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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., AND LG ELECTRONICS, INC.,
`Petitioner
`v.
`UNILOC 2017 LLC,
`Patent Owner
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`IPR2018-00361
`PATENT 6,216,158
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`PATENT OWNER’S REQUEST FOR
`REHEARING UNDER 37 C.F.R. § 42.71(D)
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`IPR2018-00361
`U.S. Patent 6,216,158
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`In response to the Final Written Decision entered June 19, 2019 (Paper 22)
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`and pursuant to 37 CFR § 42.71(d), Patent Owner hereby respectfully request a
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`rehearing and reconsideration by the Patent Trial and Appeal Board of its Final
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`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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`While Uniloc agrees with the Board’s conclusion that the primary grounds of
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`the Petition (based on Jini) failed to establish obviousness, Uniloc submits the
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`Board’s findings concerning the secondary grounds (based on Riggins) warrant
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`rehearing and reconsideration. Specifically, the Board appears to have overlooked
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`or misunderstood argument and evidence presented during trial explaining why
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`Petitioner failed to meet its burden to prove Riggins discloses “accessing a
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`description of the service from a directory of services, the description of the service
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`including at least a reference to program code for controlling the service,” as recited
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`in independent claim 1. See Paper 11 at 29-34.
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`A plain reading of this claim language reveals the “palm sized computer” must
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`access from a “directory of services” a “description of the service” that must itself
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`1
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`IPR2018-00361
`U.S. Patent 6,216,158
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`include “a reference to the program code”. Because the claim language affirmatively
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`recites both a “description of the service” and “a reference to the program code” as
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`affirmative claim elements, access to a mere list of services, in and of itself, does not
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`meet this claim language. The Board appears to have adopted this understanding.
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`Paper 22 at 15-16. Nevertheless, the Board appears to have misapprehended why
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`Riggins is deficient under this plain reading of the claim language.
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`The Board summarized the mapping of Riggins that it found to be persuasive
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`as follows. For the recitation “assessing a description of the service from a directory
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`of services”, the Board pointed to the assertion that Riggins’ “Roam Page”, copied
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`below, displays the name of the service that is available. Id. at 32.
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`2
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`IPR2018-00361
`U.S. Patent 6,216,158
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`Ex. 1008 (Riggins), Figure 5. For the remainder of the limitation, “the description of
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`the service including at least a reference to program code for controlling the service”,
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`the Board stated that Riggins’ selectable service prompt is a link to the applet code
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`and, when selected, the corresponding applet code is downloaded. Id. 32-33.
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`This mapping appears to overlook the acknowledged requirement that the
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`“palm sized computer” must access a “description of the service” that must itself
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`include “a reference to the program code”. The mere listing of the name of a service
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`(e.g., “Calendaring”) does not expressly or inherently disclose accessing “a
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`description of the service” which itself includes a distinct “reference to program
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`code for controlling the service”, as recited in claim 1.
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`The Board appears to have been misled into concluding this deficiency
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`applicable to the claimed “description” itself can be cured merely by asserting that
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`clicking on one of the options of Riggins’ Roam Page causes a particular result to
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`happen. Id. The claim language is not directed to a result that occurs after accessing
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`a description. Rather, it is explicitly directed to a specifically-defined description
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`itself, which must be at once accessed from the claimed “directory of services”.
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`Riggins’ Roam Page contains no such disclosure.
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`The Board also appears to have been misled into adopting an obviousness
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`theory that has inherent inconsistencies, particularly in view of the claim
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`construction adopted by the Board. The Board acknowledged that the limitation
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`“directory of services” expressly “refine[s] where the ‘description of the service’ is
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`accessed from”. Id. at 15. In other words, the “palm sized computer” must access the
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`claimed “description” from the “directory of services”. Id. The Board held that
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`3
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`IPR2018-00361
`U.S. Patent 6,216,158
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`Riggins’ configuration data that is maintained at the master server maps onto the
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`claimed “directory of services” from which the claimed “description” must be
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`accessed. See Paper 20 at 32 (referring to the “configuration data (recited ‘directory
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`of services’) that is maintained at the master server”).
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`This mapping, however, conflicts with the Board’s acknowledgment that
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`Riggins discloses the client uses its own locally stored data to generate the features
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`displayed on the Roam Page. Id. at 31 (“Riggins explains that the web page
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`generated at the remote client, i.e., the Roam Page, is based on the configuration
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`data and downloaded applets.”). To be clear, the claim language does not recite
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`accessing a locally-stored description merely derived from data previously obtained
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`from someplace else. Rather it recites “accessing a description of the service from a
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`directory of services”. This inconsistency in the Final Written Decision further
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`warrants reconsideration.
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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: July 19, 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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`4
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`IPR2018-00361
`U.S. Patent 6,216,158
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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: July 19, 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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`i
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