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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., LG ELECTRONICS, INC.,
`HTC CORPORATION, AND HTC AMERICA, INC.,
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`Petitioner
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`v.
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`UNILOC 2017 LLC,
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`Patent Owner
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`IPR2018-00389
`PATENT 8,712,723
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`PATENT OWNER’S REQUEST FOR
`REHEARING UNDER 37 C.F.R. § 42.71(D)
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`IPR2018-00389
`U.S. Patent 8,712,723
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`In response to the Final Written Decision entered June 17, 2019 (Paper 20)
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`and pursuant to 37 CFR § 42.71(d), Patent Owner hereby respectfully requests 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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`The Board appears to have misunderstood argument and evidence presented
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`during trial explaining why Petitioner failed to meet its burden to prove Fabio’s
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`validation interval TV maps onto the “cadence window” term. See Paper 14 at 3-6
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`(distinguishing Fabio’s retrospective validation scheme); Paper 11 at 10-14; see also
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`Ex. 1006 (Fabio), Fig. 6, 4:22-40. The misunderstanding primary concerns why
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`Fabio’s validation interval TV is not “a window of time since a last step was
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`counted”, as required by Petitioner’s construction for the “cadence window” term.
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`Id. Fabio defines its TV as necessarily starting before the last step is counted.
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`To assist in understanding the key timing aspects that underscore this
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`patentable distinction, Uniloc’s briefing during trial offered detailed observations
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`concerning Fabio’s Figure 6 (reproduced below):
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`IPR2018-00389
`U.S. Patent 8,712,723
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`See Paper 11 at 12 (annotating and discussing Fig. 6 of Fabio, Ex. 1006). Fabio states
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`that because TR(K) falls within the interval shown as TV, as shown in Figure 6, the
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`last step recognized (TR(K-1)) is validated and hence counted. Ex. 1006 (Fabio), Fig.
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`6, 4:22-40.
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`At least in this respect, Fabio’s validation scheme is retrospective in that it is
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`used to validate only the last step. Id. Fabio’s retrospective validation scheme, when
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`properly understood, is distinguishable from the “cadence window” limitations for
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`the reasons articulated by Uniloc during trial. See, e.g., Paper 14 at 3-6; Paper 11 at
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`10-14.
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`The Board appears to have been misled by Petitioner into adopting an
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`incorrect understanding of Fabio. See, e.g., Paper 20 at 30-31. Under Petitioner’s
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`incorrect interpretation of Fabio, the step being validated by a given TV is not the
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`last step (as disclosed) but rather the current step. From the perspective of Fabio’s
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`Figure 6 (copied above), Petitioner argued that step TR(K) is itself validated and
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`IPR2018-00389
`U.S. Patent 8,712,723
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`counted if and when it occurs within the validation interval TV shown in Figure 6.
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`Id. The Board appears to have misunderstood Fabio, and the argument and evidence
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`concerning the same, in adopting such an interpretation. Id.
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`Petitioner’s flawed interpretation ignores the undisputed and demonstrable
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`fact that Fabio mathematically defines TV with respect to the instant of recognition
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`of the immediately-preceding step. See Paper 14 at 3-6; Paper 11 at 10-14; see also
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`Ex. 1006 (Fabio), Fig. 6, 4:22-40. Applying Petitioner’s flawed interpretation to the
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`TV definition, at least the first and second steps (shown in Figure 6 as TR(1) and
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`TR(2), respectively) would necessarily both be excluded from the total count of valid
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`steps. The exclusion would necessarily occur even if the duration that lapsed
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`between the first step TR(1) and the second step TR(2) is substantially homogeneous
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`with other steps that are counted as valid, as shown in Figure 6 of Fabio. This result
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`is inconsistent with the express disclosure in Fabio and its focus on a retrospective
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`analysis that considers the immediately preceding step.
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`The exclusionary flaw in the interpretation adopted by the Board is best
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`explained by reference to the TV definition itself. Ex. 1006, 4:40. Among other
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`requirements, the equations defining the start and stop times for TV both depend on
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`what Fabio refers to as TR(K-1), which is the instant the preceding step was
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`recognized. Id. The value TR(K-1) cannot be determined for the first step TR(1)
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`because there is no immediately preceding step. Accordingly, applying the
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`understanding the Board appears to have adopted, there would be no basis to
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`calculate the validation interval TV ostensibly used to determine whether the first
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`U.S. Patent 8,712,723
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`step TR(1) itself should be counted as valid. As a result, the first step TR(1) would
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`always be excluded from the count of valid steps.
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`More importantly, a similar exclusion would also apply to the second step
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`TR(2) under Petitioner’s interpretation. See Paper 14 at 3-6; Paper 11 at 10-14; see
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`also Ex. 1006 (Fabio), Fig. 6, 4:22-40. This is at least because the equations for
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`calculating the start and stop times for TV both further depend on what Fabio refers
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`to as ΔTK-1, which is defined as the duration since an immediately preceding step
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`(i.e., the duration between TR(K-2) and TR(K-1) of Figure 6). Id. This value is
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`undefined for the first step TR(1) because there is no preceding step from which a
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`duration can be calculated. Consequently, it would not be possible to determine
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`whether the second step TR(2) itself falls within a validation interval TV under
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`Petitioner’s interpretation.
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`This exclusionary flaw resulting from Petitioner’s interpretation and
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`applicable to both the first and second steps (TR(1) and TR(2)) is particularly glaring
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`given (1) the significance placed in Fabio on accurately counting the total number
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`of steps, (2) the fact that two distinct steps and a measured duration between them
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`have been recognized by this point, and (3), the fact that the Fabio counting scheme
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`purports to be a step-to-step consideration. See Paper 14 at 3-6; Paper 11 at 10-14;
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`see also Ex. 1006, 3:1, 14-15.
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`The exclusionary flaw resulting from Petitioner’s interpretation does not exist
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`when Fabio is correctly understood. This is because, under the actual scheme set
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`forth in Fabio, a retrospective analysis is applied once a sequence of steps has been
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`established. For example, a proper understanding of Fabio reveals that the second
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`U.S. Patent 8,712,723
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`step TR(2) can be retrospectively validated, and hence counted, when the third step
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`is recognized within its respective TV. Id.
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`The possible inclusion of the second step TR(2) within the count of valid steps
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`may be best explained by borrowing from the illustrated TV shown in Figure 6. If
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`the first, second, and third steps in a sequence are represented as TR(K-2), TR(K-1),
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`and TR(K), respectively, then the second step would be retrospectively validated and
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`counted—and hence not excluded—if and when the third step occurs within the TV
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`shown in Figure 6. Id. While Fabio contemplates retrospectively validating the
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`second step TR(2) for inclusion within the total count of valid steps, based on the
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`timing of the third step, this is rendered impossible and necessarily excluded under
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`Petitioner’s flawed interpretation.
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`The Board also appears to have misunderstood the statement in Fabio that
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`expressly distinguishes between the current step recognized and the last step
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`recognized as follows: “the last step recognized is validated if the instant of
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`recognition of the current step ….” Paper 20 at 32 (quoting Ex. 1006 (Fabio), 4:35-
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`43) (emphasis added). Fabio introduces this statement with the phrase “more
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`precisely”. Ex. 1006 (Fabio), 4:35-36. The Board’s Final Written Decision appears
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`to have interpreted the last step recognized and the current step recognized to be one
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`and the same in this context. Paper 21, 32. Fabio would not have explicitly
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`distinguished these two different steps as last and current, and characterized such a
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`distinction as using “more precise[]” language, if the disclosed validation pertained
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`to the current step and not the last step as disclosed.
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`IPR2018-00389
`U.S. Patent 8,712,723
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`For the foregoing reasons, the Board appears to have misunderstood that
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`Fabio’s validation scheme is retrospective in nature and overlooked argument and
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`evidence directed to the same conclusion. When properly understood, Fabio’s
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`retrospective validation scheme is distinguishable from the “cadence window”
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`limitations, for the reasons articulated by Uniloc during trial. See, e.g., Paper 14 at
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`3-6; Paper 11 at 10-14.
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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 17, 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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`IPR2018-00389
`U.S. Patent 8,712,723
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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 17, 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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