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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.,
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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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`IPR2018-00394
`PATENT 6,622,018
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`PATENT OWNER’S REQUEST FOR
`REHEARING UNDER 37 C.F.R. § 42.71(D)
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`IPR2018-00394
`U.S. Patent 6,622,018
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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 overlooked or misunderstood argument and
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`evidence presented during trial explaining why Petitioner failed to meet its burden
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`to prove Ben-Ze’ev discloses “broadcasting a message, said message for locating
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`remote devices within range of said transceiver”, as recited in independent claims 1
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`and 11.
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`It was undisputed at trial that broadcasting is a term of art and that Ben-Ze’ev
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`does not expressly disclose broadcasting. The obviousness theory adopted by the
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`Board was essentially that the interrogating in Ben-Ze’ev inherently discloses the
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`broadcasting limitations, even without using the broadcasting term of art. Paper 20
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`at 7-9. The record evidence, including the Broadcasting Standard itself, which the
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`Board does not mention in its Final Written Decision, reveals that a person of
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`1
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`IPR2018-00394
`U.S. Patent 6,622,018
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`ordinary skill in the art at the time of the invention would have readily recognized
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`that broadcasting has a distinct technical meaning that is different from the
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`conventional interrogating disclosed in Ben-Ze’ev.
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`The parties essentially agreed on that “broadcasting” in the context of the ’018
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`patent refers to a single transmission of a message that is itself receivable at once by
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`multiple devices. See, e.g., Paper 10 at 6 (“It is significant that the broadcast message
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`640 is referenced here (and elsewhere in the specification) in the singular, yet it is
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`receivable by multiple devices”) (citing Ex. 1001, 8:33-36); id. at 6-7 (citing
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`Microsoft Computer Dictionary definitions submitted by Petitioner); Ex. 2001 at
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`¶45; see also Paper 13 at 3 (“the plain and ordinary meaning of ‘broadcasting a
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`message’ in the context of the ’018 Patent is generally understood as transmitting a
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`singular message to multiple devices”); Paper 20 at 5 (concluding the parties appear
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`“to adopt the same general understanding for ‘broadcasting’”). The Board appears
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`to have overlooked argument and evidence distinguishing this acknowledged
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`understanding of broadcasting from interrogating.
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`Uniloc’s expert, Dr. Easttom, testified that a person of ordinary skill in the art
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`would readily recognize interrogating and broadcasting are distinguishable terms of
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`art at least because interrogating involves communicating with an individual
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`machine, one at a time. Id. at ¶ 49; see also Paper 10 at 7-8 (citing the same). Dr.
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`Easttom offered the following technical dictionary definitions to support his
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`testimony concerning the distinct meaning of interrogation from the perspective of
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`a person of ordinary skill in the art.
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`2
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`IPR2018-00394
`U.S. Patent 6,622,018
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`Ex. 2001 ¶¶ 46-47; see also Paper 10 at 7-8 (citing the same). Petitioner offered no
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`controverting technical dictionary definition for interrogation in its Reply.
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`As shown above, interrogate is defined in the context of computer science to
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`mean “to give or send out a signal to a device for triggering an appropriate response.”
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`Ex. 2001 ¶¶ 46-47. Dr. Easttom found it significant that these definitions consistently
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`define interrogate (in relation to computer science) to refer to communication with
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`an individual machine, one at a time. Id. ¶¶ 46-50. For communication with multiple
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`machines, each is interrogated sequentially in an interrogation process also referred
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`to as polling. Id.
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`3
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`IPR2018-00394
`U.S. Patent 6,622,018
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`To further support his conclusion that a person of ordinary skill in the art
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`would readily recognize a meaningful distinction between broadcasting and
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`interrogating, Dr. Easttom quoted a passage from the RFC 919 Broadcasting
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`Standard, which he summarized as describing certain disadvantages of interrogation
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`and its polling derivative. Id. ¶ 50; see also Paper 10 at 7-8 (citing the same).1 As
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`Dr. Easttom observed, the Broadcasting Standard differentiates a polling form of
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`interrogation, in part, as polling all possible neighbors until one responds. Id.
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`Individually polling all possible neighbors is achievable because there is a finite
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`number of possible addresses for devices grouped together on a network. Id. The
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`Broadcasting Standard expressly disparages such interrogation and distinguishes it
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`from the “broadcasting” set forth in the Broadcasting Standard. Id. Rather than
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`contacting devices individually, broadcasting “provides a fast and simple way for a
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`host to reach all of its neighbors.” Id.
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`The Board also appears to have overlooked Dr. Easttom’s conclusion that
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`Ben-Ze’ev use of the word interrogate only confirms there is a meaningful
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`distinction, as the Broadcasting Standard itself confirms. Ex. 2001 ¶¶ 41, 48-52.
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`Ben-Ze’ev states the remote controller “periodically interrogates the existence of all
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`appliances in the vicinity.” Id. (quoting Ex. 1007, 10:49-51). This passage is copied
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`in its fuller context below:
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`1 As Dr. Easttom correctly noted, a complete copy of RFC 919 Broadcasting
`Standard is publicly available at: J. Mogul, Broadcasting Internet Datagrams, RFC
`919, SRI Network Information Center, Oct. 1984, https://tools.ietf.org/html/rfc919.
`Ex. 2001 ¶ 50 n.3.
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`4
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`IPR2018-00394
`U.S. Patent 6,622,018
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`According to one embodiment of the invention, the remote
`controller periodically interrogates the existence of all appliances
`in its vicinity. More particularly, the remote controller initiates a
`signal containing the remote controller device code, and an
`interrogation code asking the device to identify itself. Upon
`receipt and identification of the signal, the appliance sends to the
`remote controller an identification signal including the device
`code of the remote controller and the appliance identification
`Section 41.
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`Ex.1007, 10:49-57.
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`As Dr. Easttom correctly concluded, this passage of Ben-Ze’ev provides a
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`description of interrogating that is similar to the disparaged polling form
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`interrogation in the Broadcasting Standard quoted by Dr. Easttom. Specifically, the
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`remote controller is described as “asking the device”—in the singular— to identify
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`itself. Ben-Ze’ev consistently and repeatedly describes interrogating elsewhere as a
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`signal sent from the remote controller to “to a specific appliance”, such as a garage
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`door. Id. 12:49-64, 14:7-11. Ben-Ze’ev similarly uses a time limit for responding
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`that is applicable to only “a device” in the singular. Id. 11:4-7.
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`Accordingly, as Dr. Easttom concluded, Ben-Ze’ev does not interrogate
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`multiple devices with a single transmission. Rather, an interrogation transmission
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`interrogates a singular device (as the word implies). This fits Dr. Easttom’s
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`definition for interrogation, which he bases on his own personal knowledge as an
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`expert and which he supports with quotations from multiple references, including
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`the Broadcasting Standard.
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`The Board’s Final Written Decision appears to have overlooked at least the
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`above-referenced testimony of Dr. Easttom and the ample evidence he cited in
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`5
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`IPR2018-00394
`U.S. Patent 6,622,018
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`support of his opinions.
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`The Board also appears to have overlooked the rebutted fact that ’018 patent
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`disparages and distinguishes an interrogation approach that involves grouping
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`devices into a network of some sort. See Paper 10 at 9-11; see also Ex. 1001, 1:53-
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`56. Ben-Ze’ev discloses that for its “present invention” to operate as intended, all
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`appliances are grouped to one local network to enable the remote controller to
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`identify each appliance. Id. (citing Ex. 1007, 8:65-9:2). This disclosure in Ben-Ze’ev
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`fits the description of the polling disparaged and distinguished in the Broadcasting
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`Standard quoted by Dr. Easttom. Id. The quoted paragraph from the Broadcasting
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`Standard states that “[w]hen a host needs information that one or more of its
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`neighbors might have, it could have a list of neighbors to ask, or it could poll all of
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`its possible neighbors until one responds.” Ex. 2001 ¶ 50. In the latter example,
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`individually polling all possible neighbors is achievable because there is a finite
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`number of possible addresses for devices grouped together on a network. The ’018
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`patent disparages the “shortcomings” of prior approaches that required grouping
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`devices into a network to enable centralized control and communication. See Paper
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`10 at 9-11; see also Ex. 1001, 1:53-56.
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`The Board’s conclusion that Ben-Ze’ev’s adaptive remote controller
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`necessarily broadcasts an interrogation signal to all appliance in the vicinity not only
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`overlooks argument and evidence identified herein, it is also contradicted by the
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`express disclosure in Ben-Ze’ev itself. Compare Paper 20 at 7-8 with, e.g., Ex. 1007
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`12:61 (describing an interrogating command “sent to a specific appliance”) and
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`14:7-11 (“an interrogation signal is sent from the remote controller to the garage
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`6
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`IPR2018-00394
`U.S. Patent 6,622,018
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`door). Moreover, obviousness cannot be established merely by speculating it is
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`possible that Ben-Ze’ev’s interrogation signal is a single transmission of a message
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`that is itself receivable at once by multiple devices.
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`To establish a feature is inherently present in a reference,
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`mere possibility is not enough. Inherency may not be
`established by probabilities or possibilities. The mere fact that a
`certain thing may result from a given set of circumstances is not
`sufficient. Rather, a party must show that the natural result
`flowing from the operation as taught would result in the
`performance of the questioned function.
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`Personal Web Techs., LLC v. Apple, Inc., 917 F.3d 1376, 1382 (Fed. Cir. 2019)
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`(cleaned up). If the element that a party relies on does not necessarily exist in a
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`reference, “reliance on inherency for that element in its obviousness analysis [is]
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`improper.” Id. at 1382-83. The Board appears to have misunderstood this exacting
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`requirement in finding that Ben-Ze’ev’s nondescript references to interrogating
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`renders obvious the claimed broadcasting.
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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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`7
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`IPR2018-00394
`U.S. Patent 6,622,018
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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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