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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.
`Petitioner
`v.
`UNILOC LUXEMBOURG, S.A.
`Patent Owner
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`IPR2018-00282
`PATENT 7,092,671
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`PATENT OWNER’S REQUEST FOR
`REHEARING UNDER 37 C.F.R. § 42.71(D)
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`IPR2018-00282
`U.S. Patent 7,092,671
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`In response to the Final Written Decision entered June 4, 2019 (Paper 30) and
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`pursuant to 37 CFR § 42.71(d), Patent Owner hereby respectfully request a rehearing
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`and reconsideration of the Board’s Final Written Decision.
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`I.
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`APPLICABLE STANDARDS
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`“A party dissatisfied with a decision may file a request for rehearing, without
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`prior authorization from the Board.” 37 C.F.R. §42.71(d). “The request must
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`specifically identify all matters the party believes the Board misapprehended or
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`overlooked, and the place where each matter was previously addressed in a motion,
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`an opposition, or a reply.” Id. The Board reviews a decision for an abuse of
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`discretion. 37 C.F.R. §42.71(c).
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`II. ARGUMENT
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`A. The Board appears to have overlooked or misunderstood argument and
`evidence responsive to Petitioner’s incorrect claim construction
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`It is undisputed that independent claim 9 expressly distinguishes the following
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`separate and distinct steps: “c) transferring the specific telephone number from the
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`handheld computer system to the telephone using a wireless communication” (the
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`“transferring” step) and “d) controlling the telephone using the handheld computer
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`system to cause the telephone to dial the specific number” (the “controlling” step).
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`Paper 33 at 12.1 The Board appears to have overlooked or misunderstood, however,
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`Patent Owner’s explanation of why Petitioner’s claim interpretation would render
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`the “controlling” step superfluous. Indeed, the word “superfluous” does not appear
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`in the Final Written Decision.
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`1 The other challenged independent claims recite analogous claim language.
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`1
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`IPR2018-00282
`U.S. Patent 7,092,671
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`As detailed in Patent Owner’s briefing, a plain reading of the claim language
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`reveals that it is the claimed “controlling” that must “cause the telephone to dial the
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`specific telephone number.” Paper 11 at 4-10. To be clear, the separately-claimed
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`“transferring” of the telephone number does not provide the claimed control by the
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`handheld computer. To conclude otherwise would impermissibly attribute a causal
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`relationship to the “transferring” step that the claim language expressly attributes to
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`the separate and distinct “controlling” step. Such an interpretation would
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`impermissibly render the “controlling” step superfluous. Id. at 6 (citing Digital-
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`Vending Services Int’l, LLC v. Univ. of Phoenix, Inc., 672 F.3d 1270, 1275 (Fed. Cir.
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`2012)).
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`The Board appears to have based its interpretation, in part, on the
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`understanding that “the claim language does not reference ‘commands’ at all and
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`does not preclude the same command from accomplishing the two distinct steps.”
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`Paper 30 at 10. The determinative issue here is not whether the claim language
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`expressly references these two separate and distinct steps in the context of respective
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`commands. Rather, Patent Owner’s Response explained why the recitation of two
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`separate and distinct “transferring” and “controlling” steps precludes reliance upon
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`the mere transfer of a telephone number to provide the requisite control of the
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`handheld computer that must “cause the telephone to dial the specific telephone
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`number.” Paper 11 at 4-10.
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`Keeping in mind that Petitioner has the burden of proof, Patent Owner could
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`have simply relied on a plain reading of the claim language itself to rebut Petitioner’s
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`erroneous claim construction. Nevertheless, as further support of its position, Patent
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`2
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`IPR2018-00282
`U.S. Patent 7,092,671
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`Owner demonstrated how the remainder of the intrinsic evidence supported the
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`construction that the recitation of two separate and distinct “transferring” and
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`“controlling” steps precludes reliance upon the mere transfer of a telephone number
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`to provide the requisite control that must “cause the telephone to dial the specific
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`telephone number.” Id.
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`The Board appears to have misunderstood the explanation for why cited
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`intrinsic evidence supports Patent Owner’s position and refutes the construction
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`applied in the Petition. First, the Board acknowledges the teaching in the ’671 patent
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`that “[t]he wireless link 20 enables an application executing on PID 12 to access
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`telephone 14, communicate the desired telephone number, and control telephone 14
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`to dial the number.” Paper 30 at 10 (quoting Ex. 1001, 8:17-21). This passage
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`confirms that merely communicating the desired telephone number does not itself
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`provide the control to dial the number. Paper 11 at 6-7. Patent Owner further
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`supported this interpretation with reference to another passage in the ’671 patent
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`specification (describing the negotiation of a control protocol). Id. (citing Ex. 1001,
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`9:7-21). This additional passage is not mentioned in the Final Written Decision.
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`Second, the Board acknowledges the “prosecution history passage asserting
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`that ‘the mere exchange of data as described in [a prior art reference] is separate and
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`distinct from the claim limitation of one wireless station controlling another.’” Paper
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`30 at 10 (quoting Ex. 1002 at 243). This is not the only passage Patent Owner had
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`cited from the prosecution history.
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`The Board opted to not address the addition statement in the prosecution
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`history explaining how the ’671 patent teaches that “the phone number to be dialed
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`3
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`IPR2018-00282
`U.S. Patent 7,092,671
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`is transferred before the receiving wireless telephone is controlled or instructed to
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`dial the telephone number.” Paper 11 at 9 (quoting Ex. 1002 at 243). The applicant
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`further explained this requirement is made explicit by reciting the “data exchange
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`and control elements as separate limitations” in the claims that ultimately issued. Id.
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`The Board also appears to have overlooked a cited passage from the
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`prosecution history distinguishing certain art as teaching away from the claimed
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`“controlling” step. Paper 11 at 8 (citing Ex. 1002 at 243-44). Specifically, the
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`applicant successfully argued that the transmitting station in a cited reference cannot
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`“unilaterally control a receiving wireless station” and “force” it to receive
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`information and dial a telephone number accordingly. Id.
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`As explained in Patent Owner’s Response, a holistic view of these example
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`passages from the prosecution history confirm, consistent with the remainder of the
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`intrinsic evidence, that there is a meaningful distinction between merely exchanging
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`data (e.g., a telephone number) and the separate and distinct “controlling” claim
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`language. The Board appears to have overlooked or misunderstood the intrinsic
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`evidence cited in the briefing and Patent Owner’s positions addressing the same.
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`B. The Board appears to have overlooked or misunderstood argument and
`evidence responsive to the waived and erroneous application of Yun
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`In finding that Yun renders obvious the “transferring” and “controlling” steps,
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`the Board bases its finding on an argument not raised in the petition. Borrowing from
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`its analysis in related case IPR2018-00199, the Board credits an argument raised,
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`instead, by Unified Patents concerning Yun’s passing reference of a so-called “dial
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`4
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`IPR2018-00282
`U.S. Patent 7,092,671
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`request”. In doing so, the Board cites to no corresponding argument in the instant
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`Petition.
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`The Board’s Final Written Decision also overlooks Uniloc’s argument that
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`Apple had waived any reliance on Yun’s “dial request” by failing to raise such an
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`argument in the Petition itself. Paper 11 at 14-15; see also 35 U.S.C. § 312(a)(3)
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`(requiring petitions to identify “with particularity … the grounds on which the
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`challenge to each claim is based”); Wasica Finance GmbH v. Continental
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`Automotive Systems, Inc., 853 F.3d 1272, 1286-87 (Fed. Cir. 2017) (“It is of the
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`utmost importance that petitioners in the IPR proceedings adhere to the requirement
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`that the initial petition identify with particularity the evidence that supports the
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`grounds for the challenge to each claim.”) (quoting Intelligent Bio-Sys., Inc. v.
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`Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016), which quotes, in
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`part, 35 U.S.C. § 312(a)(3)); In re NuVasive, Inc., 841 F.3d 966, 971-73 (vacating,
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`and remanding, a final written decision in an inter partes review where the Board
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`relied on different disclosure in a primary reference other than what the petition had
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`cited).
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`Uniloc’s Response further observed that Apple’s waiver appeared to be an
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`intentional strategic decision. This is because Apple’s selective quotation of Yun in
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`its Petition uses ellipses in place of the passing reference to a “dial request” in that
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`passage. Id. (citing Pet. 28). In addition, Apple opted to not cite to and rely upon
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`paragraph 41 of its declarant’s testimony, which is the only paragraph cited in the
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`Board’s Institution Decision in advancing the “dial request” argument on behalf of
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`Apple. Id. at 15; see also Fidelity Nat’l Info. Serv., Inc. v. Datatreasury Corp.,
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`5
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`IPR2018-00282
`U.S. Patent 7,092,671
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`IPR2014-00491, Paper 9 (August 13, 2014) (declining to consider information
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`presented in the supporting declaration which was not directly discussed sufficiently
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`in the Petition). Uniloc specifically requests reconsideration and rehearing of its
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`waiver argument not addressed in the Final Written Decision.
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`The Board also appears to have overlooked argument and evidence rebutting
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`the merits of the waived “dial request” argument set forth in the Institution Decision.
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`Paper 11 at 15-18. Patent Owner explained why Yun’s “dial request” is
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`distinguishable from the claim language for the same reasons articulated during
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`prosecution when successfully distinguishing certain art of record. During
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`prosecution, “the applicant successfully argued certain art not only fails to disclose,
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`but also teaches away from the ‘controlling’ claim language because that art
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`discloses the transmitting station could not ‘force’ the receiving station to dial; and,
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`instead, the receiving station applies its own process to unilaterally determine
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`whether or not it will receive and act upon communications from the transmitting
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`station.” Id. (citing Ex. 1002 at 243-44) (emphasis original).
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`Patent Owner further explained that Yun is deficient and teaches away from
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`the claim language for analogous reasons: “Yun similarly states the telephone can
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`and will ignore a ‘dial request’ received from the electronic pocketbook while the
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`telephone is not in an off-hook state; and the telephone itself unliterally applies its
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`own process to determine and control whether it is in an off-hook state.” Id. The
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`Board acknowledges this teaching of Yun in its Final Written Decision. See Paper
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`30 at 14-15. The Board neglected, however, to address the fact that this teaching in
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`Yun is analogous to what the patentee had unambiguously distinguished during
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`6
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`IPR2018-00282
`U.S. Patent 7,092,671
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`prosecution as teaching away from the “controlling” claim language. Id. The Board’s
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`finding that this cumulative teaching of Yun is “irrelevant” cannot be squared with
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`the cited prosecution history that the Board appears to have overlooked. Id.
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`C. The Board appears to have overlooked or misunderstood argument and
`evidence responsive to Petitioner’s erroneous Harris mapping
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`Regarding Harris, the Board summarizes the argument it adopted as follows:
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`“[f]or the transfer and control limitations, Petitioner relies on Harris’s disclosure that
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`when a user selects an icon, the telephone phone number information associated with
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`that contact information is sent wirelessly to a telephone, which then automatically
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`dials the number.” Paper 30 at 19-20 (citations omitted). For the reasons explained
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`in Patent Owner’s Response (Paper 11 at 4-10), and summarized above (§II.A,
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`supra), this mapping renders certain claim language superfluous and impermissibly
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`attributes a causal relationship to the “transferring” step that the claim language
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`expressly attributes to the separate and distinct “controlling” step. The Board appears
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`to have misunderstood or overlooked at least this argument and evidence.
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`II. CONCLUSION
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`In view of the foregoing, Patent Owner respectfully requests that the Board
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`grant a rehearing and reconsider its Final Written Decision.
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`Date: June 26, 2019
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`Respectfully submitted,
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`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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`IPR2018-00282
`U.S. Patent 7,092,671
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that the foregoing was served electronically on
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`counsel of record for Petitioner.
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`Date: June 26, 2019
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`Respectfully submitted,
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`
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`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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