in a manner
`
`“inconsistent with the plain language of the claims” is a legal error that warrants
`
`reconsideration under 37 C.F.R. § 42.71(d). See Case IPR2015-00313, Paper 45 at
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`5-6, 10-11. Similarly, because the Board’s implicit construction of the “machine
`
`parameters” term is inconsistent with the plain language of the claims, Petitioner
`
`respectfully requests rehearing of the Decision.
`
`Second, the Board’s interpretation of the “machine parameters” term also
`
`contradicts the patent specification. The ’852 Patent’s specification expressly
`
`5
`
`
`
`
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`teaches that the “machine parameters” that may be determined via “physical device
`
`recognition” include “user account information” and “features of the
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`software/hardware the user is entitled to use.” Ex. 1101, 5:51-55; Petition at 4,
`
`18-19. The specification does not impose any additional requirement on the
`
`content of “machine parameters,” but instead explains that “machine parameters”
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`may include “data determined by a hardware component, software component, or
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`data component specific to the client device 100.” Ex. 1101, 7:1-3; see also id.,
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`3:7-10; Petition at 4, 18-19. Thus, the Board’s implicit construction of the claim
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`term is not supported by the specification.
`
`The Board’s Decision fails to explain why the “account information” and
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`“software features” that the Board agrees are taught by Demeyer do not qualify as
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`“machine parameters,” even though the ’852 Patent expressly identifies the very
`
`same data as constituting “machine parameters.” The Board’s implicit
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`interpretation of the claim language is legally incorrect because it excludes the
`
`examples of “machine parameters” identified in the specification and explicitly
`
`recited in the claims.1 See Hutchinson Tech. Inc., Case IPR2017-01607, Paper 12
`
`
`1 Similarly, the Board did not explain why it found that Richardson’s disclosure of
`
`acquiring IP address and geo-location code information does not constitute
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`“physical device recognition” of “machine parameters,” even though the ’852
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`6
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`
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`
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`at 2-8 (granting request for rehearing because the Board “implicitly” construed a
`
`claim term in a way that excluded an example in the specification); Oatey Co. v.
`
`IPS Corp., 514 F.3d 1271, 1276 (Fed. Cir. 2008) (“We normally do not interpret
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`claim terms in a way that excludes embodiments disclosed in the specification.”).
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`Because the Board’s Decision rests on an incorrect interpretation of the
`
`claim language, Petitioner respectfully submits that the denial of institution was
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`based on an erroneous conclusion of law and should be reversed.
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`B.
`
`The Board’s Narrow Implicit Construction Is Unreasonable
`Because The Record Contains No Evidence On Which The Board
`Could Have Based Its Decision
`In addition to being legally incorrect, the Board’s narrow interpretation of
`
`the claim language is also wholly unsupported by the record evidence. Neither
`
`Petitioner nor Patent Owner proposed a construction of the “machine parameters”
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`term, and the Board itself found construction unnecessary. Decision at 6.
`
`
`Patent’s gathering of the same information is expressly identified by the patent as
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`“physical device recognition” of “machine parameters.” See Decision at 16-17;
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`Petition at 4, 18-19; Ex. 1101, 3:7-10, 10:1-5. While Richardson does not use the
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`exact phrase “machine parameter” to describe IP addresses or geo-location codes, a
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`reference need not use the same terminology to disclose an element. See In re
`
`Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
`
`7
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`
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`
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`Petitioner and its expert showed that the “machine parameters” term is used by the
`
`claims and specification to encompass different types of data, including hardware-,
`
`software-, and user-related parameters. See Petition at 4, 6, 18-19; Ex. 1103, ¶¶ 31,
`
`51-52. Moreover, in its Preliminary Response, while Patent Owner disputed that
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`the information disclosed by the prior art meets the specific types of “machine
`
`parameters” recited by the claims, Patent Owner did not dispute that the user- and
`
`software-related data gathered by Demeyer qualify as “machine parameters”
`
`determined via “physical device recognition.” See, e.g., Paper 7 at 22 (arguing that
`
`Demeyer’s “identification information” and “end user identification” do not
`
`comprise “account information for a user” and that Demeyer’s software feature
`
`information does not comprise “features of software for the user of the client
`
`device is entitled to use”) (emphasis in original).
`
`Although the Board did not provide an explicit construction, the Decision
`
`appears to require that each “machine parameter” uniquely identify a computer
`
`and/or be specific to its machine hardware. See Decision at 18-19 (“[T]he only
`
`potential machine parameter in Demeyer identified by Petitioner is a ‘means of
`
`uniquely identifying the computer system 100, such as the Service Code on a Dell
`
`personal computer’….”). For example, the Board disqualified Demeyer’s
`
`identification of a software feature as a “machine parameter” because the software
`
`feature could not uniquely identify a computer system. See id. at 19 (“We find in
`
`8
`
`
`
`
`
`Demeyer no suggestion that identification of a technology module could
`
`potentially be utilized to uniquely identify computer system 100.”).
`
`The Board’s implicit requirement regarding “machine parameters” is not
`
`supported—there is no evidence in the record requiring each “machine parameter”
`
`to uniquely identify a machine. As explained in the Petition, a “unique device
`
`identifier” is generated from multiple “machine parameters.” Petition at 4. Indeed,
`
`the ’852 Patent recognizes that each “machine parameter” need not be unique and
`
`that the alleged invention is to use a combination of parameters to uniquely
`
`identify a machine. See, e.g., Ex. 1101 at 7:1-7; Petition at 1, 4, 18-19; Ex. 1103,
`
`¶¶ 31, 51-52.2 Moreover, Claims 1 and 18 both recite the generation of “a unique
`
`device identifier … based at least in part on the determined machine parameters” in
`
`a separate claim limitation. Ex. 1101, Claims 1, 18. Thus, there is no
`
`requirement—in the specification or in the claims—for any single “machine
`
`parameter” to be capable of uniquely identifying a computer system.
`
`
`2 Patent Owner similarly described the ’852 Patent’s “unique device identifier” as
`
`“derived from multiple machine parameters readable on the client device.” Paper 7
`
`at 11-12. Patent Owner did not argue that each “machine parameter” must be
`
`capable of uniquely identifying a computer system. See id.
`
`9
`
`
`
`
`
`To the extent the Board’s Decision rests on a finding that Demeyer does not
`
`disclose using “account information …” and “features of software …” to generate
`
`a “unique device identifier” (see Decision at 18-19), such a finding is based on a
`
`misapprehension of Petitioner’s arguments. Petitioner relies on Richardson for its
`
`teaching of generating a unique “device identifier” from a combination of
`
`hardware-, software-, and user-related “machine parameters.” See Petition at 18-
`
`19 (citing Ex. 1104, [0021]-[0022]; Ex. 1103, ¶¶ 51-52). Petitioner further
`
`identified reasons why a person of ordinary skill in the art would have modified
`
`Richardson’s “device identifier” to include Demeyer’s user- and software-related
`
`parameters, such as “to increase the uniqueness of the identifier, allow for better
`
`differentiation of users, and lead to a more secure system.” See Petition at 13-16;
`
`Ex. 1103, ¶¶ 54-61. Patent Owner did not contest these reasons, nor did it present
`
`any evidence rebutting the motivations identified in the Petition. And the Board
`
`did not address the sufficiency of the motivations presented in the Petition.
`
`The Petition relied on Demeyer for its teaching of the acquisition of two
`
`user- and software-related parameters during the software authorization process,
`
`not for its disclosure of a “unique device identifier.” See id. Accordingly, the
`
`Board should not have denied the Petition on the basis that Demeyer does not use
`
`these parameters to uniquely identify a computer system.
`
`10
`
`
`
`
`
`C. Richardson And Demeyer Disclose “Perform[ing] Physical Device
`Recognition … To Determine Machine Parameters …”
`Under the “broadest reasonable construction” standard, the combined
`
`teachings of Richardson and Demeyer disclose the “performs physical device
`
`recognition … to determine machine parameters” claim limitation. Thus, under a
`
`legally correct construction of the “machine parameters” claim limitation, the cited
`
`prior art renders the challenged claims obvious.
`
`The Board correctly found that Demeyer discloses acquiring “account
`
`information for a user of a client device” and “features of software that the user of
`
`the client device is entitled to use” as part of its software authorization process.
`
`Decision at 18; Petition at 4, 9-15, 19-22. Richardson discloses generating a
`
`“unique device identifier” from various “machine parameters,” including
`
`hardware-, software-, and user-related data. Petition at 9, 18-19; see also Ex. 1104,
`
`[0021]-[0022]. Richardson further discloses determining such data using a
`
`software program, which is the same mechanism disclosed by the ’852 Patent for
`
`its “physical device recognition” of “machine parameters.” Petition at 4, 18-19;
`
`Ex. 1101, 6:3-7:39, 9:16-10:31; Ex. 1104, [0019]-[0022]. And, as discussed
`
`above, the Petition presents undisputed motivations supporting the inclusion of
`
`Demeyer’s user- and software- related parameters in Richardson’s “device
`
`identifier.” Petition at 13-15.
`
`11
`
`
`
`
`
`Thus, the Petition demonstrates a reasonable likelihood that the combination
`
`of Richardson and Demeyer discloses “perform[ing] physical device recognition
`
`… to determine machine parameters including account information for a user of [a]
`
`client device and features of software that the user of the client device is entitled to
`
`use,” as recited in Claims 1 and 18. Accordingly, Petitioner respectfully requests
`
`that the Board modify its Decision and institute review on all challenged claims.
`
`D. The Board Misapprehended Petitioner’s Argument Regarding
`The “Unique Device Identifier” And The “Unique Software
`Identifier”
`To the extent the Decision rests in part on the reasoning that Demeyer’s
`
`“identification information” cannot satisfy both the “unique device identifier” and
`
`the “unique software identifier” limitations recited by the claims, such a basis is a
`
`misapprehension of Petitioner’s argument. See Decision at 18 (“Indeed, Petitioner
`
`refers to the same ‘identification information’ as rendering obvious the separate
`
`‘unique software identifier’ element recited elsewhere in claims 1 and 18.”).
`
`Petitioner relied on Richardson’s unique software “serial number” to meet
`
`the “unique software identifier” limitation. Petition at 24-25; Ex. 1104, [0023].
`
`Petitioner did not argue that Demeyer’s “identification information” corresponds to
`
`the ’852 Patent’s “unique software identifier.” See Petition at 25-26. Instead,
`
`Petitioner looked to Demeyer only for the teaching that Richardson’s “serial
`
`number” could be unique to a “particular copy of software product,” if Patent
`
`12
`
`
`
`
`
`Owner challenged the uniqueness of Richardson’s “serial number.” See id.3 The
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`Petition does not use Demeyer’s “identification information” to satisfy two claim
`
`limitations. Accordingly, to the extent the Decision rests in part on this
`
`misapprehension of Petitioner’s argument, request for rehearing should be granted.
`
`IV. CONCLUSION
`For the foregoing reasons, Petitioner respectfully requests reconsideration of
`
`the Board’s Decision Denying Institution of Inter Partes Review and that
`
`institution of inter partes review be granted, as set forth in the Petition.
`
`
`
`Dated: May 30, 2018
`
`
`
`
`
`
`By: /s/ Xin-Yi Zhou
`Attorney for Petitioner Apple Inc.
`
`
`3 Patent Owner did not take this position. See generally Paper 7.
`
`13
`
`
`
`CERTIFICATE OF SERVICE
`I hereby certify that on May 30, 2018, I caused a true and correct copy of the
`
`foregoing materials:
`• Petitioner’s Request for Rehearing Under 37 C.F.R. § 42.71(D)
`
`
`
`to be served via electronic mail on the following attorneys of record per the Patent
`Owner’s Mandatory Notices and Power of Attorney:
`Sean D. Burdick
`Ryan Loveless
`Uniloc USA, Inc.
`Etheridge Law Group
`7160 Dallas Parkway, Ste. 380 Plano,
`2600 E. Southlake Blvd., Ste. 120-324
`TX 75024
`Southlake, TX 76092
`sean.burdick@unilocusa.com
`ryan@etheridgelaw.com
`
`
`James Etheridge
`Brett Mangrum
`Etheridge Law Group
`Etheridge Law Group
`2600 E. Southlake Blvd., Ste. 120-324
`2600 E. Southlake Blvd., Ste. 120-324
`Southlake, TX 76092
`Southlake, TX 76092
`jim@etheridgelaw.com
`brett@etheridgelaw.com
`
`
`
`Jeffrey Huang
`Etheridge Law Group
`2600 E. Southlake Blvd., Ste. 120-324
`Southlake, TX 76092
`jeff@etheridgelaw.com
`
`
`May 30, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Xin-Yi Zhou
`Xin-Yi Zhou (Reg. No. 63,366)
`
`
`
`14
`
`
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