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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC. and LG ELECTRONICS, INC.,
`Petitioners,
`
`v.
`
`UNILOC 2017, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00361
`Patent 6,216,158 B1
`____________
`
`Record of Oral Hearing
`Held on April 11, 2019
`
`
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`
`
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`Case IPR2018-00361
`Patent 6,216,158 B1
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`
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`ANDREW S. EHMKE, ESQUIRE
`SCOTT J. JARRATT, ESQUIRE
`JAMIE MCDOLE, ESQUIRE
`Haynes and Boone, LLP
`2323 Victory Avenue
`Suite 700
`Dallas, TX 75219
`(214) 651-5116
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`Ryan Loveless, ESQUIRE
`Brett Mangrum, ESQUIRE
`James Etheridge, ESQUIRE
`Jeffrey Huang, ESQUIRE
`Etheridge Law Group
`P.O. Box 20969
`Charleston, SC 29413
`(843) 614-0007
`
`
`
`
`The above-entitled matter came on for hearing on Thursday, April 11,
`
`2019, commencing at 10:30 a.m., at the Texas Regional Office of the U.S.
`Patent and Trademark Office, 207 South Houston Street, Suite 159, Dallas,
`Texas.
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`Case IPR2018-00361
`Patent 6,216,158 B1
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`P R O C E E D I N G S
`- - - - -
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` THE CLERK: All rise.
` JUDGE QUINN: Good morning, everyone. Please be
`seated. One moment. I'm having trouble connecting my
`computer. Let's start old school here. All right. We're on
`the record. This is IPR2018-361 concerning Patent No.
`6,216,158. I am Miriam Quinn, Judge Miriam Quinn. With me
`are Judges Jennifer Bisk and Charles Boudreau who are on the
`screen appearing remotely. We have allotted each party to
`argue for 45 minutes. Each side can reserve time for
`rebuttal. This case is styled Apple, Inc. and LG Electronics,
`Inc. versus Uniloc 2017. At this point I'd like to hear from
`petitioner who is making an appearance for the record.
` MR. EHMKE: Your Honor, my name is Andy Ehmke. I
`am lead counsel on behalf of Apple, the petitioner. Joining
`me today are Scott Jarratt and Samuel Dresden. Mr. Jarratt
`will be speaking on behalf of petitioner today. We also have
`in-house representative from Apple, Benjamin Huh.
` MR. SCHULZ: Co-petitioner for LG and backup
`counsel, Bradford Schulz.
` JUDGE QUINN: Anybody else for Petitioner's side?
`Okay. For patent owner who do we have?
` MR. MANGRUM: Good morning, Judge Quinn and Your
`Honors. (Inaudible). My name is Brett Mangrum. With me is
`Ryan Loveless. We're with the Etheridge Law Group
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`representing Uniloc and I will be presenting on behalf of
`Uniloc today.
` JUDGE QUINN: Excellent. Okay. Let me do some
`housekeeping here. First of all, the instruction I always
`give is that there will be no standing objections. If you
`have an objection to your opponent's slides you may give that
`argument during your argument time.
` Second, the demonstratives are only here to aid us
`in understanding your arguments but they do not constitute
`evidence so we are not going to rely on any demonstratives as
`evidence in the record. There is an objection in the record -
`- well, we received an email from patent owner's counsel
`objecting to Slides 36, 37, 40, 41, 42, 43 and 44 of
`Petitioner's demonstratives and because we understand that
`Petitioner objects to those objections. Having reviewed the
`material in those slides we are overruling the objection as
`they are responsive to an issue of fact raised in the patent
`owner response concerning whether it was impractical or
`otherwise unfeasible to implement a web browser in a personal
`digital assistant or PDA.
` So let's start with Petitioner. You have the
`burden and you may reserve up to half your time for rebuttal.
` MR. JARRATT: Thank you, Your Honor. Like Andy
`said, I'm Scott Jarratt. I also represent Petitioner Apple.
`I'd like to reserve ten minutes, Your Honor.
` JUDGE QUINN: Okay.
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` MR. JARRATT: All right. So --
` JUDGE QUINN: Hold on. You may proceed.
` MR. JARRATT: Thank you, Your Honor. So in this
`case there's two grounds of rejection. There's the Jini QS
`ground and there's also the Riggins ground. Now let's start
`with the Jini QS ground.
` So what's the 158 patent about? So the 158 patent,
`if you look at the summary of the invention it states that
`it's about controlling networking services using palm-sized
`computer. And a network service in this context is some sort
`of functionality that's on one computer in a network that
`other devices in the network can utilize and control. And the
`example in the 158 patent is PowerPoint service where a
`PowerPoint application is running on one computer but other
`devices in the network can control or utilize that PowerPoint
`functionality and that's even if those client devices couldn't
`actually run the PowerPoint device themselves because of low
`specifications, memory, et cetera.
` So one notable thing about the 158 patent is that
`when it discusses this network service functionality it notes
`that it actually relies upon some pre-existing technology
`already developed by Sun Microsystems and that was called GE
`and GE is basically just java code that creates this
`infrastructure to allow the devices to utilize network
`services.
` JUDGE QUINN: But it seems to me that the 158
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`although it describes the Jini software or the Jini middleware
`as part of the disclosure that that's just an embodiment and
`it's actually describing middleware in general; isn't that
`right?
` MR. JARRATT: Right. I agree. But Jini is the
`main embodiment and that most of the -- whenever there's
`discussion of the network services functionality like
`accessing a directory of services or moving code it says you
`can implement that using Jini. So the -- and even claims and
`some of the dependent claims, it claims the use of Jini for
`this network service functionality.
` And so if we look at the prosecution history at the
`bottom of Slide 4, so why was this patent allowed? So the
`examiner indicated that all claims would be allowable if they
`included a reference to a palm-sized computer. So the exam --
`the claims were allowed based upon this idea of network
`services because -- I mean that makes sense because the patent
`admits itself that that could be carried out using Jini.
`Instead, the claims are allowed because they included a
`reference to a palm-sized computer.
` And so going back to the summary of the invention,
`if controlling networking services, which we know can be done
`using Jini, we'll just do that using a palm-sized computer.
`So controlling Jini with a palm-sized computer. So if we move
`to Slide 5, the first piece of art in the petition is this
`Jini QS article and it teaches that exact thing, using Jini
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`with a palm-sized computer, Palm Pilot in this case. The Jini
`QS, it's an article from Computer World and it basically just
`describes the features and functionality of Jini and it gives
`a variety of examples of the devices that can be used with
`Jini and one of those is a Palm Pilot.
` Look at Slide 6. This is just a close-up of that
`same figure showing the Palm Pilot with the Jini code on it.
`All right. So let's -- if we move to Slide 8. So one of
`patent owner's arguments against the Jini QS article is that
`it's not enabled. It's simply a marketing piece. It's
`forward-looking and that because of that it's not prior art.
`Well, the law is clear on this issue is that when a reference
`is used in a 103 combination it doesn't have to be enabled to
`be considered prior art for everything that it actually
`teaches and here Jini QS teaches using Jini with a Palm Pilot.
` But even if the law weren't -- if this wasn't the
`case with the law Jini QS is still enabled. There's a lot of
`evidence in the record that shows that Sun Microsystems
`actually publicly produced lots of technical documents about
`Jini such as a source code, white papers --
` JUDGE QUINN: Well, the issue is not whether Jini
`as a software is enabled as it is the Jini QS or the Jini Quick
`Study article that you're using as a print publication here.
`That's what we're looking at as prior art evidence.
` MR. JARRATT: Right. So, yes, the -- I guess going
`-- take a couple steps back. The Jini QS article is a printed
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`publication because it was publicly available in at least one
`library.
` JUDGE QUINN: Well, I don't think anyone is
`contesting that it is a printed publication.
` MR. JARRATT: Okay.
` JUDGE QUINN: The argument as I understand it is
`that as a printed publication itself the Jini Quick Study
`appearing in the Computer World article, looking at that four
`corners it's not enabled.
` MR. JARRATT: Yes, and so the standard is whether a
`person of ordinary skill in the art reading this reference
`would be able to understand it and have to use undo
`experimentation, correct. And so no experimentation would be
`needed in this case because Sun had already published all of
`these technical documents about how to implement the very
`thing that's showing in the Quick Study article. There's
`source code. There's technical white papers, et cetera.
` JUDGE BISK: But can you rely on those other
`documents or do you have to show that in the four corners of
`the article it would be enabled?
` MR. JARRATT: Well, I believe in the petition we
`did -- oh, in terms of enablement. I think enablement --
` JUDGE BISK: Yeah.
` MR. JARRATT: -- is from the point of view of
`person of ordinary skill in the art and so all of those other
`documents are within the knowledge of a person of ordinary
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`skill in the art and so they take that knowledge with them
`when they read the Jini QS article.
` JUDGE BISK: Okay.
` MR. JARRATT: So I think the bottom line is the
`Jini QS article is prior art under the law and the facts. All
`right. So let's -- moving onto Slide 10. So this is Claim 1
`of the 158 patent and it's about a method for controlling a
`service on a network using a palm-sized computer.
` JUDGE QUINN: What is the construction for the
`“description of the service”?
` MR. JARRATT: What is --
` JUDGE QUINN: What is the construction for a
`“description of the service”?
` MR. JARRATT: Well, I don't believe this term was
`construed by either party so in terms of the broadest ordinary
`meaning -- (inaudible) plain ordinary meaning, Your Honor?
` JUDGE QUINN: What is your contention as to what is
`the claim construction for “description of the service”?
` MR. JARRATT: So something that describes a service
`and if you look at the claim the second part of this
`limitation actually shows you what is required of the
`description of the service. It says description of the
`service including at least a reference to program code.
` JUDGE QUINN: Well, you said first that it's
`something that describes the service. What is that “something”?
`What does it need to be?
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` MR. JARRATT: So I think the claim is including at
`least a reference to program code. So I think the description
`of the service at a bare minimum, according to the claim, just
`needs to include a reference to programming code.
` JUDGE QUINN: That pertain to what it includes, but what
`is it?
` MR. JARRATT: It's a -- it's something that
`describes the service. The claim is not specific about what
`are the meets and bounds of a description of the service, just
`something that describes the service.
` JUDGE QUINN: Well, we have to read the claims in
`the context of the specification. So if this is directed to
`software then what is a description of service in the software
`as it's described in the specification?
` MR. JARRATT: To answer your question I think first
`we have to look at the claim and I think it tells us in the
`claim it includes a reference to program code. But beyond
`that the claim language is broad and I believe it's broader
`than the actual embodiments in the specification. So we can't
`necessarily read the embodiments in the specification into the
`claim. So when you're --
` JUDGE QUINN: But you can't read the claim so broad
`as to disembody it from the actual invention that is
`described.
` MR. JARRATT: Agreed.
` JUDGE QUINN: So I'm asking you again, a
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`“description of the service” in the context of the specification
`is what?
` MR. JARRATT: It's something -- it's information
`that describes a service that's in a directory of services.
` JUDGE QUINN: Okay.
` MR. JARRATT: All right. So looking now to the
`Jini QS reference, so the middle figure in the Jini QS
`reference gives a great example of how users utilize network
`services and find network services and then utilize them. So
`the example provided in the Jini QS is a laptop -- a user
`plugging in a laptop or other device --
` JUDGE QUINN: Well, let's walk through that --
` MR. JARRATT: Yeah.
` JUDGE QUINN: -- because I'm confused now that
`patent owner has raised arguments about this as to what
`exactly is accessing, what is the directory of services and
`what is the description of the service. So --
` MR. JARRATT: Sure.
` JUDGE QUINN: -- what in your contentions in your
`petition, what actually accesses?
` MR. JARRATT: All right. So do you mind if I walk
`through this example and then we can --
` JUDGE QUINN: I want you to walk through the
`petition.
` MR. JARRATT: The petition or --
` JUDGE QUINN: The petition.
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` MR. JARRATT: Okay.
` JUDGE QUINN: What you contend in your petition.
` MR. JARRATT: All right. Would you like me to pull
`up the petition or --
` JUDGE QUINN: I have it in front of me so however
`you want to proceed.
` MR. JARRATT: Okay. All right. So first -- all
`right. So let's -- I can pull up the petition.
` JUDGE QUINN: It's at page 27.
` MR. JARRATT: Page 27. All right. All right.
`Let's get this full screen here. All right. So page 27
`petition. Okay. So on page 27 is Claim 1.1 and that's the
`accessing description limitation. So we have a -- the
`petition points out that in this Jini QS service a user plugs
`in their laptop or other device and the user then requests all
`the services that are available on the network and as a result
`they're shown icons corresponding to all the available
`services.
` JUDGE QUINN: Okay. So stop there. So on page 28
`you say Jini QS further teaches that the user request accesses
`descriptions to the available services via the lookup service,
`right?
` MR. JARRATT: Yes.
` JUDGE QUINN: So what's your “accessing”? What
`exactly is that access? What is that the user request?
` MR. JARRATT: So the user is requesting what are
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`the available services on the network. And so the Jini -- the
`lookup server, it's this directory of services that keeps
`track of all the --
` JUDGE QUINN: Well, what exactly is that? I mean
`you're -- so you're telling me what Jini QS says, and Jini QS
`doesn't really say much. Is it the Palm Pilot that has the
`ability to discover the services and that is the access? Is
`it something the user sees on the screen and they see a
`listing of the services? Which one is it?
` MR. JARRATT: I think -- it's the user requesting
`what are the services that are available or accessing the
`information that's contained in the lookup service.
` JUDGE QUINN: How does the user do that?
` MR. JARRATT: Well, if we look at -- Jini QS
`teaches that a user requests the services that are available
`and the icons appear on the screen. I believe there's some
`sort of discovery protocol because once -- when the user plugs
`in the device it has the Jini code on the device and this Jini
`code sends a discovery request to the lookout service and then
`all of the available services are then displayed to the user.
`So the user is accessing this information that's contained in
`the lookup service.
` JUDGE QUINN: So the accessing is being performed
`by some Jini code in the device that is discovering the
`services available from the lookup service?
` MR. JARRATT: Yes.
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` JUDGE QUINN: Okay. So what is then the “directory
`of services”?
` MR. JARRATT: The directory of services is this
`lookup directory and it's basically a directory of services
`that keeps track of all available services and it stores lots
`information about each of the services and one of the things
`it stores is pointer to code for the services.
` JUDGE QUINN: Okay. So go back. So the user has
`this Jini code that's doing discovery. It goes to the lookup
`directory you said --
` MR. JARRATT: Yes.
` JUDGE QUINN: -- which is a directory of services.
` MR. JARRATT: Correct. p
` JUDGE QUINN: So what is stored there that
`constitutes the service description?
` MR. JARRATT: I believe there's -- the lookup
`service stores lots of different pieces of information about
`each of the services. That's the central repository. It
`tells the user these are all the services that are available.
`So Jini QS teaches that one of the things that is stored is a
`pointer to code for each of the services and then when the
`user requests a specific service that code is then downloaded
`to the client device.
` JUDGE QUINN: Right, but the claim says “accessing a
`description of the service from the directory of services” --
` MR. JARRATT: Yes.
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` JUDGE QUINN: -- and we stated earlier that the
`“description of the service” is information that describes the
`service.
` MR. JARRATT: Yes.
` JUDGE QUINN: Okay. So what information that
`describes the service is in the lookup directory?
` MR. JARRATT: It's the pointer to code for a
`specific service. That is also information that describes the
`service.
` JUDGE QUINN: How is the pointer to code also a
`description of the service? As I see it it's a different
`thing.
` MR. JARRATT: It's information related to the
`service. It's information that you need to access that
`service.
` JUDGE QUINN: But how does the pointer to code
`describe the service?
` MR. JARRATT: It's descriptive of the service in
`that it tells you where the code for that service is located.
` JUDGE QUINN: Okay. So what -- in your petition
`you describe icons as being --
` MR. JARRATT: Correct.
` JUDGE QUINN: -- a description of the service. How
`does that fit in into what is stored at the lookup directory
`and the pointers that you just referred to as a description of
`the services?
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` MR. JARRATT: Well, I think the user access is a
`lot of different pieces of information about -- that could be
`constituted the description of services. Certainly they
`access the icons. They access the lookup directory that
`includes the pointers to services. So --
` JUDGE QUINN: So you're saying the icon is stored
`at the lookup directory?
` MR. JARRATT: It could be.
` JUDGE QUINN: Do you have a contention one way or
`another?
` MR. JARRATT: I don't think Jini is explicit in
`saying that but that is the -- some of the information. The
`user plugs in their device. What they're requesting -- what
`are the devices that are available on the service and that
`information is stored at the lookup service and so then they
`choose which service they want and then access the lookup
`directory again to get the code for that service. So there's
`multiple accesses. There's multiple pieces of information
`that describe the service stored in the lookup.
` JUDGE QUINN: Okay.
` MR. JARRATT: All right. So let's go back to our
`presentation here. All right. So let's look on Slide -- all
`right. Let's go to Slide 15 for the download limitation.
`Actually, excuse me, Slide 16. So the next limitation in
`Claim 1 is downloading the program code to the palm-sized
`computer. And this is exactly what Jini teaches, Jini QS
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`teaches, that a laptop or other device was plugged in. The
`user selects which service they want and then the server
`instantly sends the proxy code back to the device and this
`proxy code is the claimed program code.
` And one of the things patent owner argues is that -
`- well, first they argue that the thing that the proxy code is
`downloaded to is the printer then they changed their position
`and now they're arguing that only the laptop the code is being
`sent down to. But Jini is clear that its purpose is to allow
`a lot of different types of devices to connect to the network
`and one of those devices it shows is a Palm Pilot. So if a
`user plugs in a laptop or other device then the code is
`downloaded to that device.
` All right. So moving to Slide 18. So patent owner
`is also arguing that the Jini's proxy code is not the claimed
`program code and they rely on Dr. Easttom’s
`declaration who cites to a couple of undated websites that are
`not in the record. But for this one you don't actually need
`to look at the extrinsic evidence to determine if this
`limitation is met.
` If you look at Claim 1 it tells us exactly what is
`required of this program code. It says one, it says the
`program code is for controlling the service and, two, the code
`has to be downloaded to the palm-sized computer and that's
`exactly what Jini QS teaches. It says the proxy code is for
`controlling the service such as issuing printing instructions
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`Case IPR2018-00361
`Patent 6,216,158 B1
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`and it also says the proxy code is downloaded to the client
`device.
` And so I'd like to note that patent owner didn't
`actually construe the term "program code" to include anything
`more than what's already required by the claim. And Jini QS,
`it's proxy code is program code that does the exact thing
`that's required by the claim.
` All right. 27 minutes. All right. So what --
` JUDGE QUINN: One thing about that limitation that
`jumps out at me is that the claim has two different kinds of
`codes here. There's the program code and then there's the
`application.
` MR. JARRATT: Correct.
` JUDGE QUINN: So when it says program code is
`downloading it cannot mean the application.
` MR. JARRATT: That's exactly right, Your Honor. So
`the program code in this case is the little piece of code that
`actually sends instructions to the service, to the application
`that's running on a different server machine and that's what
`the proxy code is in the Jini QS. It's the little piece of
`code that's on the client devices that sends instructions to
`the server device, whatever is running the service.
` I think -- let's see. So going to Slide 20, I
`think this is the last limitation in Claim 1 which is wherein
`the service controlled application cannot be executed on the
`palm-sized computer. So if we move to Slide 21. So the
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`Case IPR2018-00361
`Patent 6,216,158 B1
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`petition and declaration established that it would have been
`obvious to use Jini QS's Palm Pilot to control an application
`that cannot actually be executed on the Palm Pilot itself. So
`the way this accommodation is put together we have Jini QS
`teaching that one type of service is a software service and
`then it also teaches that PDAs have very low memory so they're
`not capable of very much.
` Then we move to Slide 22 and this is the Arnold
`reference which is actually by one of the inventors of Jini
`and it teaches that one type of service that you can control
`is an application and you can send control commands to it
`using, for instance, RMI.
` And finally in Slide 23 we have this McCandless
`article that teaches that when you are controlling an
`application from a PDA that PDA will not necessarily be able
`to run that application itself because it's (inaudible) and
`instead the application has to run on a high performance
`computer. And so -- and Dr. Hough testified that a person of
`ordinary skill in the art would have been motivated -- found
`this predictable and obvious.
` JUDGE QUINN: So why do you need McCandless to
`teach that limitation?
` MR. JARRATT: I think it's just -- it's almost
`icing on the top, Your Honor, because Jini already does teach
`us that in controlled software and that PDAs have very low
`memory. But I think just for the explicit stating of this
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`Case IPR2018-00361
`Patent 6,216,158 B1
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`application cannot run on a PDA, just that idea -- showing
`that that idea was already known in the art of an application
`has to actually be run on a high performance computer because
`PDAs just don't have, you know, enough specs to do that.
` JUDGE QUINN: But you're not relying on it for the
`contention that the combination of using a Palm Pilot with a
`system in which you need to remotely control a PowerPoint that
`that would have been something that was already being thought
`about, a particular implementation.
` MR. JARRATT: Right. I think we're relying on
`McCandless just for the notion that a small -- just a part of
`that of that when you have an application that is the service
`that the Palm Pilot itself might not be able to run it and so
`just for that piece of the implementation.
` JUDGE QUINN: Well, I mean I read in your petition
`that you do more than that. You're trying to use it for the
`technical aspect of that implementation which is: the
`application is running in this other computer and the output
`is sent to the Palm Pilot. So that's actually a part of the
`limitation. It's not just, oh, people know that applications
`can run there but not here.
` MR. JARRATT: Well, to address the portion of the
`application controlling the application, we actually have the
`Arnold reference teaches that when you have network services
`one type of service could be an application. They explicitly
`-- we use this also for the sending control commands
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`Case IPR2018-00361
`Patent 6,216,158 B1
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`limitation that Arnold explains in detail how you can send
`these RMI in and out control commands to an application to
`control it as a service. McCandless is just simply saying
`that it was already known that that application not
`necessarily could not run on a PDA.
` JUDGE BISK: I'm a little confused about this as
`well. Can you just point in the claim to the part that you
`relied on McCandless for? Reading the petition I got the
`impression that it was more -- almost a reason to combine or a
`reason to make changes to Jini, but it sounds like that's not
`exactly right. So can you just point to the claim language
`that you're relying on McCandless for?
` MR. JARRATT: Sure. So we have where in the
`service controls an application cannot be executed on a palm-
`sized computer. So we have a palm-sized computer from Jini
`and we have an application from McCandless with the explicit
`notion of that application can now be executed on a palm-sized
`computer, I don't think either McCandless or Jini say that
`explicitly. I think it was certainly known in the art and
`that's what McCandless shows that that concept a person of
`ordinary skill wouldn't -- you know, they already knew that
`that was the case.
` JUDGE BISK: Okay. Thank you.
` MR. JARRATT: All right. If there's no more
`questions on Jini I'd like to move on to the Riggins ground.
`All right. So the second challenge in the petition is this
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`Case IPR2018-00361
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`Riggins ground and let's move -- again, first, on Slide 26
`let's again look at the access and description limitation. So
`27, so Riggins like the 158 patent also discloses this concept
`of using networking services to remotely access applications
`and the Riggins example is a traveling user who is carrying a
`lightweight network computer and he wants to access and is
`accessing an email application on his work computer.
` JUDGE QUINN: Yeah, let's do that walkthrough again
`because this also has some issues for me.
` MR. JARRATT: Sure.
` JUDGE QUINN: So in your petition you say at page
`62 that a user, a user, can select a particular one of the
`services offered by the roam page. Okay. So what is the --
`is the accessing being performed by a user?
` MR. JARRATT: Yes, the -- yes, the accessing is
`performed by a user. When the user brings up this roam page
`which is basically a webpage -- the user is carrying a network
`computer and when they want to determine what are the
`available services they access this roam page which is
`basically a website with descriptions of all the available
`services and then the user then selects on a particular
`service, such as the email service or the calendar service,
`and when they do that selection the particular applet which is
`program code is downloaded.
` JUDGE QUINN: So go back.
` MR. JARRATT: Sure.
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