Trials@uspto.gov
`571-272-7822
`
`
`Paper 10
`
`Entered: December 13, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`v.
`UNILOC LUXEMBOURG, S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-02202
`Patent 8,239,852 B2
`____________
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
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`

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`IPR2017-02202
`Patent 8,239,852 B2
`
`
`INTRODUCTION
`Apple Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of claims 1–8 and 16–18 (the “challenged claims”) of U.S. Patent
`No. 8,239,852 B2 (Ex. 1101, “the ’852 patent”) on four asserted grounds
`under 35 U.S.C. § 103(a). Paper 1 (“Pet.”). Uniloc Luxembourg S.A.
`(“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
`After considering the information presented in the Petition and the
`Preliminary Response, we determined that Petitioner had not established a
`reasonable likelihood of prevailing in its assertions with respect to any of the
`challenged claims, and we, accordingly, denied institution of inter partes
`review. Paper 8 (“Decision” or “Dec.”); see 35 U.S.C. § 314(a) (providing
`that an inter partes review may not be instituted unless “the information
`presented in the petition . . . and any response . . . shows that there is a
`reasonable likelihood that the petitioner would prevail with respect to at least
`1 of the claims challenged in the petition”). We found, in particular, that
`Petitioner had not established sufficiently that the Richardson1 and
`Demeyer2 references relied upon in each asserted ground would have taught
`or suggested “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 each of the challenged independent claims (i.e., claims 1
`and 18). Dec. 15–19.
`Petitioner requests rehearing, contending that the Decision was based
`on a misinterpretation of both the claim language and Petitioner’s
`
`
`1 U.S. Patent Application Publication No. 2008/0320607 A1 (Ex. 1104).
`2 U.S. Patent Application Publication No. 2005/0076334 A1 (Ex. 1105).
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`IPR2017-02202
`Patent 8,239,852 B2
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`arguments. Paper 9 (“Request” or “Req. Reh’g”), 1. For the reasons
`discussed below, Petitioner’s Request for Rehearing is denied.
`
`ANALYSIS
`“When rehearing a decision on petition, a panel will review the
`decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of
`showing a decision should be modified lies with the party challenging the
`decision[,]” which party “must specifically identify all matters the party
`believes the Board misapprehended or overlooked, and the place where each
`matter was previously addressed in a motion, an opposition, or a reply.”
`37 C.F.R. § 42.71(d).
`In its Request, Petitioner alleges several errors in the Decision. First,
`Petitioner contends, “the Board implicitly construed the claim limitation
`‘performs physical device recognition . . . to determine machine
`parameters’” in the Decision “in a way that excludes two types of data
`explicitly recited by the ’852 Patent’s claims and described in the
`specification” and “contradicts the language of the claims themselves.” Req.
`Reh’g 1, 4. Specifically, Petitioner argues, “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.’” Id. at 1 (citing Ex. 1101,
`claims 1, 18). But, according to Petitioner, although “[t]he Board
`acknowledged that the prior art presented in the Petition discloses acquiring
`‘account information’ and ‘features of software,’” “the Board, nonetheless[]
`found that this [sic] data . . . do not qualify as ‘machines parameters’” under
`an alleged implicit construction “requiring this data to be ‘present in’ some
`other, undefined machine parameter.” Id. (citing Dec. 18); also id. at 4.
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`Patent 8,239,852 B2
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`According to Petitioner, “the claim language makes clear that ‘account
`information . . .’ and ‘features of software . . .’ are themselves ‘machine
`parameters’ and need not be ‘present in’ some other parameter,” and “by
`excluding Demeyer’s ‘account information . . .’ and ‘features of
`software . . .’ from the scope of ‘machine parameters,’ the Board’s implicit
`construction of this limitation conflicts with the explicit claim language that
`such data are two types of ‘machine parameters.’” Id. at 5.
`Further, Petitioner argues, “[t]his incorrect claim construction also led
`the Board to construe ‘physical device recognition’ in a manner contrary to
`its description in the ’852 Patent specification.” Id. at 1–2. In particular,
`according to Petitioner, “[t]he ’852 Patent’s specification expressly teaches
`that the ‘machine parameters’ that may be determined via ‘physical device
`recognition’ include ‘user account information’ and ‘features of the
`software/hardware the user is entitled to use.’” Id. at 5–6 (citing Ex. 1101,
`5:51–55). Petitioner further contends that the Decision fails to explain either
`why “‘account information’ and ‘software features’ . . . taught by Demeyer
`do not qualify as “machine parameters’” or why “Richardson’s disclosure of
`acquiring IP address and geo-location code information does constitute
`‘physical device recognition’ of ‘machine parameters’” in view of the
`’852 patent’s identification or gathering of, allegedly, the “same” data or
`information. Id. at 6 & n.1. Petitioner concludes, “[b]ecause the Board’s
`interpretation of the claim language excludes the examples recited in the
`claims and described in the specification, it is legally erroneous,” and “the
`denial of institution . . . should be reversed.” Id. at 1–2, 7.
`Moreover, Petitioner contends, “[t]he Board’s decision is also
`unsupported by the evidence of record,” because “[t]he Board’s implicit
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`Patent 8,239,852 B2
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`construction appears to require each ‘machine parameter’ to uniquely
`identify a computer.” Id. at 2; also id. at 8–10. According to Petitioner, “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.” Id. at 9 (citing Ex. 1101, 7:1–7; Ex. 1103
`¶¶ 31, 51–52). Further, Petitioner contends, “Patent Owner similarly
`described the ’852 Patent’s ‘unique device identifier’ as ‘derived from
`multiple machine parameters readable on the client device,’” and “Patent
`Owner did not argue that each ‘machine parameter’ must be capable of
`uniquely identifying a computer system.” Id. at 9 n.2 (citing Prelim.
`Resp. 11–12).
`Still further, Petitioner contends, “the combined teachings of
`Richardson and Demeyer disclose the ‘performs physical device
`recognition . . . to determine machine parameters’ claim limitation” under
`the broadest reasonable construction, and, “thus, under a legally correct
`construction of the ‘machine parameters’ claim limitation, the cited prior art
`renders the challenged claims obvious.” Id. at 11. In support of this
`contention, Petitioner alleges that “[t]he 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”; that “Richardson discloses
`generating a ‘unique device identifier’ from various ‘machine parameters,’
`including hardware-, software-, and user-related data”; that “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”; and that “the Petition presents
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`Patent 8,239,852 B2
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`undisputed motivations supporting the inclusion of Demeyer’s user- and
`software- related parameters in Richardson’s ‘device identifier.’” Id.
`Lastly, Petitioner argues that, “[t]o 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,” because “Petitioner relied on Richardson’s unique
`software ‘serial number,’” rather than Demeyer’s identification information,
`“to meet the ‘unique software identifier’ limitation.” Id. at 12 (citing
`Pet. 24–26).
`Having considered Petitioner’s arguments, we are not persuaded that
`we misapprehended or overlooked any matters previously addressed or that
`we otherwise abused our discretion in denying the Petition.
`Preliminarily, we are not persuaded that claims 1 and 18 “expressly
`identif[y]” the recited “account information” and “features of software”
`necessarily as being “machine parameters.” Cf. Req. Reh’g 1. Both of the
`challenged independent claims recite, in part, “a computer program . . .
`which . . . (i) performs physical device recognition on [a] 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.” Ex. 1101, 12:4–14, 14:1–11. Whereas claims 1 and 18 thus
`recite “machine parameters including account information . . . and features
`of software . . . ,” we do not understand that recitation necessarily to imply
`that “account information” and “features of software” are examples of
`machine parameters any more than we would understand “memory
`modules” or “power supplies” to be examples of computers if a hypothetical
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`claim recited “computers including memory and power supplies.” As
`illustrated by that analogy, the word “including” with respect to “account
`information” and “features of software” can reasonably be understood to
`identify particular data that can be encompassed by the “machine
`parameters,” rather than examples of machine parameters. Regardless, even
`if we regard “account information” and “features of software that the
`user . . . is entitled to use” to be examples of machine parameters within the
`broadest reasonable construction of that term, Petitioner nevertheless has not
`established that the combination of Richardson and Demeyer teaches or
`suggests determining either such “account information” or such “features of
`software” by “perform[ing] physical device recognition on the client
`device,” as required by claims 1 and 18.
`Petitioner alleged in the Petition that “Richardson discloses that the
`processor of the client device executes a program to perform physical device
`recognition on the client device to determine ‘machine parameters of the
`computing device.’” Pet. 18. In support of that allegation, Petitioner argued
`that “[e]xamples of the determined machine parameters include ‘hard disk
`serial number, MAC ID, RAM manufacturing date,’ ‘CPU number,’
`‘amount of memory, type of processor, software or operating system serial
`number,’ and ‘the computing device’s IP address and/or other geo-location
`code.’” Id. (citing Ex. 1104 ¶¶ 21–22, Fig. 2 (step 45)). Petitioner also cited
`Richardson as disclosing that “the process for generating a device identifier
`may include measuring physical, non-user-configurable characteristics of
`disk drives and solid state memory devices.” Id. (citing Ex. 1104 ¶ 21). We,
`however, find Petitioner’s assertion that “[e]xamples of the determined
`machine parameters include . . . ‘the computing device’s IP address and/or
`
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`geo-location code’” to be unsupported. Richardson instead states “[t]he
`device identifier generated from the machine parameters may include the
`computing device’s IP address and/or other geo-location code . . . .”
`Ex. 1104 ¶ 22 (emphasis added). This distinction is important for two
`reasons: first, the “computing device’s IP address and/or other geo-location
`code” is the only data disclosed by Richardson that Petitioner mapped to the
`“account data” recited in claims 1 and 18 (see Pet. 19); and second, both of
`claims 1 and 18 separately recite “generat[ing] a unique device identifier . . .
`based at least in part on the determined machine parameters” as an
`additional required function of the recited computer program. Ex. 1101,
`12:14–17, 14:11–14. Thus, even assuming arguendo that a “computing
`device’s IP address and/or other geo-location code” might be considered to
`be “account information” as Petitioner alleges, Richardson discloses that
`such address or code is generated from machine parameters, rather than
`being a “machine parameter[]” “determine[d]” by “perform[ing] physical
`device recognition.” Petitioner does not explain how the “IP address and/or
`other geo-location code” could be both a “machine parameter,” as it asserts,
`and a “device identifier generated from . . . machine parameters,” as
`Richardson explicitly discloses.3 Notably, we find no inconsistency in this
`
`
`3 Although Richardson shares certain portions of its specification with the
`’852 patent, including disclosure of “non-user-configurable machine
`parameters” (see, e.g., Ex. 1104 ¶ 21), Richardson notably lacks the
`’852 patent’s specific disclosures, for example, that the machine parameters
`may comprise “a combination of at least one user-configurable parameter
`and at least one non-user configurable parameter” (Ex. 1101, 3:28–31, 4:19–
`22, 4:54–57) and that the machine parameters “may further include, but are
`not limited to: user account information, . . . and features of the
`software/hardware the user is entitled to use” (id. at 5:51–55)—i.e., specific
`
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`regard with the disclosure of the ’852 patent. Cf. Req. Reh’g 6 n.1; see
`Ex. 1101, 6:53–55 (“The device identifier may incorporate the device’s IP
`address and/or other geo-location code . . . to add another layer of specificity
`to client device’s unique identifier.”).
`Further, whereas Petitioner argued that “Richardson’s disclosed
`machine parameters include . . . information relating to the device’s software
`configuration” and that a person of ordinary skill in the art would have
`recognized that “data relating to the client device’s software configuration
`can contain information regarding features of software that the user of the
`client device is entitled to use” (Pet. 19 (emphasis added) (citing Ex. 1103
`¶ 52; Ex. 1104 ¶ 22)), we find no support in the cited evidence that
`Richardson teaches or suggests that any “information regarding features of
`software that the user of the client device is entitled to use” could be
`determined by performing physical device recognition. Indeed, as we
`explained in our earlier Decision, we discern no information regarding
`“features of software that [a] user is entitled to use” in any of Richardson’s
`machine parameters cited by Petitioner as examples of “information relating
`to the device’s software configuration,” namely, “the platform on which a
`web browser or another application runs,” “unique parameters associated
`with the firmware in use,” and “software or operating system serial number.”
`Dec. 17; cf. Pet. 19. Despite Petitioner’s citation to the testimony of its
`declarant, Mr. James Geier, in support of its argument, the cited testimony in
`
`
`disclosures corresponding to the challenged claim language. Although we
`agree with Petitioner that “a reference need not use the same terminology to
`disclose an element” (Req. Reh’g 6 n.1 (citing In re Gleave, 560 F.3d 1331,
`1334 (Fed. Cir. 2009))), we will not employ the benefit of hindsight from the
`’852 patent’s disclosure to find a teaching or suggestion in Richardson.
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`relevant part merely repeats verbatim Petitioner’s argument (compare
`Ex. 1103 ¶ 52, with Pet. 19) and likewise fails to explain how the cited
`examples from Richardson would have taught or suggested the claim
`limitation. See 37 C.F.R. § 42.65(a) (“Expert testimony that does not
`disclose the underlying facts or data on which the opinion is based is entitled
`to little or no weight.”).
`We, accordingly, we do not find in the paragraphs and figure of
`Richardson cited by Petitioner any disclosure of “execut[ion of] a program
`to perform physical device recognition on [a] client device to determine
`‘machine parameters’” that include “account information” or “features of
`software,” as alleged by Petitioner. Cf. Pet. 18.
`We explained in our Decision that we were not persuaded on the
`record then before us that Demeyer cures the deficiencies of Richardson (see
`Dec. 18), and Petitioner’s present arguments in its Request for Rehearing do
`not persuade us of any error in our earlier conclusion. As we previously
`explained, although Demeyer’s “identifying information” might be deemed
`to represent account information, and Demeyer identifies a technology
`module that might be deemed to identify a software feature that a user of a
`client device is entitled to use, we do not find any teaching or suggestion in
`the combined teachings of Richardson and Demeyer that such identifying
`information or technology module would be present as a machine parameter
`that could be determined by performing “physical device recognition on [a]
`client device,” as recited in claims 1 and 18. Id. Contrary to Petitioner’s
`present contentions (Req. Reh’g 12), our determination in this regard did not
`rest on any misapprehension of Petitioner’s argument relying on Demeyer’s
`identification information also as corresponding to the “unique software
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`Patent 8,239,852 B2
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`identifier” (see Pet. 26). Rather, simply put, mere disclosure of something
`that might be termed “account information” or “features of software” is not
`sufficient to render obvious the recitation in each independent claim of
`“perform[ing] physical device recognition . . . to determine machine
`parameters” including such account information or software features.
`We have considered Petitioner’s remaining arguments presented in the
`Request for Rehearing and likewise conclude that they are unpersuasive of
`error.
`In conclusion, we determine that the Petitioner’s Request for
`Rehearing does not demonstrate that the Board misapprehended or
`overlooked any matters raised in the Petition by declining to institute review
`of the challenged claims.
`
`
`ORDER
`
`Accordingly, it is
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
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`IPR2017-02202
`Patent 8,239,852 B2
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`For PETITIONER:
`
`Xin-Yi Zhou
`Sina S. Aria
`Laura A. Bayne
`O’MELVENY & MYERS LLP
`vzhou@omm.com
`saria@omm.com
`lbayne@omm.com
`
`
`For PATENT OWNER:
`
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`Ryan Loveless
`ETHERIDGE LAW GROUP
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`ryan@etheridgelaw.com
`
`Sean D. Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`
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