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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`IPR2018-00361
`PATENT 6,216,158
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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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`IPR2018-00361
`U.S. Patent 6,216,158
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`Table of Contents
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`
`
`I.
`II.
`III.
`IV.
`V.
`
`VI.
`
`B.
`
`INTRODUCTION .................................................................................... 1
`THE ’158 PATENT .................................................................................. 1
`RELATED PROCEEDINGS .................................................................... 2
`LEVEL OF ORDINARY SKILL IN THE ART ...................................... 3
`THE REDUNDANT CHALLENGE IN GROUND 2 IS
`PROCEDUARLLY AND SUBSTANTIVELY DEFICIENT ................. 3
`PETITIONER DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM .......................................................................... 5
`A.
`Claim Construction ......................................................................... 6
`1.
`“palm sized computer” ......................................................... 6
`2.
`“means for accessing a description of a service” ................. 7
`3.
`“means for downloading the program code” ....................... 8
`4.
`“means for executing at least a portion of the
`program code” ...................................................................... 9
`“means for sending control commands to the
`service in response to the means for executing” ................ 10
`Ground 1 Should be Denied ......................................................... 12
`1.
`The Petition Fails to Show a POSITA Would
`Have Combined Jini-QS, And Arnold, and
`McCandless ........................................................................ 12
`Jini-QS Does Not Disclose “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
`
`5.
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`2.
`
`ii
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`

`

`4.
`
`7.
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`3.
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`IPR2018-00361
`U.S. Patent 6,216,158
`controlling the service” (Claim 1) ...................................... 21
`Jini-QS Does Not Disclose “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” (Claim
`8) ......................................................................................... 23
`Jini-QS Does Not Disclose “downloading the
`program code to the palm sized computer” (Claim
`1) ......................................................................................... 23
`5. McCandless Does Not Disclose “wherein the
`service controls an application that cannot be
`executed on the palm sized computer” (Claim 1) .............. 25
`6. McCandless Does Not Disclose “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…” (Claim 8) ............... 26
`Ground 1 Should Be Denied Because All Other
`Challenged Claims Of Ground 1 Depend From
`Claim 1 or Claim 8 ............................................................. 27
`Ground 2 Should be Denied ......................................................... 27
`1.
`The Petition Fails to Show a POSITA Would
`Have Combined Riggins And Devarakonda ...................... 27
`Riggins Does Not Disclose “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” (Claim 1) ...................................... 33
`Riggins Does Not Disclose “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” (Claim
`
`C.
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`2.
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`3.
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`iii
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`4.
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`5.
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`IPR2018-00361
`U.S. Patent 6,216,158
`8) ......................................................................................... 35
`No Prima Facie Obviousness for “wherein the
`service controls an application that cannot be
`executed on the palm sized computer” (Claim 1) .............. 36
`No Prima Facie Obviousness For “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…” (Claim 8) ............... 37
`Ground 2 Should Be Denied Because All Other
`Challenged Claims Of Ground 2 Depend From
`Claim 1 or Claim 8 ............................................................. 37
`THE SUPREME COURT IS CURRENTLY REVIEWING
`THE CONSTITUTIONALITY OF INTER PARTES
`REVIEW ................................................................................................. 38
`VIII. CONCLUSION ....................................................................................... 38
`
`VII.
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`6.
`
`iv
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`

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`
`Exhibit No.
`2001
`
`Description
`Declaration of William C. Easttom
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`

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`IPR2018-00361
`U.S. Patent 6,216,158
`
`I.
`
`INTRODUCTION
`Uniloc Luxembourg S.A. (the “Uniloc” or “Patent Owner”) submits this
`Preliminary Response to Petition IPR2018-00361 for Inter Partes Review (“Pet.” or
`“Petition”) of United States Patent No. 6,216,158 (“the ’158 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 ’158 PATENT
`The ’158 patent is titled “System and method using a palm sized computer to
`control network devices.” The ʼ158 patent issued April 10, 2001, from U.S. Patent
`Application No. 09/237,609 filed January 25, 1999 and originally assigned to 3Com
`Corporation (3Com).
`The inventors of the ’158 patent observed that at the time, relative to desktop
`and laptop computers, palm sized computers had limited processing, display and
`input capabilities. As a result of those limitations, palm sized computers did not run
`the same applications as desktop or laptop computers. Other limitations of palm
`sized computers included limited battery life and lower bandwidth communications
`with other devices. Nonetheless, because palm sized computers have a big advantage
`in portability, it was desirable to be able to access desktop functionality from palm
`sized computers. EX1001, 1:22-32.
`According to the invention of the ’158 Patent, a program on the palm sized
`computer is used to access a registry of network services. Id., 1:36-38. The registry
`includes descriptions for various services. Id., 1:38-40. Each description includes at
`least a reference to program code that can be downloaded to the palm sized
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`1
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`IPR2018-00361
`U.S. Patent 6,216,158
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`computer. Id., 1:40-41. Executing this program causes the palm sized computer to
`issue commands directly to the specific network services needed. Id., 1:41-43. In
`some cases, these network services include application services for running desktop
`applications that the palm sized computer could not execute. Id., 1:43-45
`In some embodiments, the device executing the network services and the palm
`sized computer are executing middleware applications for communicating with the
`registry. In some embodiments, this middleware includes Jini technology from Sun
`Microsystems. Additionally, the programs downloaded can include Java program
`code. Id., 1:46-51.
`
`III. RELATED PROCEEDINGS
`The following proceedings are currently pending cases concerning U.S. Pat.
`No. 6,216,158 (EX1001).
`
`Case Caption
`
`Uniloc USA, Inc. et al
`v. Apple Inc.
`Uniloc USA, Inc. et al
`v. LG Electronics
`USA, Inc. et al
`Uniloc USA, Inc. et al
`v. Exclusive Group
`LLC d/b/a Binatone
`North America
`Uniloc USA, Inc. et al
`v. Apple Inc.
`Uniloc USA, Inc. et al
`v. Amazon.com, Inc.
`
`
`Case
`Number
`2-17-cv-00571
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`4-17-cv-00827
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`District
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` Case
`Filed
`TXED August 2,
`2017
`October
`13, 2017
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`TXND
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` Status
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`Transferred
`to 3-18-cv-
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`Pending
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`1-17-cv-03962
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`INSD
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`October
`27, 2017
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`Pending
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`3-18-cv-00365
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`2-18-cv-00123
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`CAND
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`January 17,
`2018
`TXED March 31,
`2018
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`Pending
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`Pending
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`2
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`IPR2018-00361
`U.S. Patent 6,216,158
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`IV. 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.
`
`V. THE REDUNDANT CHALLENGE IN GROUND 2 IS
`PROCEDUARLLY AND SUBSTANTIVELY DEFICIENT
`The Petition presents a facially-redundant challenge against the challenged
`claims based in Ground 2. As a procedural matter, this redundant challenge of the
`challenged claims should be denied because Petitioner makes no attempt to articulate
`the relative strengths and weaknesses of Ground 1, so as to justify the redundancy
`in raising multiple redundant challenges against the challenged claims.
`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.
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`IPR2018-00361
`U.S. Patent 6,216,158
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`Here, Petitioner contends that it included redundant Ground 2 because of the
`possibility that Jini may not qualify as prior art.1 Pet. 15. However, Petitioner
`provides no controlling authority confirming that this is sufficient reason to burden
`both the Board and the petitioner with redundant challenges. Controlling authority
`(including Liberty Mut.) requires a showing of the relative strengths and weaknesses
`of the substantive merits of the references be provided to consider redundant
`challenges. No such showing was provided.
`Petitioner purports to rely on Sure-Fire Elec. Corp. v. Yongjiang Yin, et. al.
`IPR2014-01448, Paper 25 (P.T.A.B. June 1, 2015), for support of its improper
`redundancy. However, Sure-Fire is not controlling authority. Furthermore, Sure-
`Fire is distinguishable on its facts and is therefore not applicable here. In Sure-Fire,
`the Board found it compelling that the addition of a single ground would also only
`add one additional reference to the proceedings. Sure Fire (Paper 25 at 5). Here,
`Petitioner is seeking to include multiple additional references, in addition to its
`several references asserted in Ground 1.
`The seminal holding in Liberty Mut. explained that 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 Mut. CBM2012-00003,
`
`
`
` 1
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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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`IPR2018-00361
`U.S. Patent 6,216,158
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`Paper 7 at 2. 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 overlapping Grounds 1 and 2, presumably to avoid having to concede
`any weakness in the Petition. Such circumstances invoke the Board’s discretion to
`deny the Petition as procedurally deficient.
`Even if the Board were to consider the substantive merits of Ground 2,
`notwithstanding these multiple procedural defects, the Petition should nevertheless
`be denied as failing to present a prima facie case of obviousness for the reasons
`discussed below.
`
`VI. 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.
`§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:
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`5
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`Ground
`1
`2
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`IPR2018-00361
`U.S. Patent 6,216,158
`Reference(s)
`Claims
`1-2, 6-9, 12, 14-15, and 20 Jini-QS2 and Arnold3 and McCandless4
`1-2, 6-9, 12, and 14-15
`Riggins5 and Devarakonda6
`A. Claim Construction
`Except for the means-plus-function claim terms addressed below, 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 Patent Owner agrees in principle that independent Claim 20 invokes
`pre-AIA 35 U.S.C. § 112, ¶6, the Petition injects disputes over the relevant
`corresponding structure disclosed in the '158 Patent, as explained further below
`
`“palm sized computer”
`1.
`At this preliminary stage, Patent Owner submits that the Board need not
`construe this claim term in a particular manner in order to arrive at the conclusion
`that the Petition is substantively deficient. Wellman, 642 F.3d at 1361. Therefore, at
`this preliminary stage, Patent Owner does not submit a competing definition, though
`Patent Owner reserves the right to do so in the event trial is instituted.
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`
`
` 2
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` EX1005, “Jini: Quick Study,” COMPUTERWORLD
`3 EX1006, U.S. Patent No. 6,393,497
`4 EX1007, “The PalmPilot and the Handheld Revolution”
`5 EX1008, U.S. Patent No. 6,131,116
`6 EX1009, U.S. Patent No. 6,757,729
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`6
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`IPR2018-00361
`U.S. Patent 6,216,158
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`Petitioner does not actually propose a construction in the Petition. Instead,
`Petitioner attempts to make an annotation to this term by stating: “For the purposes
`of this proceeding, it is sufficient to specify that a personal digital assistant (PDA)
`and a 3Com Palm Platform™ computer are examples of a “palm sized computer”
`in the context of the ’158 Patent.” Pet. 9 (emphasis added). That allegation is not a
`proper definition for the term “palm sized computer” nor does it fully define its
`scope. Petitioner’s attempt to define claim scope in terms of just two alleged
`“examples” should be rejected.
`In any event, Petitioner fails to present a case of prima facie obviousness even
`under its own construction.
`
`“means for accessing a description of a service”
`2.
`Patent Owner agrees that this claim term is governed by 35 U.S.C. § 112(6).
`Patent Owner also agrees that the recited function is “accessing a description of a
`service.” However, Petitioner’s proposed structure improperly focuses on a single
`example in a manner that excludes the full scope of the structural disclosure
`corresponding to this term. Phillips, 415 F.3d at 1313.
`Petitioner’s proposed structure is: “a palm-sized computer executing the Jini
`middleware from Sun Microsystems, and equivalents thereof.” Pet. 10 (emphasis
`removed). However, the quoted portion of the specification that Petitioner relies on
`for its proposed structure expressly states that it’s example is not limiting. See Id.
`quoting EX1001, 1:47-51 (“[i]n some embodiments…”) (emphasis added).
`Furthermore, the Petition ignores portions of the specification that further shows
`Petitioner’s proposed structure is improperly limiting. For example:
`
`7
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`IPR2018-00361
`U.S. Patent 6,216,158
`“Middleware allows palm sized computers to discover
`network-based computing resources. Once discovered,
`this middleware provides a mechanism for the palm sized
`computer to use these resources. This middleware
`typically includes a directory of resources (or services), a
`protocol for storing and retrieving from the directory, and
`mechanisms to transfer software from the directory to a
`palm sized computer.”
`EX1001, 2:29-36 (emphasis added). As shown by the specification itself, there is no
`requirement that the specific middleware be “Jini middleware from Sun
`Microsystems”, to the exclusion of all other possibilities fitting the specific
`description of middleware in the block quotation above. Petitioner’s proposed
`structure should be rejected. Phillips, 415 F.3d at 1313.
`Thus, as shown in the above block quotation, for the function “means for
`accessing a description of a service” the correct structure is “middleware, and
`equivalents thereof”, which can readily be determined by the description of
`middleware provided in the ’158 Patent itself.
`
`“means for downloading the program code”
`3.
`As with the above term, Patent Owner agrees that this claim term is governed
`by 35 U.S.C. § 112(6), and Patent Owner also agrees that the recited function is
`“downloading the program code”. However, as with the above term, Petitioner’s
`proposed structure improperly reads limitations into the claim language and should
`be rejected. Phillips, 415 F.3d at 1313.
`Just like with the above term, Petitioner’s proposed structure is: “a palm-sized
`computer executing the Jini middleware from Sun Microsystems, and equivalents
`thereof.” Pet. 11 (emphasis removed). Exactly as above, Petitioner ignores the
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`IPR2018-00361
`U.S. Patent 6,216,158
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`portions of the specification that shows its proposed structure is improperly limiting.
`For example:
`
`“Middleware allows palm sized computers to discover
`network-based computing resources. Once discovered,
`this middleware provides a mechanism for the palm sized
`computer to use these resources. This middleware
`typically includes a directory of resources (or services), a
`protocol for storing and retrieving from the directory, and
`mechanisms to transfer software from the directory to
`a palm sized computer.”
`EX1001, 2:29-36 (emphasis added).
`Therefore, just as with the above term, there is no unambiguous requirement
`that middleware refers only to the example of “Jini middleware from Sun
`Microsystems”. Petitioner’s proposed structure should be rejected. Phillips, 415
`F.3d at 1313.
`As shown in the above passage, for the function “means for downloading the
`program code” the correct structure is “middleware, and equivalents thereof”.
`
`“means for executing at least a portion of the program code”
`4.
`Patent Owner agrees that this claim term is governed by 35 U.S.C. § 112(6).
`Patent Owner also agrees that the recited function is “executing at least a portion of
`the program code.” However, Petitioner’s proposed structure improperly reads
`limitations into the claim language and should be rejected. Phillips, 415 F.3d at
`1313.
`
`Petitioner’s proposed structure is: “a palm sized computer executing a Java
`Virtual Machine.” Pet. 11 (emphasis removed). And again, Petitioner ignores the
`portions of the specification that shows its proposed structure is improperly limiting.
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`9
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`For example:
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`IPR2018-00361
`U.S. Patent 6,216,158
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`
`
`EX1001, 7:25-40 (emphasis added).
`Therefore, there is no unambiguous requirement that middleware refers only
`to the example of “a Java Virtual Machine”. Petitioner’s proposed structure should
`be rejected. Phillips, 415 F.3d at 1313.
`As shown in the above passage, for the function “means for executing at least
`a portion of the program code” the correct structure is “a CPU service, and
`equivalents thereof”.
`
`5.
`
`“means for sending control commands to the service in
`response to the means for executing”
`Patent Owner agrees that this claim term is governed by 35 U.S.C. § 112(6).
`Patent Owner also agrees that the recited function is “sending control commands to
`the service in response to the means for executing.” However, Petitioner’s proposed
`structure improperly reads limitations into the claim language and should be
`
`10
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`IPR2018-00361
`U.S. Patent 6,216,158
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`rejected. Phillips, 415 F.3d at 1313.
`Petitioner’s proposed structure is: “a palm-sized computer executing a control
`protocol capable of issuing control commands or Java’s Remote Method Invocation
`(RMI) protocol, and equivalents thereof.” Pet. 12 (emphasis removed). First, “a
`control protocol capable of issuing control commands” is redundant and
`unnecessary. It is redundant because the claim language already recites “sending
`control commands”. Second, to the extent Petitioner seeks to require “Java’s Remote
`Method Invocation (RMI) protocol”, Petitioner ignores the portions of the
`specification that shows its proposed structure is improperly limiting. For example:
`
`“The palm sized computer 100 accomplishes this via
`middleware (e.g. Jini) and a generic control protocol
`capable of issuing control commands to an offboard
`resource. The palm sized computer 100 implements this
`control via the software components depicted in FIG. 2.
`These
`software components
`represent a generic
`architecture for control of any network-based resource
`using a reduced functionality computer such as a palm
`sized computer. The software architecture, middleware,
`and control protocol implement a new model for
`lightweight mobile computing.”
`EX1001, 4:15-25 (emphasis added).
`Therefore, there is no unambiguous requirement that the term refers only to
`the example of “a control protocol capable of issuing control commands or Java’s
`Remote Method Invocation (RMI) protocol”. Petitioner’s proposed structure should
`be rejected. Phillips, 415 F.3d at 1313.
`As shown in the above passage, for the function “means for sending control
`commands to the service in response to the means for executing” the correct
`
`11
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`IPR2018-00361
`U.S. Patent 6,216,158
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`structure is “a control protocol, and equivalents thereof”.
`
`B. Ground 1 Should be Denied
`The Petition Fails to Show a POSITA Would Have Combined
`1.
`Jini-QS, And Arnold, and McCandless
`To establish obviousness under 35 U.S.C. § 103(a), it is petitioner’s “burden
`to demonstrate . . . that a skilled artisan would have been motivated to combine the
`teachings of the prior art references to achieve the claimed invention.” In re
`Magnum Oil Tools Int’l Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (quotations
`omitted). The petitioner must “articulate[] reasoning with some rational
`underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 418 (2007) (citation omitted).
`The “factual inquiry” into the reasons for “combin[ing] references must be
`thorough and searching, and the need for specificity pervades.” In re Nuvasive, Inc.,
`842 F.3d 1376, 1381–82 (Fed. Cir. 2016) (quotations omitted). An obviousness
`determination cannot be reached where the record lacks “explanation as to how or
`why the references would be combined to produce the claimed invention.”
`TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016). This requisite
`explanation avoids an impermissible “hindsight reconstruction,” using “the patent
`in suit as a guide through the maze of prior art references, combining the right
`references in the right way so as to achieve . . . The claims in suit.” Id.; In re NTP,
`Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011).
`Moreover, Petitioner cannot merely speculate through its declarant, outside
`the four corners of the reference, to carry its burden. The Federal Circuit has
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`IPR2018-00361
`U.S. Patent 6,216,158
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`instructed that “legal determinations of obviousness, as with such determinations
`generally, should be based on evidence rather than on mere speculation or
`conjecture.” Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1290 (Fed. Cir. 2006);
`K/S HIMPP v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365-66 (Fed. Cir. 2014)
`(finding the P.T.A.B. correctly rejected conclusory assertions of what would have
`been common knowledge in the art). The Petitioner’s declarant merely parrots the
`same conclusory statements as in the Petition, without providing the required
`“explanation as to how or why the references would be combined to produce the
`claimed invention.” TriVascular, 812 F.3d at 1066; see also Arendi S.A.R.L. v. Apple
`Inc., 832 F.3d 1355, 1362–66 (Fed. Cir. 2016) (recognizing that “reasoned analysis
`and evidentiary support” are required to supply a “limitation missing from the prior
`art” as well as a motivation to combine).
`Here, the Petition lacks the required “factual inquiry” into reasons for
`combining the Jini-QS, and Arnold, and McCandless references and lacks any
`“explanation as to how or why the references would be combined to produce the
`claimed invention.” Rather, the Petition engages in impermissible hindsight
`reconstruction.
`
`a)
`
`The Proposed Combination Fails Because A POSITA
`Would Not Have Looked To Jini-QS As A Reference
`Petitioner relies on Jini-QS as a primary reference. However, Jini-QS does
`not disclose any teachings or details that would motivate a POSITA to modify as
`proposed in the Petition. See EX1005, at 5 (The Jini-QS reference in its entirety is
`a single page). Indeed, a person of ordinary skill in this art would not be motivated
`
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`IPR2018-00361
`U.S. Patent 6,216,158
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`to consider the Jini-QS reference because that Jini-QS reference claims to be
`directed at businesspersons in particular (as opposed to a POSITA as properly
`defined). Id. (“What’s the simplest, quickest way to explain Jini to a
`businessperson?”).
`
`b)
`
`The Proposed Combination Further Fails Because
`Jini-QS Itself Does Not Support Making the Proposed
`Combination
`Not only does the Petition fail to prove a POSITA would have been motivated
`to consider the Jini-QS reference, the Petition itself acknowledges that Jini-QS omits
`certain detail necessary for implementation: “Jini-QS, however, chooses to omit
`some implementation details of Jini that were already known to POSITAs…” Pet.
`20. However, that is mere conclusory speculation, and the Petition exclusively relies
`on its declarant (Dr. Houh) for support. Id. But the declarant merely parrots the same
`conclusory speculation recited by the Petition. Compare Pet. 20 with EX1003, ¶ 78.
`Indeed, the speculation that the details of Jini were “already known to
`POSITAs” is expressly contradicted by Jini-QS itself, because Jini wasn’t even
`available at the time:
`
`EX1005, at 5 (highlighting added).
`
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`IPR2018-00361
`U.S. Patent 6,216,158
`
`Next, Petitioner continues to speculate through its declarant that “a POSITA
`would have naturally considered literature more fully describing the Jini platform
`or network service platforms similar to it.” Id. Dr. Houh’s testimony should not be
`given any weight at least because there was no contemporaneous literature.7 Jini-QS
`itself expressly states that the Jini software would not be available “for another
`year.” Petitioner’s conclusory speculation that a Jini-QS reader (which would not
`be a POSITA for the reasons above) would have “naturally considered literature
`more fully describing the Jini platform or network service platforms similar to it”,
`is on its face incredulous.
`Finally, as to the alleged “reasons” for the proposed combination(s) of JIni-
`QS and Arnold, and/or Jini-QS and McCandless, the Petition yet again merely makes
`a single conclusory and speculative statement and relies solely on the exact same
`conclusory and speculative statement recited through its declarant. Compare Pet.
`
`
`
` 7
`
` See 37 C.F.R. § 42.65(a); Rohm & Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092
`(Fed. Cir. 1997) (“Nothing in the [federal] rules [of evidence] or in our jurisprudence
`requires the fact finder to credit the unsupported assertions of an expert witness.”);
`Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir.
`1985) (“Lack of factual support for expert opinion going to factual determinations .
`. . may render the testimony of little probative value in a validity determination.”);
`Alza Corp., 464 F.3d at 1290; K/S HIMPP, 751 F.3d at1365-66 (finding the P.T.A.B.
`correctly rejected conclusory assertions of what would have been common
`knowledge in the art). W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540,
`1553 (Fed. Cir. 1983) (“To imbue one of ordinary skill in the art with knowledge of
`the invention in suit, when no … reference or references of record convey or suggest
`that knowledge, is to fall victim to the insidious effect of a hindsight syndrome
`wherein that which only the inventor taught is used against its teacher.”).
`
`15
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`

`

`IPR2018-00361
`U.S. Patent 6,216,158
`
`20-21 with EX1003, ¶ 78.
`For the above reasons alone, Petitioner’s proposed combination fails and
`Ground 1 of the Petition should be denied.
`
`c)
`
`The Proposed Combination Further Fails Because
`Arnold And The RMI Protocol Does Not Support
`Making the Proposed Combination
`The Petition further speculates through its declarant that “[t]he combination
`of Jini-QS and Arnold would produce the obvious, beneficial, and predictable result
`of a PalmPilot in the Jini platform utilizing RMI to send control commands to a
`network service.” Pet. 21. The reasoning in both the Petition and its attached
`declaration is virtually identical and conclusory and therefore should be given no
`weight. Compare Pet. 21-22 with EX1003, ¶¶ 79-81.
`For example, Dr. Houh purports to rely on papers and website screenshots for
`the conclusory statement that “[n]otably, this result would have been predictable
`because, prior to the ’158 Patent, POSITAs were informed that the Jini platform
`actually utilized RMI to communicate control commands from a client to a service”
`(EX1010, EX1011, EX1012, and EX1019). However, the Petition itself further
`acknowledges that the collective documents do not disclose the required teaching.
`See Pet. 21 (“even if RMI was not already used in Jini to send control commands
`…”) And the Petition seeks to argue that “doing so would have [nonetheless] been
`predictable …” by repeatedly and again improperly speculating through Dr. Houh.
`Compare Pet. 21-22 with EX1003, ¶¶ 79-81.
`
`16
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`IPR2018-00361
`U.S. Patent 6,216,158
`
`Moreover, lacking in both the Petition and Dr. Houh’s declaration is any of
`the required “factual inquiry” and “explanation as to how or why it would have been
`within the level of a POSITA to make “such modifications.” Alza Corp., 464 F.3d
`at 1290; K/S HIMPP, 751 F.3d at 1365-66 (finding the P.T.A.B. correctly rejected
`conclusory assertions of what would have been common knowledge in the art); W.L.
`Gore, 721 F.2d at 1553 (“To imbue one of ordinary skill in the art with knowledge
`of the invention in suit, when no … reference or references of record convey or
`suggest that knowledge, is to fall victim to the insidious effect of a hindsight
`syndrome wherein that which only the inventor taught is used against its teacher.”).
`Further lacking is any “clear, evidence-supported account” of “how the
`combination” would work. Personal Web, 848 F.3d at 994 (holding obviousness
`determination to be improper where the record lacked a “clear, evidence-supported
`account” of “how the combination” would work).
`Recently, in DSS Tech. Mgmt. v. Apple Inc., Nos. 2016-2523, 2016-2524,
`2018 (Fed. Cir. Mar. 23, 2018), the Federal Circuit reversed a PTAB decision on
`obviousness, noting that the Petitioner (Apple) simply pointed to “conclusory
`statements and unspecific expert testimony” to allege a modification would have
`been within the skill of the ordinarily skilled artisan. Apple’s attempt to repeat the
`same approach here should be rejected.
`
`d)
`
`The Proposed Combination Further Fails Because the
`PalmPilot In Jini-QS and McCandless Does Not
`Support Making the Proposed Combination
`Petitioner again improperly speculates through its declarant that “From [Jini-
`
`17
`