UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNIFED PATENTS, INC.
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`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A.
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`Patent Owner
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`IPR2018-00199
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`PATENT 7,092,671
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.107(a)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNIFED PATENTS, INC.
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`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A.
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`Patent Owner
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`IPR2018-00199
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`PATENT 7,092,671
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.107(a)
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`IPR2018-00199
`U.S. Patent 7,092,671
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`Table of Contents
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`
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`I.
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`INTRODUCTION .................................................................................... 1
`
`A.
`
`THE ’671 PATENT ........................................................................ 1
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`B.
`
`C.
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`THE ’671 PROSECUTION HISTORY ......................................... 2
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`RELATED PROCEEDINGS ......................................................... 3
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`D.
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`LEVEL OF ORDINARY SKILL IN THE ART ............................ 3
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`E.
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`CLAIM CONSTRUCTION ........................................................... 4
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`II.
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`PETITIONER DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM .......................................................................... 4
`
`III.
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`THE PETITION IS IMPERMISSIBLY REDUNDANT ......................... 5
`
`A.
`
`B.
`
`C.
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`IPR2018-00199 PRESENTS REDUNDANT
`GROUNDS TO IPR2018-00282 FILED FIVE DAYS
`EARLIER ....................................................................................... 5
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`GROUND III IS REDUNDANT TO GROUND I ......................... 6
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`GROUNDS I AND III PRESENT IMPERMISSIBLE
`CONTINGENT REDUNDANCIES .............................................. 7
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`IV.
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`V.
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`NO PRIMA FACIE OBVIOUSNESS FOR “WHEREIN THE
`HANDHELD COMPUTER SYSTEM IS CONFIGURED TO
`CONTROL THE TELEPHONE VIA THE WIRELESS
`COMMUNICATION SUCH THAT THE TELEPHONE
`DIALS THE SPECIFIC TELEPHONE NUMBER.” ............................... 8
`
`THE SUPREME COURT IS CURRENTLY REVIEWING
`THE CONSTITUTIONALITY OF INTER PARTES
`REVIEW ................................................................................................. 17
`
`VI.
`
`CONCLUSION ....................................................................................... 17
`
`ii
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`IPR2018-00199
`U.S. Patent 7,092,671
`
`I.
`
`INTRODUCTION
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`Uniloc Luxembourg S.A. (the “Uniloc” or “Patent Owner”) submits this
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`Preliminary Response to Petition IPR2018-00199 for Inter Partes Review (“Pet.” or
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`“Petition”) of United States Patent No. 7,092,671 (“the ’671 patent” or “EX1001”)
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`filed by Apple, Inc. (“Petitioner”). The instant Petition is procedurally and
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`substantively defective for at least the reasons set forth herein.
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`
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`A.
`
`THE ’671 PATENT
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`The ’671 patent is titled “Method and System for Wirelessly Autodialing a
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`Telephone Number From a Record Stored On a Personal Information Device.” The
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`ʼ671 patent issued August 15, 2006, from U.S. Patent Application No. 09/727,727
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`filed November 30, 2000 and originally assigned to 3Com Corporation (3Com).
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`The inventors of the ’671 patent observed that while cellphones shared many
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`attributes with personal information devices, at the time of the invention, cellphones
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`typically had substantially fewer applications and users found them much more
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`difficult to use when entering data such as names and phone numbers than personal
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`information devices. EX1001, 1:46-53. And because of those limitations at the time,
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`cellphones were more typically used just for communication rather than personal
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`information management. Id., 1:54-57. The inventors at 3Com came up with an
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`innovative solution which allowed the applications executed on a user’s personal
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`information device to access the user’s telephone and automatically dial numbers
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`stored in the application program. Id. 2:11-22.
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`According to the invention of the ’671 Patent, the telephone is equipped with
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`1
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`IPR2018-00199
`U.S. Patent 7,092,671
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`a wireless port for short-range wireless data transfer. Similarly, the personal
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`information device is equipped with a wireless port for short-range wireless data
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`transfer. Id., 2:41-45. The personal information device establishes a wireless
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`communication with the telephone. Id. The personal information device is
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`configured to control the telephone via the wireless communications such that the
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`telephone dials a telephone number stored on the personal information device. Id.,
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`2:45-48. The telephone number can be dialed in response to the user interacting with
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`application executing on the personal information device. Id., 2:48-54. The
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`application can be a contact management or address management program. The user
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`can interact with the program, select a contact, address, phone number, or the like,
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`through a user interface of the personal information device, and have this number
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`automatically dialed by the telephone. In this manner, the user's personal information
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`device seamlessly interacts with the user's telephone to dial numbers and establish
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`phone calls without requiring the user to access controls of the telephone. Id.
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`
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`B.
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`THE ’671 PROSECUTION HISTORY
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`As recognized by the Petioners, Patent Owner distinguished the prior art by,
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`among other things, arguing the prior art contained the control recited in the claim
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`elements:
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`In response to each of these OAs, the applicant again
`argued that the references did not teach or suggest a
`device/handheld computer system “configured to control” a
`telephone via a wireless communication “such that the
`telephone dials” a telephone number. FH of ’727 application,
`Response of 06/17/2004, 2–4 (EX1011)(emphasis removed and
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`2
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`IPR2018-00199
`U.S. Patent 7,092,671
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`emphasis added); Id. at Response of 05/27/2005, 2–6 (EX1013),
`Response of 02/21/2006, 6–11 (EX1015). In the Response of
`02/21/2006, the applicant further argued that “the mere exchange
`of data” as described in the prior art reference “is distinguishable
`from one wireless handset controlling another as claimed.”
`Response of 02/21/2006, 10 (EX1015). The applicant noted that
`“in blocks 805 and 806 of Figure 8 in the present application, the
`phone number to be dialed is transferred before the receiving
`wireless telephone is controlled or instructed to dial the
`telephone number,” and “[a]ccordingly, [c]laim 19 recites the
`data exchange and control elements as separate limitations.”
`Response of 02/21/2006, 10 (EX1015).
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`
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`Pet. at 8. Despite such a recognition, Petitioner nonetheless redundantly points to the
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`very same types of references which also lack the claimed control.
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`C.
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`RELATED PROCEEDINGS
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`The following proceedings are currently pending cases concerning U.S. Pat.
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`No. 7,092,671 (EX1001).
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`Case Caption
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`Uniloc USA, Inc.
`et al. v. Apple Inc.
`Petition for Inter
`Partes Review by
`Apple Inc.
`Petition for Inter
`Partes Review by
`Apple Inc.
`
`
`Case
`Number
`2:17-cv-
`00457
`IPR2018-
`00282
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`IPR2018-
`00199
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`District
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` Case Filed
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` Status
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`CAND May 26, 2017
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`Pending
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`PTAB
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`December 6,
`2017
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`Pending
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`PTAB
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`December 11,
`2017
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`Pending
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`D.
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`LEVEL OF ORDINARY SKILL IN THE ART
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`Patent Owner does not offer a competing definition for POSITA at this
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`preliminary stage, but reserves the right to do so in the event that trial is instituted.
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`3
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`IPR2018-00199
`U.S. Patent 7,092,671
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`E.
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`CLAIM CONSTRUCTION
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`Patent Owner submits that the Board need not construe any claim term in a
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`particular manner in order to arrive at the conclusion that the Petition is
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`substantively deficient. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
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`(Fed. Cir. 2011) (“need only be construed to the extent necessary to resolve the
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`controversy”).
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`II.
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`PETITIONER DOES NOT PROVE A REASONABLE LIKELIHOOD
`OF UNPATENTABILITY FOR ANY CHALLENGED CLAIM
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`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
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`§42.108(c) (“review shall not be instituted for a ground of unpatentability unless
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`. . . there is a reasonable likelihood that at least one of the claims challenged . . . is
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`unpatentable”). The Petition should be denied as failing to meet this burden.
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`The Petition raises the following obviousness challenges:
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`Ground
`1
`2
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`Claims
`1-6 and 9-14
`7, 8, 15, and 16
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`3
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`4
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`1-7 and 9-15
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`8 and 16
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`Reference(s)
`Yun,1 Langlois, 2 and Dykes3
`Yun, Langlois, and Dykes in further view of
`Husemann4
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`Harris,5 Langlois, and Dykes
`Harris, Langlois, and Dykes in further view of
`Husemann
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`
`
` 1
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` EX1002, U.S. Patent 6,084,949 (“Yun”).
`2 EX1003, U.K. Patent Application Publication No. GB 2318703 (“Langlois”).
`3 EX1004, U.S. Patent 5,428,671(“Dykes”).
`4 EX1006, U.S. Patent 7,577,910 (“Husemann”).
`5 EX1005, U.S. Patent 6,738,643 (“Harris”).
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`4
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`IPR2018-00199
`U.S. Patent 7,092,671
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`III. THE PETITION IS IMPERMISSIBLY REDUNDANT
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`The Board has repeatedly held that multiple grounds for unpatentability for
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`the same claim will not be considered unless the petition itself explains the relative
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`strengths and weaknesses of each ground. See Liberty Mut. Ins. Co. v. Progressive
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`Cas. Ins. Co., No. CBM2012-00003, Paper 7 (P.T.A.B. Oct. 25, 2012). The
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`petitioner has made no such showing of relative strengths and weakness vis-à-vis
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`the prior petition filed just five days earlier with the same principal references or the
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`redundant grounds in the petition itself.
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`A.
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`IPR2018-00199 PRESENTS REDUNDANT GROUNDS TO
`IPR2018-00282 FILED FIVE DAYS EARLIER
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`This Petition is redundant to a prior petition. A mere five-days prior to the
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`filing of this Petition, Petitioner’s member – Apple – filed IPR2018-282 asserting
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`the same two principal references – Yun and Harris. And, the prior art was used in
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`the same way – first, an allegation that Yun disclosed all the claim features of the
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`independent claim followed by a redundant allegation that Harris also disclosed the
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`claim features of the independent claims. The petition’s only explanation is an
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`allegation that this new petition “uses different prior art combinations that addresses
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`the claims in a different way.” Petition at 2. However, to the contrary, both petitions
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`allege that Yun or alternatively, Harris alone disclose all the claim features of the
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`independent claims. Such repeated arguments are de facto redundancies.
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`Given the similarities between the two petitions with the same references and
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`the same art given the shortness of time (five days) between the dates when each
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`petition was first made publicly available, and given the fact that the same expert
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`5
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`IPR2018-00199
`U.S. Patent 7,092,671
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`was used to review the references in both these Petitions, Patent Owner requests
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`permission to seek discovery of the communications between the two petitioners –
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`Apple and Unified Patents.
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`B. GROUND III IS REDUNDANT TO GROUND I
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`The Petition provides no showing of relative strengths and weakness when
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`comparing Grounds I and III, both of which challenge the independent claims in the
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`‘671 Patent. In particular, the Petition presents Ground I, which challenges all
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`independent claims based on Yun and two secondary references: Langlois, and
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`Dykes. Then, in Ground III, the Petitioner challenges the same independent claims
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`based on Harris and the same two secondary references: Langlois, and Dykes.
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`The Petition contends that two grounds against the independent claims were
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`provided because of the possibility that Harris might not qualify as prior art.6
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`However, controlling authority does not deem such a reasonsufficient cause to to
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`burden both the Board and the Patent Owner with an inter partes trial.. Controlling
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`authority requires a showing of the relative strengths and weaknesses of the
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`references be provided, otherwise the two grounds will be considered redundant.
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`No such showing was provided.
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`The seminal holding in Liberty Mut. explained that that “multiple grounds,
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`which are presented in a redundant manner by a petitioner who makes no meaningful
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` 6
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` Patent Owner acknowledges that one or more of the references may not qualify as
`prior art. However, given the other deficiencies present in the petition, this issue
`need not be addressed at this time.
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`6
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`IPR2018-00199
`U.S. Patent 7,092,671
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`distinction between them, are contrary to the regulatory and statutory mandates, and
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`therefore are not all entitled to consideration.” See Liberty Mutual Insurance Co. v.
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`Progressive Casualty Insurance Co., CBM2012-00003, 2012 WL 9494791, at *2
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`(Paper 7 Order) (PTAB October 25, 2012). The Board further confirmed in Liberty
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`Mut. (and has since reiterated in legions of cases citing Liberty Mut.) that multiple
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`grounds for unpatentability for the same claim will not be considered unless the
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`petition itself explains the relative strengths and weaknesses of each ground. Id.
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`Here, Petitioner makes no attempt to differentiate the redundant challenges in terms
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`of the relative strengths and weaknesses of Grounds I and III, presumably to avoid
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`having to concede any weakness in the Petition.
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`C. GROUNDS I AND III PRESENT IMPERMISSIBLE
`CONTINGENT REDUNDANCIES
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`In presenting arguments concerning alleged disclosure of claim features, the
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`Board has required petitioners to take a position. More particularly, a petitioner
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`cannot argue that a particular claim feature is disclosed by a reference and then
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`provide a secondary reference as a redundant back-up. See Eizo Corp. v. Barco N.V,
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`IPR2014-00358, Paper 11 (P.T.A.B. July 23, 2014)(finding insufficient the
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`petitioner’s “conclusory assertion” that “[t]o the extent [the first prior art reference]
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`may not explicitly teach” the limitation, the second prior art reference “explicitly
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`teaches this limitation”; further explaining that “such an assertion fails to resolve
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`the exact differences sought to be derived from” the second prior art reference.).
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`Here, the Petition attempts to take such a prohibited approach. First, in
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`7
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`IPR2018-00199
`U.S. Patent 7,092,671
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`Ground I the Petition alleges that the principle Yun reference discloses “wherein the
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`handheld computer system is configured to control the telephone via the wireless
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`communication such that the telephone dials the specific telephone number.”
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`Petition at 20. This argument is followed by an allegation that if Patent Owner
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`alleges this claim feature is not disclosed, such a feature would be obvious citing
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`Dykes. Id. at 2. With regard to the same claim feature in Ground III, the identical
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`argument and back-up argument are made with respect Harris and Dyke. See
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`Petition at 49-50.
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`Following the Board’s reasoning in Eizo Corp. v. Barco N.V.,7 the Board
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`should likewise reject this Petitioner’s attempt to hedge bets and unnecessarily
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`multiply the work of both the Board and the Patent Owner.
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`IV. NO PRIMA FACIE OBVIOUSNESS FOR “WHEREIN THE
`HANDHELD COMPUTER SYSTEM IS CONFIGURED TO
`CONTROL THE TELEPHONE VIA THE WIRELESS
`COMMUNICATION SUCH THAT THE TELEPHONE DIALS THE
`SPECIFIC TELEPHONE NUMBER.”
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`The Petition fails to establish prima facie obviousness of at least the following
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`claim features: “wherein the handheld computer system is configured to control the
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`telephone via the wireless communication such that the telephone dials the specific
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`telephone number” (Claim 1) and “controlling the telephone using the handheld
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`computer system to cause the telephone to dial the specific telephone number”
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`
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` IPR2014-00358, Paper 11 (P.T.A.B. July 23, 2014).
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` 7
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`8
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`IPR2018-00199
`U.S. Patent 7,092,671
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`where there is a “wireless communication link” between the two (Claim 9).
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`1.
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`Yun is Deficient
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`In pertinent part to Petitioner’s allegation, Yun discloses the transmission of
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`a telephone number from a “pocketbook” shown in FIGURE 2 to a “telephone
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`system” shown in FIGURE 1.
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`While the Petitioner alleges that “pocketbook” of FIGURE 2 is the claimed
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`“handheld computer system,” Yun fails to disclose that such a pocketbook “is
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`9
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`IPR2018-00199
`U.S. Patent 7,092,671
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`configured to control the telephone via the wireless communication such that the
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`telephone dials the specific telephone number” as in Claim 1. To the contrary, after
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`the pocketbook transmits the telephone number, the pocketbook has no further role.
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`Rather, the handling of the received telephone number and dialing is controlled by
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`the “telephone system” of FIGURE 2. In particular, the telephone system unit has
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`its own features for controlling the call, including the control unit 110:
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`“At step 314, when it is determined that the infrared ray signal received
`contains a telephone number of an interested person for an automatic
`dialing function, the control unit 110 of the telephone system
`proceeds to analyze the telephone number contained in the received
`infrared ray signal at step 316. Then, the control unit 110 proceeds to
`control the dial unit 116 to automatically dial the telephone number
`of the interested person after analyzing the telephone number contained
`in the infrared ray signal”
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`EX1002, 5:8-15 (emphasis added). Thus, Yun makes clear that control of the dialing
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`is done from the “telephone system of FIGURE 1” – not the pocketbook. While the
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`pocketbook of FIGURE 2 does have its own control unit 130, there is no indication
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`that such a control unit 130 is involved in any way with controlling the telephone
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`via the wireless communication such that the telephone dials the specific telephone
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`number.
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`
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`Because Yun undeniably doesn’t contain the same level of detail as the claims
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`and, also, because the Petition identifies nothing in Yun as specifically satisfying
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`this limitation (other than a general allegation it is disclosed or rendered obvious),
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`the Petition fails to satisfy the all-elements-rule. See, e.g., Verdegaal Bros. v. Union
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`Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987).
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`10
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`IPR2018-00199
`U.S. Patent 7,092,671
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`
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`Petitioner incorporated by reference its argument concerning Yun and Claim
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`9’s feature of “controlling the telephone using the handheld computer system to
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`cause the telephone to dial the specific telephone number.” For the same reasons
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`provided above, Petitioner’s argument concerning Yun and Claim 9 are deficient.
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`2. Harris is Deficient
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`In Ground IV, for Claim 1’s feature of “wherein the handheld computer
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`system is configured to control the telephone via the wireless communication such
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`that the telephone dials the specific telephone number,” Petitioner redundantly
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`points to Harris. However, Harris’s two-and-a-half column specification has even
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`less disclosure than Yun. Accordingly, like Yun, Harris also fails to disclose this
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`claim feature.
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`Harris generally contains a discussion of devices communicating with one
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`another, principally for syncing information. See Title – “Phone Sync.” As with
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`Yun, the Petition lacks detail on the operation of the system described by Harris and
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`glosses over that operation in order to merely make the conclusory assertion that
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`“the PDA causes the automatic dialing.” Pet. 49-50. The Petition provides no
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`substantive analysis, and Harris is equally lacking. Harris discuses Bluetooth
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`wireless communication only insofar as general background of its characteristics.
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`See Ex 1005, 2:10-22. Harris is only as specific as to indicate that “the bluetooth
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`information can be received by phone…” Id. (emphasis added). And, as quoted by
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`the Petition, Harris merely suggests that “one of the communication techniques
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`disclosed above is used to automatically cause the cell phone to dial the specified
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`contact number.” Id. 3:32-34. There is no disclosure in Harris that in
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`IPR2018-00199
`U.S. Patent 7,092,671
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`“automatically” dialing, it is the “PDA” that is controlling the cell phone. In fact, all
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`that is disclosed is that the cell phone receives “bluetooth information”, there is no
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`disclosure of instructions or commands. Rather, just like Yun, the cell phone itself
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`is causing the number received in the “bluetooth information” to be dialed. This is
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`evidenced by the only reference to “control” in Harris’ entire specification – is a
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`reference to control happening at the phone (“The handset 305 can include a user
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`interface 302 which can include controls for all of the different kinds of functions
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`of the phone. This can allow the phone to dial, to pick up, and all other function of
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`the phone.”) Ex. 1005 at 2:31-34.
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`Thus, Harris does not disclose “wherein the handheld computer system is
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`configured to control the telephone via the wireless communication such that the
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`telephone dials the specific telephone number”, as required by the independent
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`claims.8 And because all of the other claims depend from either Claim 1 or 9,
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`“Challenge 3” fails as to all of the challenged claims for the reasons cited above.
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`Petitioner incorporated by reference its argument concerning Harris and
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`Claim 9’s feature of “controlling the telephone using the handheld computer system
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`to cause the telephone to dial the specific telephone number.” For the reasons
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`provided above, Petitioner’s argument concerning Harris and Claim 9 are deficient.
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` 8
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` As discussed above, because the Petition exclusively refers back to its analysis of
`Claim 1 for the corresponding (but different) limitation of Claim 9, the Petition fails
`as to both Claim 1 and Claim 9, and Patent Owner does not individually analyze the
`language of Claim 9 at this time.
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`12
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`IPR2018-00199
`U.S. Patent 7,092,671
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`3.
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`Dykes is Deficient
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`Without acknowledging Yun’s or Harris’ deficiencies concerning the Claim
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`1 feature of “wherein the handheld computer system is configured to control the
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`telephone via the wireless communication such that the telephone dials the specific
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`telephone number,” Petitioner points to a secondary reference: Dykes. However,
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`Dykes does not cure the deficiencies of Yun (Ground I) or Harris (Ground II).
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`Contrary to any allegation by petitioner that AT commands could easily be
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`used in other settings, Dykes expressly recognizes that the Hayes Microcomputer
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`Products AT commands “were designed with land line connection in mind, and
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`certain aspects of cellular telephone systems do not lend themselves towards
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`activation or use through the AT commands.” EX1004, 2:64-67. Dykes further
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`explains that “the standardized AT command set is not always a perfect fit with
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`cellular telephones, and laptop software that uses the AT command set will not
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`necessarily receiv expected results from attempting certain commands.”
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`FIGURE 1B of Dykes (cited by Petitioner) shows a modem 12 connected to
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`a cellular telephone via an RJ45 jack 16 by an interface cable. FIGURE 1A of Dykes
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`(not cited by Petitioner) shows the same modem 12 capable of being connected by
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`an RJ11 jack 12 to a telephone wall outlet 18.
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`13
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`IPR2018-00199
`U.S. Patent 7,092,671
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` Dykes does not does disclose a wireless communication between the modem 12 of
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`the laptop and the cellular phone 22. To the contrary, for the wired RJ45 connection
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`(shown as cable 20) between the modem 12 and cellular phone 22, Dykes discloses
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`that there are difficulties concerning the issuing of AT commands to a cellular phone
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`22. Thus, Dykes teaches away from the wireless communication in the claims.
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`
`
`For Ground I, Petitioner DID NOT incorporate by reference its argument
`
`concerning Dykes and Claim 9’s feature of “controlling the telephone using the
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`handheld computer system to cause the telephone to dial the specific telephone
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`number” where there is a “wireless communication” between the two. Rather,
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`Petitioner identified its arguments concerning Langlois, which were not directed to
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`control. To the extent this was considered a typo, Petitioner’s argument concerning
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`Dykes as applied to Claim 9 in Ground I are deficient.
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`For Ground III, Petitioner incorporate by reference its argument concerning
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`Dyke and Claim 9’s feature of “controlling the telephone using the handheld
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`computer system to cause the telephone to dial the specific telephone number”
`
`where there is a “wireless communication” between the two. Petitioner’s argument
`
`concerning Dyke as applied to Claim 9 in Ground III are deficient.
`
`
`
`4.
`
`Petitioner’s Alleged Motivation to Combine Dykes with Yun or
`Harris is Deficient
`
`In addition to Dykes teaching away of the claimed feature, Petitioner’s alleged
`
`motivation to combine Dykes with Yun or Harris is deficient. Petitioner alleges that
`
`both are directed to systems with telephones and that one would simply substitute
`
`features from Dykes with Yun or Harris. Pet. at 23 and 52 (arguing routine
`
`substitution). However, Petitioner does not make clear which features are being
`
`borrowed from each respective reference – leaving a reader to guess what the actual
`
`combination would look like. As held by the Federal Circuit, to render an invention
`
`obvious, an artisan would have to immediately envision the claimed combination.
`
`See Microsoft Corp v. Biscotti, Inc. Nos. 2016-2080, 2016-2082, 2016-2083, (Fed.
`
`Cir. Dec. 28, 2017) (Before Newman, O’Malley, and Reyna, J.) (Opinion for the
`
`court, O’Malley, J.) (Dissenting opinion, Newman, J.).9 Here, even after reading the
`
`Petition, an artisan still does not know what the alleged combination looks like.
`
`Yun uses infrared to transmit a phone number to a phone system and lacks the
`
`claimed control. Harris is almost identical to Yun, but with less disclosure.
`
`
`
` 9
`
` http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-
`2080.Opinion.12-27-2017.1.PDF
`
`15
`
`
`
`IPR2018-00199
`U.S. Patent 7,092,671
`
`However, Harris uses bluetooth as opposed to infrared. In a completely different
`
`context, Dykes uses an RJ45 cable to communicate with a cell phone through a
`
`modem, but notes difficulties, in general, that exist in the art with issuing AT
`
`commands to a cell phone. Petitioner does not explain how Dykes’ alleged
`
`commands over a wire between a modem and a cellular telephone could possibly be
`
`expected to work in Yun’s or Harris’ environment, which contain no modems and
`
`use infrared/bluetooth as opposed to wire. Further exacerbating this deficiency are
`
`the concerns about wired environments stated in Dykes.Petitioner also says nothing
`
`about how Dykes’ wired implementation (with its noted difficulties) can now
`
`suddenly work where
`
`the medium
`
`is now undeniably more complex
`
`infrared/bluetooth. Petitioner also does not explain resolution of conflicts of the
`
`control in Yun/Harris (at the telephone system) to potentially something other than
`
`the telephone system as alleged in Dykes or whether the modem is kept or discarded.
`
`And, if the modem is discarded, how does Dykes’ communication work in Yun or
`
`Harris.
`
`Rather than immediately envisioning the claimed invention, a skilled artisan
`
`is left questioning how one would combine Yun/Harris and Dykes – if at all.
`
`Accordingly, there is no motivation to combine.
`
`5.
`
`Langlois is Deficient
`
`In Ground I, for Claim 9’s feature of “controlling the telephone using the
`
`handheld computer system to cause the telephone to dial the specific telephone
`
`number,” Petitioner incorporates by refence an argument concerning Langlois;
`
`however, no such argument was made. To the extent this was considered a typo and
`
`16
`
`
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`IPR2018-00199
`U.S. Patent 7,092,671
`
`intended to refer to Dykes, Petitioner’s argument concerning Dykes as applied to
`
`Claim 9 in Ground I are deficient for the same reasons discussed above.
`
`
`V. THE SUPREME COURT IS CURRENTLY REVIEWING THE
`CONSTITUTIONALITY OF INTER PARTES REVIEW
`
`The Supreme Court is currently considering the constitutionality of inter
`
`partes review proceedings. Oil States Energy Servs., LLC v. Greene’s Energy Grp.,
`
`LLC, 137 S. Ct. 2239 (2017). The constitutional challenge is primarily based on the
`
`argument that adversarial challenges to an issued patent—like inter partes
`
`reviews—are “Suits at common law” for which the Seventh Amendment guarantees
`
`a jury trial. U.S. Const. amend. VII; Markman v. Westview Instruments, Inc., 517
`
`U.S. 370, 377 (1996). Further, because patents are private property rights, disputes
`
`concerning their validity must be litigated in an Article III court, not before an
`
`executive branch agency. McCormick Harvesting Mach. Co. v. C. Aultman & Co.,
`
`169 U.S. 606, 609 (1898). Out of an abundance of caution, Patent Owner hereby
`
`adopts this constitutional challenge now to preserve the issue pending the Supreme
`
`Court’s decision.
`VI. CONCLUSION
`
`For at least the reasons set forth above, Uniloc respectfully requests that the
`
`Board deny all challenges presented in the instant Petition.10
`
`
`
`
`10 Patent Owner does not concede, and specifically denies, that there is any
`legitimacy to any arguments in the instant Petition that are not specifically addressed
`herein.
`
`17
`
`
`
`Date: March 19, 2018
`
`
`
`
`
`
`
`Respectfully submitted,
`
`IPR2018-00199
`U.S. Patent 7,092,671
`
`By: /s/ Ryan S. Loveless
`
`Ryan S. Loveless; Reg. No. 51,970
`
`Attorney for Patent Owner
`
`18
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`
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`IPR2018-00199
`U.S. Patent 7,092,671
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`CERTIFICATE OF COMPLIANCE
`
`
`
`Pursuant to 37 C.F.R. § 42.24(d), we certify that this Preliminary Response
`
`to Petition complies with the type-volume limitation of 37 C.F.R. § 42.24(b)(1)
`
`because it contains fewer than the limit of 14,000 words, as determined by the word-
`
`processing program used to prepare the brief, excluding the parts of the brief
`
`exempted by 37 C.F.R. § 42.24(a)(1).
`
`Date: March 19, 2018
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`By: /s/ Ryan S. Loveless
`
`Ryan S. Loveless; Reg. No. 51,970
`
`Attorney for Patent Owner
`
`i
`
`
`
`IPR2018-00199
`U.S. Patent 7,092,671
`
`CERTIFICATE OF SERVICE
`
`
`
`Pursuant to 37 C.F.R. §§ 42.6(e), we certify that we served an electronic copy
`
`of the foregoing PATENT OWNER’S PRELIMINARY RESPONSE PURSUANT
`
`TO 37 C.F.R. § 42.107(a) along with any accompanying exhibits via the Patent
`
`Review Processing System (PRPS) to Petitioner’s counsel at the following
`
`addresses identified in the Petition’s consent to electronic service:
`
`
`
`
`
`
`Lead Counsel
`
`David Cavanaugh
`
`david.cavanaugh@wilmerhale.com
`
`First Back Up
`Counsel
`
`Roshan
`Mansinghani
`
`roshan@unifiedpatents.com
`
`Back Up Counsel
`
`Jonathan Stroud
`
`jonathan@unifiedpatents.com
`
`Back Up Counsel
`
`Michael Van
`Handel
`
`michael.vanhandel@wilmerhale.com
`
`Back Up Counsel
`
`Ellyar Barazesh
`
`ellyar.barazesh@wilmerhale.com
`
`Date: March 19, 2018
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /s/ Ryan S. Loveless
`
`Ryan S. Loveless; Reg. No. 51,970
`
`Attorney for Patent Owner
`
`
`
`ii
`
`
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