IPR2018-00884
`U.S. Patent 8,539,552
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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 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’S REQUEST FOR REHEARING
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`UNDER 37 C.F.R. § 42.71(D)
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` The owner of this patent is Uniloc 2017 LLC.
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` 1
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`1
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`IPR2018-00884
`U.S. Patent 8,539,552
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`In response to the Final Written Decision entered September 18, 2019, (Paper
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`20, hereinafter “Decision”) and pursuant to 37§ 42.71(d), Uniloc 2007 LLC
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`(“Uniloc” or “Patent Owner”) hereby respectfully requests a rehearing and
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`reconsideration by the Patent Trial and Appeal Board (“Board”) of its Final Written
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`Decision (“FWD”) finding claims 1–17 and 23–25 of U.S. Patent No. 8,539,552
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`(“the ’552 patent) to be unpatentable. Patent Owner’s request for rehearing is based
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`upon the following considerations.
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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,
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`without prior authorization from the Board.” 37 C.F.R. §42.71(d). “The request
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`must specifically
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`identify all matters
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`the party believes
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`the Board
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`misapprehended or overlooked, and the place where each matter was previously
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`addressed in a motion, an opposition, or a reply.” Id. The Board reviews a
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`decision for an abuse of discretion. 37 C.F.R. §42.71(c).
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`Claim construction is a question of law. Markman v. Westview
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`Instruments, 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370
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`(1996). In an inter partes review, claim terms in an unexpired patent are
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`interpreted according to their broadest reasonable construction in light of the
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`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo
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`Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 2142‒46 (2016).
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`II. ARGUMENT
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`The Board misapprehended or overlooked certain intrinsic and extrinsic
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`evidence in interpreting “a network entity ‘intercepting’ a signaling message to mean
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`2
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`IPR2018-00884
`U.S. Patent 8,539,552
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`the signaling message is received by a network entity located between the endpoints
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`of the call.” FWD 14.
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`The Board stated its construction comports with the prosecution history of the
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`’552 patent (id.), yet the Board appears to have overlooked that the amendment and
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`accompanying remarks expressly distinguish “intercepting” (as recited in the claims
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`that issued) from merely “receiving” between endpoints. Claim 1 as originally filed
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`recited “receiving signaling messages within a communication path between a
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`sender device and an intended recipient device” See EX1002 p. 43 (as numbered by
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`exhibit) (emphasis added). In the amendment dated June 24, 2011, original claim 1
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`was amended to require, instead, intercepting a message that is associated with a call
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`between two end users. See EX1002 p. 357, 365.
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`The amendment itself confirms that “intercepting” in the context of the claim
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`language that issued cannot reasonably be interpreted as being coextensive in scope
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`with the original requirement of “receiving signaling messages within a
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`communication path between a sender device and an intended recipient device.” By
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`adopting the original claim language, word for word, as the construction for the
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`“intercepting” limitation that issued, the Board effectively rendered the amendment
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`a nullity—i.e., as if it had never happened. This is contrary to controlling authority.
`In Festo,2 for example, the Supreme Court explained that a patent applicant’s
`“decision to narrow his claims through amendment may be presumed to be a general
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`disclaimer of the territory between the original claim and the amended claim.” On
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`remand from the Supreme Court’s decision, the en banc Federal Circuit construed
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`the Supreme Court’s formulation of prosecution history estoppel as providing a
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` 2
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` Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 740, (2002)
`(“Festo”).
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`3
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`IPR2018-00884
`U.S. Patent 8,539,552
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`rebuttable presumption of an absolute-bar rule. Festo Corp. v. Shoketsu Kinzoku
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`Kogyo Kabushiki Co., Ltd., 344 F.3d 1359, 1367 (Fed. Cir. 2003); accord, Norian
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`Corp. v. Stryker Corp., 432 F.3d 1356, 1363 (Fed. Cir. 2005), and Ajinomoto Co. v.
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`Int'l Trade Comm’n, 932 F.3d 1342, 1352–53 (Fed. Cir. 2019).
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`Here, the Board did not appear to apply the presumption that the applicant’s
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`decision to narrow claim 1 by amendment gave rise to a general disclaimer of the
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`territory between the original claim and the amended claim. On the contrary, the
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`Board appeared to incorrectly place the burden on Patent Owner to prove that the
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`amendment effected claim scope. See FWD 14.
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`The Board also appears to have overlooked that, during prosecution, the
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`applicant not only amended the claims, but also explained what was changed and
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`why. For example, in the remarks accompanying the amendment introducing the
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`“intercepting” term, the Applicant expressly distinguished “intercepting” in this
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`context from the disclosure in a cited reference directed to merely receiving a
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`message at a network entity. EX 1002 p. 367. The remarks by the applicant also
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`confirm that the “intercepting” limitation is plainly distinguishable from a device
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`sending a message directly to a network entity, such that the network entity is an
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`intended recipient of that message. Id. at 367‒368.
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`The Board also appears to have overlooked or misapprehended the “Interview
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`Summary” provided in applicant’s remarks dated June 24, 2011. See id. at 364‒365.
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`The applicant’s “Interview Summary” confirms that certain proposed amendments
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`were first discussed which still recited the original “receiving” term. Id. (referring to
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`the “proposed amendments” as still including the word “receiving”). The examiner
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`then proposed a different amendment that that, instead, used intercepting in place of
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`receiving. Id. (referring to further clarification beyond what the applicant had
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`originally proposed). Clearly, the examiner did not consider the words intercepting
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`and receiving to be interchangeable and coextensive in scope. On the contrary,
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`IPR2018-00884
`U.S. Patent 8,539,552
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`according to the examiner, the proposed amendment directed to “intercepting”
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`would overcome the art of record, though the original claim language directed to
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`“receiving” would not. Id.
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`The Board appears to have also overlooked or misapprehended evidence in
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`the ’552 patent expressly distinguishing between the act of receiving a signaling
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`message within a communication path between a sender device and, instead,
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`intercepting in the specific manner set forth in the challenged claims that issued. For
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`example, the ’522 describes an example embodiment with reference to Figure 1. The
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`description teaches elements 112 and 108 of Figure 1 both receive call set-up
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`messages and pass them onward, but only 112 (the call control server) is identified
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`as intercepting such messages in this embodiment. See Paper 14 at 4‒5 (citing ’552
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`patent, 3:54‒66). The intercepting of call control server 112 at least includes seizing
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`a message, which is not sent directly to from a client 104 to the server 112, and
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`obstructing the message from progress while authentication processes are
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`performed. Id.; see also ’552 patent, 3:54‒4:5. In contrast, border element 108
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`simply receives a message sent directly to it by a client 104 and then passively routes
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`the message onward—i.e., no intercepting. Id. As another example, Patent Owner
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`had observed that the ’552 patent expressly distinguishes the claimed invention from
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`“just transport of the services”—i.e., from merely receiving a message and passing
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`it onward. Paper 14 (citing Ex. 1001 at 1:41‒44).
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`The Board also appears to have overlooked or unduly discounted extrinsic
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`evidence of record in the form of dictionary definitions. The Oxford Dictionary
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`defined “intercept” to mean “obstruct (someone or something) so as to prevent them
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`from continuing to a destination.” EX2001 at ¶10 (quoting and reproducing
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`https://en.oxforddictionaries.com/definition/intercept). The
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`same
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`dictionary
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`definition offers a self-explanatory and well-recognized difference between
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`intercepting and receiving in the context of the sport of football. See id. (further
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`IPR2018-00884
`U.S. Patent 8,539,552
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`defining intercepting as “to gain possession of (an opponent’s pass) or “to intercept
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`a pass thrown by (an opponent).”). Similarly, the Merriam-Webster dictionary
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`defined “intercept” to mean “to stop, seize, or interrupt in progress or course or
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`before arrival.” Id. at ¶11 (quoting and reproducing https://www.merriam-
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`webster.com/dictionary/intercept). Another
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`technical
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`dictionary
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`defined
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`“interception” to mean “[t]aping or tuning in to a telephone a radio message not
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`intended for the listener.” Ex. 2002 (McGraw-Hill Dictionary of Scientific and
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`Technical Terms, Sixth Edition); see also EX2001 at ¶13 (quoting and reproducing
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`the same). These definitions of record speak for themselves in undercutting the
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`interpretation that intercepting means nothing more than receiving between
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`endpoints.
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`The patentability determination cannot be based on incorrect construction for
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`the “intercepting” limitation. In reviewing claim construction de novo, the Federal
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`Circuit has frequently remanded to the PTAB due to conclusions based upon
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`erroneous claim constructions. See, e.g., Microsoft Corp. v. Proxyconn, Inc., 789
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`F.3d 1292 (Fed. Cir. 2015); Straight Path IP Group, Inc. v. Sipnet EU S.R.O., 806
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`F.3d 1356 (Fed. Cir. 2015); Cutsforth, Inc. v. Motivepower, Inc., 643 F. App’x 1008
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`(Fed. Cir. 2016); PPC Broadband, Inc. v. Corning Optical Comms. RF, LLC, 815
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`F.3d 747 (Fed. Cir. 2016); PPC Broadband, Inc. v. Corning Optical Comms. RF,
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`LLC, 815 F.3d 734 (Fed. Cir. 2016); Dell, Inc. v. Acceleron, LLC, 818 F.3d 1293
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`(Fed. Cir. 2016); SAS Institute, Inc. v. ComplementSoft, LLC, 825 F.3d 1341 (Fed.
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`Cir. 2016); Respironics, Inc. v. Zoll Medical Corp., 656 Fed. Appx. 531 (Fed. Cir.
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`2016); John D’Agostino v. MasterCard Int’l Inc., 844 F.3d 945 (Fed. Cir. 2016).
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`Because the Board appears to have overlooked or misunderstood at least the
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`argument and evidence of record identified herein, the Board should grant this
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`request to reconsider the Board’s claim construction for the “intercepting” limitation
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`applied in its Final Written Decision.
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`IPR2018-00884
`U.S. Patent 8,539,552
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`III. 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: October 17, 2019
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`Respectfully submitted,
`By: /Brett A. Mangrum/
`Brett A. Mangrum; Reg. No. 64,783
`Attorney for Patent Owner
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`IPR2018-00884
`U.S. Patent 8,539,552
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that an electronic
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`copy of the foregoing Request for Rehearing was served via the Patent Review
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`Processing System (PRPS) and/or via email to Petitioner’s counsel at the following
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`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: October 17, 2019
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`Respectfully submitted,
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`By: /Brett A. Mangrum/
`Brett A. Mangrum; Reg. No. 64,783
`Attorney for Patent Owner
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