UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, 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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`IPR2018-00282
`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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`APPLE, 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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`IPR2018-00282
`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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`IPR2018-00282
`U.S. Patent 7,092,671
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`Table of Contents
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`I.
`II.
`III.
`IV.
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`V.
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`VI.
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`C.
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`INTRODUCTION .................................................................................... 1
`THE ’671 PATENT .................................................................................. 1
`LEVEL OF ORDINARY SKILL IN THE ART ...................................... 2
`PETITIONER DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM .......................................................................... 2
`A.
`Claim Construction ......................................................................... 3
`B.
`The Redundant Challenge in Ground 3 is Procedurally
`and Substantively deficient ............................................................. 4
`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.” ............................................. 5
`1.
`[Challenge 1 and 2]: Yun’s “electronic
`pocketbook” Does Not “control the telephone via
`the wireless communication such that the
`telephone dials the specific telephone number” ................... 6
`[Challenge 3]: Harris’ “PDA” Does Not “control
`the telephone via the wireless communication
`such that the telephone dials the specific
`telephone number” ............................................................... 9
`THE SUPREME COURT IS CURRENTLY REVIEWING
`THE CONSTITUTIONALITY OF INTER PARTES
`REVIEW ................................................................................................. 10
`CONCLUSION ....................................................................................... 11
`
`2.
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`ii
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`IPR2018-00282
`U.S. Patent 7,092,671
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`I.
`
`INTRODUCTION
`Uniloc Luxembourg S.A. (the “Uniloc” or “Patent Owner”) submits this
`Preliminary Response to Petition IPR2018-00282 for Inter Partes Review (“Pet.” or
`“Petition”) of United States Patent No. 7,092,671 (“the ’671 patent” or “EX1001”)
`filed by Apple, Inc. (“Petitioner”). The instant Petition is procedurally and
`substantively defective for at least the reasons set forth herein.
`
`II. THE ’671 PATENT
`The ’671 patent is titled “Method and System for Wirelessly Autodialing a
`Telephone Number From a Record Stored On a Personal Information Device.” The
`ʼ671 patent issued August 15, 2006, from U.S. Patent Application No. 09/727,727
`filed November 30, 2000 and originally assigned 3Com Corporation (3Com).
`The inventors of the ’671 patent observed that while cellphones shared many
`attributes with personal information devices, at the time of the invention, cellphones
`typically had substantially fewer applications and users found them much more
`difficult to use when entering data such as names and phone numbers than personal
`information devices. EX1001, 1:46-53. And because of those limitations at the time,
`cellphones were more typically used just for communication rather than personal
`information management. Id., 1:54-57. The inventors at 3Com came up with an
`innovative solution which allowed the applications executed on a user’s personal
`information device to access the user’s telephone and automatically dial numbers
`stored in the application program. Id. 2:11-22.
`According to the invention of the ’671 Patent, the telephone is equipped with
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`1
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`IPR2018-00282
`U.S. Patent 7,092,671
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`a wireless port for short-range wireless data transfer. Similarly, the personal
`information device is equipped with a wireless port for short-range wireless data
`transfer. Id., 2:41-45. The personal information device establishes a wireless
`communication with the telephone. Id. The personal information device is
`configured to control the telephone via the wireless communications such that the
`telephone dials a telephone number stored on the personal information device. Id.,
`2:45-48. The telephone number can be dialed in response to the user interacting with
`application executing on the personal information device. Id., 2:48-54. The
`application can be a contact management or address management program. The user
`can interact with the program, select a contact, address, phone number, or the like,
`through a user interface of the personal information device, and have this number
`automatically dialed by the telephone. In this manner, the user's personal information
`device seamlessly interacts with the user's telephone to dial numbers and establish
`phone calls without requiring the user to access controls of the telephone. Id.
`
`III. LEVEL OF ORDINARY SKILL IN THE ART
`Given that the Petition does not offer a definition of a person of ordinary skill
`in the art (“POSITA”), Patent Owner does not offer a competing definition for
`POSITA at this preliminary stage, but reserves the right to do so in the event that
`trial is instituted.
`
`IV. PETITIONER DOES NOT PROVE A REASONABLE LIKELIHOOD
`OF UNPATENTABILITY FOR ANY CHALLENGED CLAIM
`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
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`2
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`IPR2018-00282
`U.S. Patent 7,092,671
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`§42.108(c) (“review shall not be instituted for a ground of unpatentability unless
`. . . there is a reasonable likelihood that at least one of the claims challenged . . . is
`unpatentable”). The Petition should be denied as failing to meet this burden.
`The Petition raises the following obviousness challenges:
`
`Ground
`1
`2
`3
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`Reference(s)
`Yun1 and Kikinis2
`Yun and Kikinis and in further view of Inoue3
`Harris4 and Kikinis
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`Claims
`1-6 and 9-14
`7 and 15
`1-7 and 9-15
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`A. Claim Construction
`Patent Owner submits that the Board need not construe any claim term in a
`particular manner in order to arrive at the conclusion that the Petition is
`substantively deficient. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
`(Fed. Cir. 2011) (“need only be construed to the extent necessary to resolve the
`controversy”).
`While the Petition purports to construe the term “wireless port,” as will be
`described below, the Petition fails to show any of the challenged claims are
`unpatentable regardless of Petitioner’s proposed construction. Therefore, at this
`preliminary stage, Patent Owner does not provide a construction for the term
`“wireless port,” but reserves the right to do so in the event trial is instituted.
`
`
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` 1
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` EX1005, U.S. Patent 6,084,949 (“Yun”).
`2 EX1006, U.S. Patent 5,790,644 (“Kikinis”).
`3 EX1007, U.S. Patent 7,080,154 (“Inoue”).
`4 EX1012, U.S. Patent 6,738,643 (“Harris”).
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`3
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`B.
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`IPR2018-00282
`U.S. Patent 7,092,671
`The Redundant Challenge in Ground 3 is Procedurally and
`Substantively deficient
`The Petition presents a facially-redundant challenge against all challenged
`claims based on Harris and Kikinis. As a procedural matter, this redundant challenge
`should be denied because Petitioner makes no attempt to articulate the relative
`strengths and weaknesses of Grounds 1 and 2 with respect to Ground 3, so as to
`justify the redundancy in raising multiple redundant challenges.
`The Board often cites the seminal holding in Liberty Mut. that “multiple
`grounds, which are presented in a redundant manner by a petitioner who makes no
`meaningful distinction between them, are contrary to the regulatory and statutory
`mandates, and therefore are not all entitled to consideration.” See Liberty Mutual
`Insurance Co. v. Progressive Casualty Insurance Co., CBM2012-00003, 2012 WL
`9494791, at *2 (Paper 7 Order) (PTAB October 25, 2012). The Board further
`confirmed in Liberty Mut. (and has since reiterated in legions of cases citing Liberty
`Mut.) that multiple grounds for unpatentability for the same claim will not be
`considered unless the petition itself explains the relative strengths and weaknesses
`of each ground. Id. Here, Petitioner makes no attempt to differentiate the redundant
`challenges in terms of the relative strengths and weaknesses of Grounds 1, 2, and 3,
`presumably to avoid having to concede any weakness in the Petition. Instead, the
`Petition merely provides excuses for its redundancy. See Pet. 9-10. Petitioner
`admits that “Challenges #1 and #2 (based on Yun as the primary reference)
`challenge the same claims as Challenge #3 (based on Harris as the primary
`reference)” (Pet. 9) (emphasis added), and further admits that “Yun” and “Harris”
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`4
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`IPR2018-00282
`U.S. Patent 7,092,671
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`are both directed to the exact same limitation (the “Bluetooth” limitations) (Pet. 9-
`10), however “Bluetooth” is only a limitation in two dependent claims, Claims 7
`and 15, and yet Petitioner, without explanation, proffers it’s “Challenge 3” against
`all of the same challenged claims as in “Challenge 1” and “Challenge 2”.
`Petitioner’s excuse here does not address the redundancy in claims 1-6, and 9-14.
`Finally, Petitioner admits that the only difference between the challenges (1, 2 and
`3) is that “Harris” was “filed only a month before the date of the ’671 Patent.” Id.
`Petitioner makes no attempt to differentiate the redundant challenges in terms
`of the relative strengths and weaknesses of admittedly redundant Grounds 1, 2, and
`3. Such circumstances invoke the Board’s discretion to deny the Petition as
`procedurally deficient.
`Further, even if the Board were to consider the substantive merits of Ground
`3, notwithstanding these multiple procedural defects, Ground 3 should nevertheless
`be denied as failing to present a prima facie case of obviousness for the reasons
`discussed below.
`
`C. 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.”
`The Petition fails to establish prima facie obviousness for the limitation
`“wherein the handheld computer system is configured to control the telephone via
`the wireless communication such that the telephone dials the specific telephone
`number”. The Petition, in “Challenge 1”, exclusively relies on Yun for this
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`5
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`IPR2018-00282
`U.S. Patent 7,092,671
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`limitation, and in “Challenge 3”, exclusively relies on Harris.
`While the exact claim language quoted above only shows up in independent
`Claim 1, and independent Claim 9 has completely different claim language, the
`Petition, for the corresponding limitation in Claim 9, in both “Challenge 1” and
`“Challenge 3”, merely refers back to its analysis for this limitation in Claim 1. See
`Pet. 41 (“[9.4] is substantively identical to [1.5]. Accordingly, for at least the reasons
`discussed in association with [1.5], Yun discloses “controlling the telephone using
`the handheld computer system to cause the telephone to dial the specific telephone
`number,” as recited in [9.4].”); see also Pet. 75 (“[9.4] is substantively identical to
`[1.5]. Accordingly, for at least the reasons discussed in association with [1.5], Harris
`discloses “controlling the telephone using the handheld computer system to cause
`the telephone to dial the specific telephone number,” as recited in [9.4].”)
`Therefore, because the Petition fails to show Yun or Harris discloses the
`required limitation of Claim 1, and because the Petition merely and exclusively
`relies on its analysis of the limitation in Claim 1 for the corresponding (but different)
`limitation in 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.
`
`
`[Challenge 1 and 2]: Yun’s “electronic pocketbook” Does
`Not “control the telephone via the wireless communication
`such that the telephone dials the specific telephone number”
`The Petition alleges that “Yun’s computerized electronic pocketbook
`includes a control unit that works in conjunction with the control unit and dial unit
`on the telephone so that the telephone number transferred via infrared signaling
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`1.
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`6
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`IPR2018-00282
`U.S. Patent 7,092,671
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`between the two is automatically dialed.” Pet. 27 (emphasis added). And then
`through inference and conjecture, but without evidence or explanation, Petitioner
`alleges that this claim limitation is met. The Petition’s own quotes of Yun shows that
`Petitioner is wrong. Furthermore, even if Petitioner’s conclusory allegation was true
`(which it is not), that still falls short of what the claim language expressly requires.
`The Petition admits that Yun’s “telephone system includes a control unit 110
`[and] a dial unit 116”. Pet. 27 (emphasis in original). And the Petition further admits
`that “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.” EX1005, 4:20-23. (emphasis in
`original). But the Petition omits the beginning half of that sentence, the full passage
`is reproduced below:
`“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”
`EX1005, 5:8-15 (emphasis added).
`The full passage above shows that Yun’s “electronic pocketbook” only
`transmits the phone number, from there the “electronic pocketbook” has no further
`role, it is Yun’s “telephone system” that analyzes the infrared ray signal, and the
`“telephone system’s” “control unit 110” that controls the “dial unit 116” to
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`IPR2018-00282
`U.S. Patent 7,092,671
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`automatically dial the number. Therefore, there is no doubt that it is the “telephone
`system” itself, with its control unit 110 and dial unit 116, that actually dials the
`telephone number.
`The Petition expressly concedes that Yun fails to disclose the limitation,
`however, the Petition attempts to argue that “Yun’s electronic pocketbook with a
`control unit, work[s] in conjunction with the telephone’s control unit and dial unit,
`to automatically dial the telephone number transferred via infrared signal”. Id. at 28
`(emphasis added). However, that argument is unavailing, the plain claim language
`requires that “the handheld computer system is configured to control the
`telephone via the wireless communication such that the telephone dials the specific
`telephone number”.
`Therefore, Yun does not disclose “wherein the handheld computer system is
`configured to control the telephone via the wireless communication such that the
`telephone dials the specific telephone number”, as required by the independent
`claims.5 And because all of the other claims depend from either Claim 1 or 9,
`“Challenge 1” and “Challenge 2” fails as to all of the challenged claims for the same
`reasons above.
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` 5
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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.
`
`8
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`
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`2.
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`IPR2018-00282
`U.S. Patent 7,092,671
`[Challenge 3]: Harris’ “PDA” Does Not “control the
`telephone via the wireless communication such that the
`telephone dials the specific telephone number”
`First, as discussed above in section IV.B, “Challenge 3” is procedurally
`deficient and should be denied because Petitioner makes no attempt to articulate the
`relative strengths and weaknesses of Grounds 1 and 2 with respect to Ground 3, so
`as to justify the redundancy in raising multiple redundant challenges. See Liberty,
`CBM2012-00003, 2012 WL 9494791, at *2 (Paper 7 Order). For this reason alone,
`“Challenged 3” should be denied.
`Second, even if the Board were to consider the substantive merits of
`“Challenge 3”, notwithstanding these multiple procedural defects, “Challenge 3”
`should nevertheless be denied as failing to present a prima facie case of obviousness
`because neither Harris nor the Petition shows that Harris’ PDA “control the
`telephone via the wireless communication such that the telephone dials the specific
`telephone number”, as required by the claim language.
`As with Yun, the Petition lacks detail on the operation of the system described
`by Harris and glosses over that operation in order to merely make the conclusory
`assertion that “the PDA can automatically dial the telephone.” Pet. 62-63. The
`Petition provides no substantive analysis, and Harris is equally lacking. Harris
`discuses Bluetooth only insofar as general background of its characteristics. See
`Ex1013, 2:10-22. Harris is only as specific as to indicate that “the bluetooth
`information can be received phone…” Id. (emphasis added). And as quoted by the
`Petition, Harris merely suggests that “one of the communication techniques
`disclosed above is used to automatically cause the cell phone to dial the specified
`
`9
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`IPR2018-00282
`U.S. Patent 7,092,671
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`contact number.” Id. 3:32-34. There is no disclosure in Harris that in
`“automatically” dialing, it is the “PDA” that is controlling the cell phone. In fact, all
`that is disclosed is that the cell phone receives “bluetooth information”, there is no
`disclosure of instructions or commands. Therefore, it is most likely that the cell
`phone itself is causing the number received in the “bluetooth information” to be
`dialed.
`Thus, Harris does not disclose “wherein the handheld computer system is
`configured to control the telephone via the wireless communication such that the
`telephone dials the specific telephone number”, as required by the independent
`claims.6 And because all of the other claims depend from either Claim 1 or 9,
`“Challenge 3” fails as to all of the challenged claims for the same reasons 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
`
`
`
` 6
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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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`10
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`IPR2018-00282
`U.S. Patent 7,092,671
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`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 in the instant Petition.7
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`Date: March 12, 2018
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`Respectfully submitted,
`
`By: /s/ Brett A. Mangrum
`Brett A. Mangrum; Reg. No. 64,783
`Attorney for Patent Owner
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` 7
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` 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.
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`11
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`IPR2018-00282
`U.S. Patent 7,092,671
`CERTIFICATE OF COMPLIANCE
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`
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`Pursuant to 37 C.F.R. § 42.24(d), we certify that this Preliminary Response
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`to Petition complies with the type-volume limitation of 37 C.F.R. § 42.24(b)(1)
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`because it contains fewer than the limit of 14,000 words, as determined by the word-
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`processing program used to prepare the brief, excluding the parts of the brief
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`exempted by 37 C.F.R. § 42.24(a)(1).
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`Date: March 12, 2018
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`Respectfully submitted,
`
`By: /s/ Brett A. Mangrum
`Brett A. Mangrum; Reg. No. 64,783
`Attorney for Patent Owner
`
`
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`i
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`IPR2018-00282
`U.S. Patent 7,092,671
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`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
`
`Andrew S. Ehmke
`
`andy.ehmke.ipr@haynesboone.com
`
`First Back Up Counsel
`
`Philip W. Woo
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`philip.woo.ipr@haynesboone.com
`
`
`Date: March 12, 2018
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`
`
`
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`
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`Respectfully submitted,
`
`By: /s/ Brett A. Mangrum
`Brett A. Mangrum; Reg. No. 64,783
`Attorney for Patent Owner
`
`
`
`ii
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