Apple, Inc. et al.,
`
`v
`
`Uniloc 201 7 LLC,
`
`Case IPR2018-00361
`
`US. Patent No. 6,216,158
`
`Hearing Before Jennifer S. Bisk,
`Miriam L. Quinn,
`
`Charles J. Boudreau
`
`April 11, 2019
`
`
`
`v
`
`Uniloc 201 7 LLC,
`
`Case IPR2018-00361
`
`US. Patent No. 6,216,158
`
`Hearing Before Jennifer S. Bisk,
`Miriam L. Quinn,
`
`Charles J. Boudreau
`
`April 11, 2019
`
`
`
`Claim 1 of the ’158 patent
`
`1. A method of controlling a service on a network
`
`using a palm sized computer, the palm sized computer
`
`being coupled in communications with the network,
`
`the method comprising:
`
`accessing a description of the service from a directory
`
`of services, the description of the service including
`
`
`
`at least a reference to program code for controlling
`the service;
`
`downloading the program code to the palm sized
`
`computer;
`
`the palm sized computer executing at least a portion
`
`of the program code; and
`
`sending control commands to the service from the
`
`palm sized computer in response to the executing,
`
`wherein the service controls an application that
`
`cannot be executed on the palm sized computer.
`
`
`
`Claim 8 of the ’158 patent
`
`8. A method of controlling a program on a network
`
`device from a palm sized computer, the computer is
`
`not capable of executing the program by itself, the
`
`network device and computer being coupled in
`
`communications via a network, the method
`
`comprising:
`
`
`
`issuing control commands to the network device using
`
`accessing a directory of services, a service in the
`
`directory of services corresponding to the program,
`
`the description of the service including at least a
`
`reference to program code for controlling the
`
`service;
`
`loading the program code;
`
`the program code, the control commands causing
`
`the network device to control the program.
`
`
`
`Claim 20 of the ’158 patent
`
`20. A system comprising:
`
`description of the service including at least a
`
`reference to program code for controlling a
`
`service;
`
`means for accessing a description of a service, the
`
`
`
`means for downloading the program code;
`
`means for executing at least a portion of the
`
`program code; and
`
`means for sending control commands to the
`
`service in response to the means for executing,
`
`wherein the service controls an application that
`
`cannot be executed on the means for executing.
`
`
`
`Declaration of Named Inventor of ’158 patent
`
`
`
`COMBINED DECLARATION AND POWER OF ATTORNEY
`
`Attorney Docket No. 15886-318
`
`PATENT
`
`FOR UTILITY PATENT APPLICATION
`
`As a below-named inventor, I hereby declare that:
`
`My residence, post office address and citizenship are as stated below next to my
`
`name;
`
`I believe I am the original, first and sole inventor (if only one name is listed below) or
`an original, first andjoint inventor (if plural names are listed below) of the subject matter
`which is claimed and for which a patent is sought on the invention entitled:
`
`EX 1002 at
`
`I hereby declare that all statements made herein ofmy own knowledge are true and that pp' 49' 5 1
`all statements made on information and belief are believed to be true; and further that these
`statements were made with the knowledge that willful false statements and the like so made
`are punishable by fine or imprisonment, or both, under Title 18, United States Code, §1001
`and that such willful false statements may jeopardize the validity of the application or any
`patent issued thereon.
`
`Full name of sole or
`
`first inventor:
`
`We '
`
`
`
`Alleged “Jini” References Do not Qualify as Prior Art
`
`As has been repeatedly held, and also specifically argued by
`PetitionerApple,-—.u-Ifl
`”—‘-flhhuthpdh
`hfl— See, e.g.,
`
`J Apple Inc. v. International Trade Com'n, 725 F.3d 1356
`(Fed. Cir. 2013) [agreeing with Apple that alleged prior
`art patent did not have an enabling disclosure of a fully
`transparent surface as claimed, but only suggested that
`such a surface should be considered for ‘h-t")
`
`J In re Antor Media Corp., 689 F.3d 1282, 1290-91, (Fed.
`Cir. 2012) (“Enablement of prior art requires that the
`reference teach a skilled artisan to make or carry out what
`it discloses in relation to the claimed invention"); and
`
`J Bard Peripheral Vascular, Inc. V. WL. Gore &Associates,
`Inc., 670 F.3d 1171, 1185 (Fed. Cir. 2012) (“. .
`. the
`reference must enable one of ordinary skill in the art to
`make the invention without undue experimentation”).
`
`
`
`Alleged “Jini” References Do not Qualify as Prior Art
`
`The primary lini reference (Ex. 1005) is a marketing
`
`piece that is not enabling as to features of the ’158
`
`patent. Furthermore, it merely describes to a layperson
`
`something Sun Microsystems was still developing.
`
`Iini
`
`D E Fl N lTlO N:
`
`lini is networking software created by Sun Microsystems Inc. as an extension of
`
`Java, the company’s cross-platform programming language.—
`
`-]ini's goal is to enable the creation of simpler, more flexible networks. -devices
`
`to immediately start working after being plugged in directly to a network (see diagram, below). Once
`the devices are connected, jini_a way for machines, applications or devices to automatic
`
`cally “discover" and share resources called “services" (see Jini Speak glossary). The ability to down-
`
`load and move java code or objects over a network is central to lini's architecture. It requires very lit-
`tle memory — about 40K bytes of Java code — which-let it run in devices with very low memory,
`
`
`
`Alleged “Jini” References Do not Qualify as Prior Art
`
`Dr. Easttom’s testimony concerning Petitioner’s
`
`Ex. 1005 included the following (Ex. 2001 1135):
`
`35.
`
`The ComputerWorld article cannot be prior art. It was allegedly
`
`published in December of 1998. and the article itself says this teclmology may
`
`be available in the “second half of next year", which would be at least June of
`
`1999. The application for the ‘ 158 patent was filed 011 January 25. 1999. Even
`
`if one ignores the fact that this article does not describe how to accomplish its
`
`goals in sufficient detail. and then ignores the fact that technology often fails
`
`to meet expectations. then further assumes that every item in the article is
`
`exactly what the petitioner claims it is. and it was all fully functional when the
`
`article said it would be. that would still be at least six months after the ‘158
`
`
`
`Alleged “Jini” References Do not Qualify as Prior Art
`
`Dr. Easttom’s testimony concerning Petitioner’s Ex. 1005 further
`
`included the following (Ex. 2004 1111 24-25):
`
`Jini
`
`24.
`
`Jini. as used in the ’ 158 Patent is merely a layer used in the invention- The " 158
`
`Patent does not merely describe and claim J1111 as Apple appears to argue.
`
`25-
`
`The Jini Quick Study article published December 7, 1998 which is Exhibit V to
`
`Apple’s motion describes the Jini product as it existed one (1) month before the filing of the ’ 158
`
`patent. The article specifically states the product is not ready, does not fully function and won ’t
`
`be ready until late 1999- Regardless of how one views Im1 it clearly was not developed prior to
`
`the earliest priority date of the ’158 patent- Rather it was merely a concept that was not fully
`
`developed This document includes some Jini jargon, but the skilled person would not have
`
`understood this document as teaching how to implement the steps of claims 8 and 9 of the ’ 158
`
`
`
`Alleged “Jini” References Do not Qualify as Prior Art
`
`Petitioner's declarant, Dr. Hough, conceded
`
`that lini-QS (Ex. 1005) does not describe the
`
`operation of lini in a manner one of ordinary
`
`skill in the art could actually implement:
`
`Arnold. and McCandless. In particular, the Jini-QS article in ComputerWorld
`
`describes the general features and functionality of the Jim' platfonn. Jini-QS.
`
` 1
`h. d
`_
`.
`r
`,
`51;:.f.-:,.'.—:......‘,J'33¢};
`:,..;,:-‘r;z;'.';..:.' ".3-:-.-;‘r_,,~.=.%3'-.:’.-:i:.';.,.’:‘.’f'7‘.’.‘.,’..J;;'.‘;-‘"“:_‘;f.‘-f“'53..:"’7" l-r-ggnr :_:-‘-j_;{ .2: g:; l
`to“ exer. latweie a ea Y
`
`-Dr. Hough, Ex. 1003 1] 78.
`
`
`
`Alleged “Jini” References Do not Qualify as Prior Art
`
`EX. 1018 p. 8 of 10
`
`
`
`Microsoft
`
`isn’t about to endorse it, can in fact be
`“[Exhibit 1018], an lnfoworld article
`counted on to embrace it about the same
`from October 1, 1998, just two months
`prior to the filing of the ’158 patent, way they embraced Java. And other
`also simply describes Sun’s vision for
`companies are being asked at minimum
`what lini in It does not describe
`to make an investment—
`an actual product." — and at max, to rethink their
`entire business and software develop-
`ment models.
`Against that imposin challen e there
`is this small thou ht:
`
`—Dr. Easttom, Ex. 2004 1126.
`
`Why not now?
`And why not from the guy who has been
`thinking about it for all his adult life, Mr.
`“The network is the com uter” himself? It's
`Bill Joy’s dreamlh
`
`
`
`Example deficiencies in Ground 1 (Jini)
`
`Among other deficiencies, the Petition fails to prove that the
`
`primary lini reference (Ex. 1005) discloses that the “icons"
`or “lookup” feature provide "Own“
`_IW’ that includes “a“.
`p—uww' (claim 1)
`
`Thus. Jini-QS’s teaching of a PalmPilot accessing descfiptionsficons of
`
`available services contained in 3 Lookup Service on the Jini platform. Where the
`
`Lookup Service includes service descn'ptions and pointers (references) to
`
`—or controlling a sen-ice. discloses the claimed:
`
`“accessing a description of the service from a directory of services, the description
`
`of the seivice including at least a reference to program code for controlling the
`
`sen-*ice.“ APPL-1003. pp. 55-57.
`
`
`
`Example deficiencies in Ground 1 (Jini)
`
`The Petition fails to prove that lini-QS (Ex. 1005) discloses that
`the “icons” or “lookup” feature provide ‘Iw‘.
`“haul-fir that includes 1*—
`.-‘hm-fl' (claim 1)
`
`Dr. Easttom testified that the ‘—' code
`mentioned in lini-QS is distinguishable on its face
`
`from “a reference to program code for controlling
`
`the service.” See, e.g., Ex. 2001 at 111145-46, 51-53.
`
`lini-QS (Ex 1005) at p. 5 of 5.
`‘2 This is the piece of lava code that
`Lookup: A key component in the lini
`moves around from device to device acting system, Lookup is the equivalent of a
`as the front end for all the lini-enabled or
`network bulletin board for all available
`
`legacy systems. The proxy essentially tells
`the client how to use the device. For
`
`services. Lookup stores pointers to various
`services on the network as well as code for
`
`they can provide to the others.
`
`example, it may include a graphical user
`interface that shows the user how to work
`
`other services. As Java code that resides on
`the lini server, Lookup keeps track of
`
`
`
`Example deficiencies in Ground 1 (Jini)
`
`“downloading the program code to the palm sized computer"
`
`(claim 1), “loading the program code" (claim 8), “loading the
`
`program code onto the palm sized computer" (claim 9), &
`
`“means for downloading the program code” (Claim 20)
`
`X For Ground 1, Petitioner points exclusively to the alleged
`teaching of downloading proxy code from the Lookup server:
`
`Thus- Jini-QS’S teaching that the—from
`
`the Lookup sewer. discloses the claimed: “downloading the program code to the
`
`Pet. 29
`
`palm sized computer." APPL-1003. pp. 57-58.
`
`X Petitioner's reliance on the meager description of proxy code in
`Iini-QS (Ex. 1005) is deficient at least because, as Dr. Easttom
`testified, a POSA would understand that proxy code is what one
`
`
`
`Example deficiencies in Ground 1 (Jini)
`
`“downloading the program code to the palm sized computer"
`
`(claim 1), “loading the program code" (claim 8), “loading the
`
`program code onto the palm sized computer” (claim 9), &
`
`“means for downloading the program code" (Claim 20)
`
`For example, Dr. Easttom distinguished
`
`proxy code as follows (Ex. 2001 1] 51):
`
`51.
`
`The petitioner equates the proxy code of Jini-QS with program
`
`code. In the early 2000’s I published a book about Enterprise Java Beans. a
`
`common way of accessing remote progralmning code in Java. Ihave a detailed
`
`understanding of remote programming code used in Java. As any POSA
`
`would tuldel'stand. proxy code is What one uses instead of program code.
`
`
`
`Example deficiencies in Ground 1 (Jini)
`
`A-or other device is plugged into the net-
`
`work, and the Jini code in the Java virtual machine 0
`
`on the device broadcasts its presence. The user requests
`services that are available. and icons appear on his screen.
`
`Ex. 1005
`
`at p. 5
`
`
`
`
`0 The lini Server and its Lookup Service discover the
`new -and register it on the network.
`
`Say the user wants to print a presentation.
`He selects the print option, which launches
`a query to the Lookup Service on the Jini Server.
`The sewer instantly sends proxy code back to the
`device. The legacy printer, which has no Java or Jini
`code at ail, receives the printing instruction via that
`proxy code and prints the document.
`
`Next, the user decides to store his presenta-
`tion on the network and selects “save" on
`the file menu. His -queries the Lookup Service,
`which identifies—
`. The presentation is saved to disk.
`
`
`
`
`
`MoCandless Does Not Qualify as Prior Art
`
`Using this network,—
`-subsume the functionality of the
`remote controls in your home. You.
`control and configure your home appli—
`ances through your PDA. You-set your
`alarm clock; read your personalized TV
`
`guide and program your VCR; turn down
`
`the stereo or select a different song or radio
`
`station; and program, from your car or the
`subway, your home’s heater to turn on
`
`shortly before you arrive there. This net-
`work won’t need to be,—
`- very high performance to provide
`most of these new services. Rather, it.
`serve as a stepping stone, motivating and
`then financing better infrastructure.
`
`Wireless networking. PDAs-
`Come With built—in access to a ubiquitous
`Wireless network. This will render HotSynC
`a thing of the past; your PDA will transpar-
`
`The network relaxes where and how
`
`computation occurs. For example, applica-
`
`tions that are too compute- or space-
`intensive to run directly on your PDA-
`run, instead, on a remote hi gh-performance
`computer, but then return the output of the
`computation. When new versions of appli-
`cations are released, your FDA-auto-
`matically update. The boundary between
`your PDA and the rest of the world-
`become blurred.
`
`
`
`Example deficiencies in Ground 2 (Riggins)
`
`Among other deficiencies, the Petition fails to prove that
`
`For Ground 2, the Petition (at p. 63) summarizes
`
`its exclusive reliance on Riggins as follows:
`
`58, 6:25-36, 6:55-60, 8:4—18. Accordingly, the listing of services presented to the
`
`user (description of services) includes references to corresponding applets because
`
`selecting a particular service from the list causes the corresponding applet to be
`
`downloaded and executed. APPL-IOOS. p. 126.
`
`
`
`Example deficiencies in Ground 2 (Riggins)
`
`
`
`Riggins (Ex. 1008) at 6:25-31:
`
`“FIG. 5 illustrates an example
`graphical user interface 500 of a URL-
`
`addressable HyperText Markup
`
`Language (HTML)-based web page, as
`
`maintained by the web page engine
`133 of the master server 130. The
`
`graphical user interface 500 includes
`a title 510 "Roam Pager.”
`.flu.‘ and a
`pointer 570 for selecting one of the
`
`provided services 396.”
`
`Roam Page
`
`
`
`51 O
`
`520
`
`Calendaring
`
`2.
`
`
`Internet Access
`
`
`Paging
`550
`
`530
`
`540
`
`3.
`
`.
`
`
`
`
`5.
`
`Sending Faxes
`
`560
`
`
`
`Example deficiencies in Ground 2 (Riggins)
`
`Petitioner’s citation to Devarakonda does not cure the
`
`conceded deficiency of Riggins for “wherein the service
`
`controls an application that cannot be executed on the
`
`palm sized computer” (Claim 1):
`
`Existing approaches used to provide these basic system
`services to applications include the existence of a full-
`feature Operating environment on the Network Computer
`antifor the requirmcnt that each application provide its own
`set of needed so rviccs. The former approach is not feasible
`for network clients because these computers are not neces-
`sarily equipped with adequate physical resources such as
`physical memory and attached peripheral devices (e.g., disk
`drives) to support a full-feature operating environment (e.g.,
`in the case of a Network Computer). The latter approach has
`
`
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