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.1
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`Patent Owner
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`IPR2018-00884
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`PATENT 8,539,552
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`PATENT OWNER SUR-REPLY TO PETITIONER’S REPLY
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` The owner of this patent is Uniloc 2017 LLC.
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` 1
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`APPLE, INC.
`
`Petitioner
`
`v.
`
`UNILOC LUXEMBOURG, S.A.1
`
`Patent Owner
`
`
`
`
`
`IPR2018-00884
`
`PATENT 8,539,552
`
`
`
`
`
`
`
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`
`
`
`PATENT OWNER SUR-REPLY TO PETITIONER’S REPLY
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`
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` The owner of this patent is Uniloc 2017 LLC.
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` 1
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`IPR2018-00884
`U.S. Patent 8,539,552
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`
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`
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`Table of Contents
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`
`
`I.
`
`II.
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`INTRODUCTION .................................................................................... 1
`
`PETITIONER FAILS TO PROVE OBVIOUSNESS .............................. 2
`
`A.
`
`B.
`
`C.
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`Petitioner cannot prove obvious through application of
`an erroneous construction of “intercepting a signaling
`message” ......................................................................................... 3
`
`Petitioner has failed to prove Kalmanek renders obvious
`the “intercepting” claim language .................................................. 7
`
`Petitioner failed to prove Kalmanek renders obvious
`“the signaling message is transmitted to the intended
`recipient device” ............................................................................. 9
`
`III.
`
`CONCLUSION ....................................................................................... 12
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`
`
`
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`List of Exhibits
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`Exhibit No.
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`Description
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`2001
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`2002
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`Declaration of William C. Easttom (previously filed)
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`McGraw-Hill Dictionary of Scientific and Technical Terms,
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`Sixth Edition (previously filed)
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`2003
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`Netwon’s Telecom Dictionary, Sixteenth Edition (previously
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`filed)
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`ii
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`
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`IPR2018-00884
`U.S. Patent 8,539,552
`
`I.
`
`INTRODUCTION
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`Uniloc 2017 LLC (the “Uniloc” or “Patent Owner”) submits this Sur-Reply
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`to Petitioner’s Reply in IPR2018-00884 (“Reply”) regarding United States Patent
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`No. 8,539,552 (“the ’552 Patent” or “EX1001”) filed by Apple, Inc. (“Petitioner”).
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`Petitioner erroneously suggests in its Reply that Patent Owner has the burden
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`to present new argument or evidence in its response, else “the Board should again
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`reject Patent Owner’s contentions and cancel the Challenged Claims.” Reply at 1.
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`Petitioner appears to misunderstand that the burden of proof always lies with the
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`Petitioner and that a different and more onerous burden applies once the Board
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`institutes trial.
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`Petitioner also falsely states that Patent Owner’s expert, Dr. Easttom, “was
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`not made available for cross examination.” Reply at 2. Petitioner omits certain key
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`facts in offering a partial summary of events. Indeed, Petitioner omits details from
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`its own exhibits revealing that Patent Owner had offered Dr. Easttom for deposition
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`and that, in declining that offer, Petitioner inappropriately blamed Patent Owner.
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`After the Board issued its order (Paper 12) denying Petitioner’s request to
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`strike Dr. Easttom’s declaration, the parties communicated via email to discuss how
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`to best proceed. When it was clear that a conference call would be more productive,
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`the parties met and conferred via teleconference on March 15, 2019. During that call,
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`counsel for Petitioner committed that it would discuss with its client “whether we
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`could agree to any claim construction to otherwise avoid the deposition” (as
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`Petitioner’s counsel admitted in a follow-up email dated March 28, 2019 at filed by
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`Petitioner as Exhibit 1021). EX1021 at 1 (emphasis added).
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`1
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`
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`IPR2018-00884
`U.S. Patent 8,539,552
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`The exhibits Petitioner submitted in its Reply reveal that Petitioner chose to
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`let two weeks lapse from (March 15 to March 28), without providing any update
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`whatsoever as to whether (1) an agreement could be reached on construction or,
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`instead, (2) Petitioner intended to move forward with the deposition.
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`Patent Owner offered Dr. Easttom for deposition. EX1021 at 1; cf. Reply at 2
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`(“Dr. Easttom was not made available for cross examination”). Patent Owner did so
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`within mere hours of when Petitioner first informed Patent Owner that no agreement
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`could be reached, and that Petitioner intended to proceed with a deposition. EX1021
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`at 1. Patent Owner offered the only day Dr. Easttom himself indicated he would be
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`available for deposition (given that his work schedule would take him out of the
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`country for the time remaining until Petitioner’s already-extended due date).
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`Petitioner faults Patent Owner for giving only one day’s notice, but this was
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`a problem of Petitioner’s own making. Had Petitioner timely followed up after the
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`call (held on March 15, 2019) to update Patent Owner (as Petitioner had committed
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`to do during the call), Petitioner could have had much more advance notice.
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`Petitioner’s Reply simply offers no basis for the Board to disregard Dr.
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`Easttom’s declaration or to blame Patent Owner for Petitioner’s unexplained delay.
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`In addition, Petitioner should not be rewarded for falsely stating to the Board that
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`“Dr. Easttom was not made available for cross examination.” Reply at 2.
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`II.
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`PETITIONER FAILS TO PROVE OBVIOUSNESS
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`Petitioner has failed to meet its burden of proving obviousness for any of the
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`grounds raised in the Petition.
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`2
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`IPR2018-00884
`U.S. Patent 8,539,552
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`A.
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`Petitioner cannot prove obvious through application of an
`erroneous construction of “intercepting a signaling message”
`
`Petitioner attempts to defend the construction provisionally adopted in the
`
`Board’s Institution Decision by arguing, instead, that “intercepting a signaling
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`message” requires nothing more than merely “receiv[ing] a message and pass[ing]
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`that message on toward its final destination.” Reply at 8. Petitioner’s Reply
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`essentially seeks to rewrite the claimed “intercepting” as routing, which is a distinct
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`term of art. Such an interpretation cannot be squared with the evidence of record.
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`The ’552 patent consistently and repeatedly attributes “intercepting” only to
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`the specific network entity tasked with initiating processes for “control[ling] access
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`to, and invocation of, features and services that may otherwise be delivered to
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`subscribers without the knowledge or authorization of the network.” EX1001 at
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`Abstract; 3:20-25. By design, this occurs in a manner transparent to the end-user
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`client. Indeed, the teachings of the ’552 patent are designed in part to enable carriers
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`and service providers “to deal with unauthorized delivery of services by intelligent
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`clients” and to avoid “bypassing by the end user of service agreements or other
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`subscription accounting mechanisms.” Id. at 1:38-40, 45-55 (emphasis added). Such
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`enforcement through interception may be necessary “even when the capabilities for
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`the requisite signaling and call control of those services may reside in the end-user
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`clients themselves.” Id. at 3:28-30.
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`It is significant that the ’552 patent expressly distinguishes these teachings
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`from “just transport of the services”—i.e., from merely receiving a message and
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`passing it onward. Id. at 1:41-44 (emphasis added).
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`3
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`
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`IPR2018-00884
`U.S. Patent 8,539,552
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`The distinction between active “intercepting” and passive “routing” is
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`perhaps best illustrated in the embodiment described with reference to Figure 1
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`(copied in part below).
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`EX1001 at Figure 1.
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`
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`Figure 1 itself and its accompanying description expressly distinguish border
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`elements 108 and 110 from signaling and call control server 112. EX1001 at 3:38-
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`4:45. Although elements 108, 110 and 112 are each included within core packet
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`network 102, and each one accesses call set-up messages, this embodiment identifies
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`only the signaling and call control server 112 as intercepting such messages. Id.
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`(“The signaling and call control server 112 intercepts call set-up messages ….”)
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`(emphasis added). Had the inventors intended, instead, to equate “intercepting” with
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`merely receiving a message and passing it onward (i.e., routing), as Petitioner
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`argues, then the description of Figure 1 would have also identified border elements
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`4
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`IPR2018-00884
`U.S. Patent 8,539,552
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`108 and 110 as intercepting the message. Id. at 3:54-55 (teaching border elements
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`108 and 110 receive and route messages by disclosing that the client “[a]ccess to the
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`core packet network 102 is available through border elements 108 and 110[.]”).
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`The description does not do so.
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`The specific identification in Figure 1 of which element performs the
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`intercepting is further emphasized by contrasting the respective descriptions of
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`Figures 1 and Figure 3. Unlike Figure 1, neither Figure 3 itself nor its corresponding
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`description make any mention of a call and control server that is distinct from border
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`elements, much less a call and control server that performs the intercepting. Rather,
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`the description of Figure 3 states the border element itself operates as the policy
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`enforcement point, though only to the extent it intercepts signaling messages and
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`thereby initializes the associated control (i.e., as opposed to passively routing the
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`message onward). Id. at 8:58-9:15.
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`The distinction in respective descriptions of Figures 1 and 3 confirm that the
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`specification is deliberate when identifying which specific element performs the
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`intercepting (and hence, by omission, which do not). This further confirms that
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`although a border element may receive and route a signaling message, the routing
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`function itself is distinguishable from “intercepting” as claimed.
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`The claim
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`language
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`itself does not support Petitioner’s overbroad
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`interpretation. In its Reply, Petitioner faults Dr. Easttom for concluding, essentially,
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`that the claim language in question means what it says. The cited portion of Dr.
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`Easttom’s declaration addresses, in part, the following recitation of claim 1: “a
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`network entity intercepting a signaling message associated with a call between a
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`5
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`IPR2018-00884
`U.S. Patent 8,539,552
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`sender device of the message and an intended recipient device of the message.” See
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`EX2001 ¶¶ 8-9 (quoting claim 1). Dr. Easttom offered the self-evident observation
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`that claim 1 includes limitations directed to three expressly-distinguished elements:
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`(1) a network entity; (2) a sender device of the message; and (3) an intended
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`recipient device of the message. Id. Claim 1 distinguishes the “network entity” from
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`the “recipient device” at least in that the former performs the “intercepting” and only
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`the latter is defined as an “intended recipient . . . of the message.” Id.
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`Petitioner suggests by its construction that the claimed “network entity” may
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`also itself be characterized as “an intended recipient device of the message” if it is
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`addressed by the sending client and used to receive and route the message onward.
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`See Reply at 6-7. This erroneous construction would obviate distinct and definitive
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`descriptions of these terms, as recited in claim 1. See Akzo Nobel Coatings, Inc. v.
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`Dow Chem. Co., 811 F.3d 1334, 1340 (Fed. Cir. 2016) (a claim construction that
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`gives meaning to all the terms of the claim is preferred over one that does not do
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`so); see also EX2001 ¶¶ 8-9.
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`The intrinsic evidence summarized above reveals the error in overbroadly
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`construing “intercepting a signaling message” to mean “the signal is received by a
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`network entity located between the endpoints of the call” (as provisionally adopted
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`in the Board’s Institution Decision) or, instead, to mean “receiv[ing] a message and
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`pass[ing] that message on toward its final destination” (as Petitioner newly argues
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`in its Reply). Reply at 8.
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`Petition has not and cannot prove obviousness through application of an
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`incorrect claim construction. See Mentor Graphics Corp., v. Synopsys, Inc.,
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`6
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`
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`IPR2018-00884
`U.S. Patent 8,539,552
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`IPR2014-00287, 2015 WL 3637569, (Paper 31) at *11 (P.T.A.B. June 11, 2015),
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`aff'd sub nom. Synopsys, Inc. v. Mentor Graphics Corp., 669 Fed. Appx. 569 (Fed.
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`Cir. 2016) (denying Petition as tainted by reliance on an incorrect claim
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`construction).
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`B.
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`Petitioner has failed to prove Kalmanek renders obvious the
`“intercepting” claim language
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`In attempting to map Kalmanek onto the “intercepting” claim language, the
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`Reply doubles-down on the new argument that “intercepting” is essentially
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`equivalent to routing. Reply at 9-11. This injects error and fails to prove obviousness
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`for reasons addressed above. See §II.A, supra.
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`First, the Reply acknowledges that, under Petitioner’s alleged mapping of
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`Kalmanek, the alleged “sending devices intends [sic] for intermediate devices to
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`intercept the signaling message.” Reply at 11 (emphasis added).2 In other words,
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`Petitioner argues that the alleged intercepting device is also an intended recipient of
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`the alleged signaling message. Petitioner betrays a fundamental misunderstanding
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`of “intercepting” and the processes it initiates, as set forth in the specification and
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`claims of the ’552 patent.
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`
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` 2
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` The Reply itself expressly distinguishes between “intercepting” and forwarding
`the message onward by referring to both separately in the same sentence: “the
`sending devices intends for intermediate devices to intercept the signaling message
`and forward that message toward an ultimate destination.” Reply at 11 (emphasis
`added). This further undermines Petitioner’s interpretation that “intercepting” means
`“… pass[ing] that message on toward a final destination.” Reply at 8.
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`7
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`IPR2018-00884
`U.S. Patent 8,539,552
`
`That an end-user sending device allegedly intends a message to be routed
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`onward does not mean it also intends that message to be intercepted and hence
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`possibly filtered. Petitioner provides no basis to conclude, for example, that when
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`an end-user device sends a signaling message indicating a service for which the
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`sending device is not authorized, that sending device “intends” for that message to
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`be intercepted and consequently filtered out—thereby obviating that message.
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`Petitioner appears to be confused as to the perspective from which the claimed
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`intercepting is designed. As explained above (§II.A), the specification makes clear
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`that the claimed intercepting is designed, in part, to enable carriers and service
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`providers “to deal with unauthorized delivery of services by intelligent clients” and
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`to avoid “bypassing by the end user of service agreements or other subscription
`
`accounting mechanisms. Id. at 1:38-40, 45-55 (emphasis added). Such enforcement
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`through interception may be necessary “even when the capabilities for the requisite
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`signaling and call control of those services may reside in the end-user clients
`
`themselves.” Id. at 3:28-30.
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`Second, Petitioner also glosses over the distinction in the claim language
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`between “the network entity” and “the intended recipient device.” Only the latter is
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`expressed as an “intended recipient.” As explained above (§II.A), to suggest the
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`“network entity” is also an “intended recipient” would obviate at least this explicit
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`distinction and the specific context in which the “intercepting” is recited. Petitioner
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`admits that Kalmanek’s alleged “network entity” is an intended recipient. Replay at
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`10-11. Yet Petitioner concludes, without explanation, that this purportedly does not
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`matter (notwithstanding the express distinction in the claim language). Id.
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`8
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`
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`IPR2018-00884
`U.S. Patent 8,539,552
`
`For the foregoing reasons, and the reasons set forth in Patent Owner’s
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`Response (Paper 11), Petitioner fails to prove the “intercepting” limitations of claim
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`1 (and hence all challenged claims depending therefrom). Petitioner’s Reply does
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`not separately address the respective “intercepting” limitations recited in
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`independent claims 6, 18, and 23. The challenge of those independent claims (and
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`hence their respective dependent claims) is deficient for analogous reasons.
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`C.
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`Petitioner failed to prove Kalmanek renders obvious “the signaling
`message is transmitted to the intended recipient device”
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`According to Petitioner, Kalmanek allegedly discloses that its originating
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`Gate Controller (“GCo”) intercepts a SETUP message sent from the originating
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`Telephone Interface Unit (“TIUo”) to that GCo. See Reply at 1, 9. Petitioner further
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`alleges that Kalmenek discloses the same SETUP message is transmitted to the
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`terminating Telephone Interface Unit (“TIUT”), which Petitioner points to as the
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`claimed “intended recipient device” recited in claim 1. Id.
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`Petitioner neglects to explain in its briefing (let alone prove) precisely how
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`Kalmanek’s SETUP message purportedly maps onto each one of the various
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`limitations directed to the “signaling message” term. It does not. See Paper 11
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`(Patent Owner’s Response) at 13-25.
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`The “signaling message” limitations recited in claim 1 must be understood in
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`their proper context. Petitioner has failed to address, for example, the requirement
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`that the “signaling message” must be “associated with a call between a sender device
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`of the message and an intended recipient device of the message.” Petitioner could
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`not do so at least because Kalmanek fails to disclose that there is already an existing
`
`9
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`
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`IPR2018-00884
`U.S. Patent 8,539,552
`
`call when the SETUP message is transmitted. As the name implies, the purpose of
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`Kalmanek’s SETUP message is to set up a call that has not yet been established.
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`Petitioner acknowledges its theory relies on interpreting Kalmanek as
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`disclosing the SETUP message sent from the originating TIUo to the GCo is the
`
`same one passed on by the GCo and ultimately delivered to the terminating
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`Telephone Interface Unit (“TIUT”) (which Petitioner points to as the claimed
`
`“intended recipient device” recited in claim 1). See Reply at 8-9. Petitioner falsely
`
`asserts in its Reply that Patent Owner has admitted this understanding of Kalmanek
`
`is correct. Id. The record contains no such admission.
`
`Patent Owner explained in its Response why Petitioner has failed to prove
`
`obvious even under Petitioner’s own construction. Paper 11 (Patent Owner’s
`
`Response) at 13-16. Certain deficiencies arise, for example, from the disclosure in
`
`Kalmanek that the GCo itself initiates the SETUP message that it passes onward. Id.
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`(quoting EX1004 at 25:13-25, which is directed to “[m]essages initiated by the Gate
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`Controller ….”). A SETUP message initiated by the GCo cannot reasonably be
`
`considered as being received by GCo (as required under Petitioner’s construction),
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`much less intercepted by a “network entity” as claimed. Id. Petitioner offers no
`
`rebuttal other than to point to certain arguments offered on behalf of Petitioner in
`
`the Board’s Institution Decision. Reply at 12.
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`The passage of the Institution Decision cited in the Reply states that
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`“Kalmanek discloses that the CALLER portion of the SETUP message will contain
`
`an ‘anonymous’ parameter if the originator has specified caller ID blocking. Ex.
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`1004, 25:25–43.” Paper 8 at 18. That same passage of Kalmanek further explicitly
`
`10
`
`
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`IPR2018-00884
`U.S. Patent 8,539,552
`
`states, however, that it is directed to messages initiated by the Gate Controller:
`
`“[t]he Gate Controller initiates messages to the BTI to inform it of incoming calls[.]
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`… Messages initiated by the Gate Controller include ….” EX1004 at 25:14-17
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`(emphasis added). This only supports the distinction articulated in Patent Owner’s
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`Response. Clearly a SETUP message initiated by the Gate Controller is not one that
`
`is initiated at and “sent by the caller,” as Petitioner incorrectly alleges in order to
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`defend its futile mapping. Reply at 12.
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`That the SETUP message initiated by the Gate Controller may include an
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`“anonymous” parameter does not warrant interpreting this passage to mean
`
`something other than what it states (i.e., that something other than the Gate
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`Controller initiates the SETUP message). Rather, the cited passage refers to stored
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`subscription parameters accessed by the Gate Controller when it initiates a SETUP
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`message. See Id. at 25:37-43 (“If the customer has subscribed …”—i.e., using past
`
`tense to refer to previously stored information accessible to the Gate Controller).
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`Indeed, Petitioner appears to concede the point in suggesting Kalmanek’s Gate
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`Controller may use “settings in a profile” in order to initiate (i.e., not merely receive
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`and pass on) the SETUP message itself. Reply at 12.
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`The above-identified deficiencies in the paragraph of Kalmanek cited by the
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`Board and emphasized in Petitioner’s Reply are equally fatal to both the “caller-id”
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`and “caller-id blocking” features. The same cited paragraph of Kalemanek generally
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`refers to the “CALLER” potion of the SETUP message as “the caller-id
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`information.” EX1004 at 25:25-43; see also Paper 8 at 18 (citing the same).
`
`11
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`
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`IPR2018-00884
`U.S. Patent 8,539,552
`
`As shown by the non-exhaustive examples above, Patent Owner’s Response
`
`sets forth various rebuttal observations and evidence which Petitioner failed to refute
`
`or even address in its Reply.
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`For the foregoing reasons, and the reasons set forth in Patent Owner’s
`
`Response (Paper 11), Petitioner fails to prove the “signaling message” limitations
`
`recited in claim 1 (and hence all challenged claims depending therefrom).
`
`Petitioner’s Reply does not separately address the analogous limitations recited in
`
`independent claims 6, 18, and 23, and 24. Accordingly, the challenge of those
`
`independent claims (and hence their respective dependent claims) is deficient for
`
`analogous reasons.
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`III. CONCLUSION
`
`For at least the reasons set forth above, Uniloc respectfully requests that the
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`Board deny all challenges in the instant Petition.3
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`Date: May 2, 2019
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /s/ Brett A. Mangrum
`
`Brett A. Mangrum; Reg. No. 64,783
`
`Attorney for Patent Owner
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` 3
`
` Patent Owner does not concede, and specifically denies, that there is any legitimacy
`to any arguments in the instant Petition that are not specifically addressed herein.
`
`12
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`
`
`IPR2018-00884
`U.S. Patent 8,539,552
`
`CERTIFICATE OF COMPLIANCE
`
`
`
`Pursuant to 37 C.F.R. § 42.24(d), I certify that this sur-reply complies with
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`the type-volume limitation of 37 C.F.R. § 42.24(c) because it contains fewer than
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`the limit of 5,600 words, as determined by the word-processing program used to
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`prepare the brief, excluding the parts of the brief exempted by 37 C.F.R. §
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`42.24(a)(1).
`
`Date: May 2, 2019
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`
`
`
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`
`
`
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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
`
`13
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`
`
`IPR2018-00884
`U.S. Patent 8,539,552
`
`CERTIFICATE OF SERVICE
`
`
`
`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that an electronic
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`copy of the foregoing PATENT OWNER’S SUR-REPLY was served via the Patent
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`Review Processing System (PRPS) and/or via email to Petitioner’s counsel at the
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`following addresses identified in the Petition’s consent to electronic service:
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`Lead Counsel: Adam P. Seitz, Reg. No. 52,206
`Adam.Seitz@eriseip.com
`Paul.Hart@eriseip.com
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`
`
`
`Date: May 2, 2019
`
`
`
`
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`Respectfully submitted,
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`By: /s/ Brett A. Mangrum
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`Brett A. Mangrum; Reg. No. 64,783
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`Attorney for Patent Owner
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`
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`14
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`
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