Trials@uspto.gov
`571-272-7822
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`
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`Paper No. 22
`Entered: November 18, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,1
`Patent Owner.
`
`____________
`
`IPR2018-00884
`Patent 8,539,552 B1
`____________
`
`
`
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`O’HANLON, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Patent Owner’s Request on Rehearing of Final Written Decision
`37 C.F.R. § 42.71(d)
`
`
`1 At the time the Petition was filed, Uniloc Luxembourg S.A. was the patent
`owner.
`
`
`
`

`

`IPR2018-00884
`Patent 8,539,552 B1
`
`
`I. INTRODUCTION
`On September 18, 2019, the Board issued a Final Written Decision in
`
`this proceeding. Paper 20 (“Decision” or “Final Dec.”). In the Decision, we
`determined that Petitioner had shown by a preponderance of the evidence
`that claims 1–17 and 23–25 of U.S. Patent No. 8,539,552 B1 (Ex. 1001, “the
`’552 patent”) were unpatentable. Id. at 52.
`
`On October 17, 2019, Patent Owner, Uniloc 2017 LLC, timely filed a
`Request for Reconsideration of our Decision under 37 C.F.R. § 42.71(d).
`Paper 21 (“Request” or “Req. Reh’g”). For the reasons discussed below, we
`deny Patent Owner’s Request for Rehearing because Patent Owner fails to
`show we misapprehended or overlooked a matter in reaching the Decision.
`
`II. LEGAL STANDARD
`A request for rehearing “must specifically identify all matters the
`
`party believes the Board misapprehended or overlooked, and the place where
`each matter was previously addressed in a motion, an opposition, or a reply.”
`37 C.F.R. § 42.71(d). The burden of showing a decision should be modified
`on a request for rehearing lies with the party challenging the decision. Id.
`
`III. ANALYSIS
`Patent Owner argues that we erred in our interpretation of
`
`“intercepting.” Req. Reh’g 2–6. Patent Owner presents two arguments,
`which we address below in turn. Initially, we note that although Patent
`Owner argues that we erred in our interpretation of “intercepting,” Patent
`Owner does not explain how this alleged error impacts our determination in
`the Decision that claims 1–17 and 23–25 of the ’552 patent are unpatentable.
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`IPR2018-00884
`Patent 8,539,552 B1
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`Instead, Patent Owner merely notes that our reviewing court has remanded
`decisions “due to conclusions based upon erroneous claim constructions.”
`Id. at 6. By failing to explain how the asserted misinterpretation of
`“intercepting” impacts our determination of unpatentability, Patent Owner
`has failed to meet its burden of showing that our Decision determining
`claims 1–17 and 23–25 to be unpatentable should be modified. See
`37 C.F.R. § 42.71(d); see also Final Dec. 13 (“Moreover, Patent Owner fails
`to explain how the asserted distinction between receiving and intercepting
`differentiates the ’552 patent from Kalmanek. For example, it appears that
`Kalmanek’s network edge devices would ‘receive’ the messages and its gate
`controllers would ‘intercept’ the messages using Patent Owner’s
`interpretations.”).
`
`A. The ’552 Patent and Its Prosecution History
`First, Patent Owner argues that our interpretation is at odds with the
`
`disclosure and prosecution history of the ’552 patent. Req. Reh’g 2–5.
`Patent Owner argues that “the Board appears to have overlooked that the
`[June 24, 2011,] amendment [of claim 1] and accompanying remarks
`expressly distinguish ‘intercepting’ (as recited in the claims that issued)
`from merely ‘receiving’ between endpoints.” Id. at 3. According to Patent
`Owner, the amendment confirms that “intercepting” means something
`different than “receiving” and we “did not appear to apply the presumption
`that the applicant’s decision to narrow claim 1 by amendment gave rise to a
`general disclaimer of the territory between the original claim and the
`amended claim.” Id. at 3–4. Patent Owner argues that we overlooked the
`applicants’ comments regarding the amendment and misapprehended the
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`IPR2018-00884
`Patent 8,539,552 B1
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`Interview Summary. Id. at 4–5. Finally, Patent Owner argues that “the ’552
`patent expressly distinguish[es] between the act of receiving a signaling
`message within a communication path between a sender device [sic] and,
`instead, intercepting in the specific manner set forth in the challenged claims
`that issued.” Id. at 5.
`
`As we explained in the Decision, the amendment of claim 1 was
`suggested by the Examiner to express more clearly the applicants’ intention
`to convey that the network entity is not the intended end recipient device.
`Final Dec. 11–12. As we explained, our interpretation that “a network entity
`intercepting a signaling message associated with a call between a sender
`device of the message and an intended recipient device of the message”
`means that the network entity receives the message and the network entity is
`not the intended end recipient device is supported by the prosecution history:
`[T]his interpretation is consistent with the prosecution history
`of the application resulting in the ’552 patent, which reveals
`that the patent examiner suggested using the word intercepting
`in the claims to further clarify the applicants’ intention to
`convey that “the independent claims involve a network entity
`receiving and filtering messages that are sent between two end
`users.” Ex. 1002, 364–65 (first emphasis added); see also id. at
`367–68 (distinguishing an intermediate entity intercepting a
`communication between two end user devices, as claimed, from
`a prior art reference in which the intended end recipient device
`(a service verification apparatus) receives and makes
`determinations regarding the signaling message).
`Id. Thus, rather than ignoring the amendment “as if it had never happened”
`(Req. Reh’g 3), we explained our interpretation that the Examiner suggested
`using “intercepting” to more clearly convey that the recited network entity is
`not one of the intended end user devices between which the signaling
`message is sent. Although Patent Owner argues that the Decision “d[oes]
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`IPR2018-00884
`Patent 8,539,552 B1
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`not appear to apply the presumption that the applicant’s decision to narrow
`claim 1 by amendment gave rise to a general disclaimer of the territory
`between the original claim and the amended claim” (Req. Reh’g 4 (citing
`Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722,
`740, (2002)), Patent Owner does not identify the alleged “disclaimer of the
`territory,” and thus fails to specifically identify how we allegedly erred. See
`37 C.F.R. § 42.71(d).
`
`Nor are we apprised that we misapprehended or overlooked any
`matter by Patent Owner’s assertions regarding the applicants’ comments
`about the amendment. See Req. Reh’g 4. Patent Owner characterizes the
`comments as “distinguish[ing] ‘intercepting’ in this context from the
`disclosure in a cited reference2 directed to merely receiving a message at a
`network entity.” Id. This characterization is incomplete, as the reference
`describes a “service request [that] is sent from the service-used apparatus
`directly to the service-provider apparatus, not to some other apparatus.”
`Ex. 1002, 368 (emphasis added). As we explained in the Decision, the
`applicants “distinguish[ed] an intermediate entity intercepting a
`communication between two end user devices, as claimed, from a prior art
`reference in which the intended end recipient device (a service verification
`apparatus) receives and makes determinations regarding the signaling
`message.” Final Dec. 12 (citing Ex. 1002, 367–68).
`
`Regarding the disclosure of the ’552 patent, Patent Owner argues that
`“[t]he intercepting of call control server 112 at least includes seizing a
`message, which is not sent directly . . . from a client 104 to the server 112,
`
`
`2 US 2003/0177363 (“Yokota”).
`
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`IPR2018-00884
`Patent 8,539,552 B1
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`and obstructing the message from progress while authentication processes
`are performed.” Req. Reh’g 5 (citing Paper 14, 4–5 (PO Sur-Reply)).
`Although Patent Owner cites to its Sur-Reply, we see no argument there
`regarding “seizing” and “obstruction.” As this was not an argument on
`which Patent Owner previously relied, it was not an argument that we could
`have misapprehended or overlooked.
`
`Furthermore, we explained in the Decision that the ’552 patent uses
`“intercepting” and “receiving” interchangeably. See Final Dec. 11. As we
`stated,
`[T]he ’552 patent . . . uses [“intercepting”] interchangeably with
`“receiving.” See, e.g., Ex. 1001 8:56–58 (“Initially, signaling
`and call control messages are received or intercepted by the
`policy enforcement point.” (emphasis added)); see also id. at
`7:32–42 (explaining that the “policy enforcement point . . . is
`. . . in the communications path of substantially each and every
`call control and signaling message between any end-user client
`and any call control and signaling entity of the network 202
`(including, possibly, another client device).”). We note further
`that the ’552 patent repeatedly states that the network entity
`receives the setup messages, further indicating
`interchangeability of the terms. See, e.g., Ex. 1001, Abstract
`(“The network policy enforcement point receives messages,
`associates the message with a known service, makes a
`determination as to whether a beneficiary of the service is
`authorized to invoke the service, and then filters the messages
`based on the determination.” (emphasis added)), 9:28–30 (“The
`interface 402 [of network policy enforcement point 400]
`receives signaling messages between two network end devices
`and passes the messages to the processor 404.” (emphasis
`added)).
`
`Id.
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`IPR2018-00884
`Patent 8,539,552 B1
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`
`B. Dictionary Definitions
`Second, Patent Owner argues that our interpretation of “intercepting”
`
`is at odds with certain dictionary definitions. Req. Reh’g 5–6. Patent
`Owner notes that its declarant cited multiple definitions of intercept, and
`argues that “[t]hese definitions of record speak for themselves in
`undercutting the interpretation that intercepting means nothing more than
`receiving between endpoints.” Id. Patent Owner’s arguments fail to apprise
`us that we misapprehended or overlooked any matter for several reasons.
`
`Notably, Patent Owner does not cite to its Response or Sur-Reply, nor
`do we identify any instance where Patent Owner previously presented these
`arguments. As these arguments were not previously made, they are not
`arguments that we could have misapprehended or overlooked.
`
`Additionally, we explained in the Decision that the testimony of
`Patent Owner’s declarant is entitled to little weight:
`Dr. Easttom’s declaration testimony interpreting “receiving”
`fails to consider the full disclosure and prosecution history of
`the ’552 patent, as explained above, and, thus is not entitled to
`substantial weight. See, e.g. Ex. 2001 ¶¶ 8–9; see also PO
`Resp. 6 (citing same). Additionally, Patent Owner hindered or
`prevented Petitioner from cross-examining Dr. Easttom, further
`undermining the weight given to Dr. Easttom’s testimony. See,
`e.g., Pet. Reply 2–6; Exs. 1011–24.
`Final Dec. 12 n.9.
`
`Notwithstanding this fact, we considered the testimony of Patent
`Owner’s declarant regarding the dictionary definitions noted by Patent
`Owner in its Request and explained why the testimony was not persuasive of
`patentability:
`[W]e noted in the Institution Decision that Patent Owner’s
`declarant opined that “[a]ll the definitions I found, both in
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`IPR2018-00884
`Patent 8,539,552 B1
`
`
`standard dictionaries and in engineering and
`telecommunications dictionaries[,] all define intercepting as
`someone other than the intended recipient getting the message.”
`Inst. Dec. 8 (emphasis added, alterations in original) (citing
`Ex. 2001 ¶ 15). We fail to see, and Patent Owner fails to
`explain, a distinction between a network entity, positioned
`intermediate the sender device and the intended end recipient
`device, “receiving” the message and “getting” the message, as
`both parties’ interpretations indicate that the message is read by
`an entity other than the intended end recipient device of the
`message.
`Final Dec. 12–13 (footnote omitted). Patent Owner’s Request similarly fails
`to identify any such distinction.
`
`C. Patent Owner’s Proposed Construction
`We noted in the Decision that “Patent Owner argues that ‘intercepted’
`
`means ‘the communicat[ion]s pass[] through (and are read) by the policy
`enforcement point.’” Final Dec. 10 (alterations in original) (citing PO
`Resp. 5). This is precisely how we interpreted the term: “a network entity
`‘intercepting’ a signaling message . . . mean[s] the signaling message is
`received by a network entity located between the endpoints of the call.” Id.
`at 14. Both interpretations indicate that the message is read by an entity
`other than the intended end recipient device of the message.
`
`IV. CONCLUSION
`For the reasons discussed above, we deny Patent Owner’s Request for
`
`Rehearing because we determine that Patent Owner has not met its burden to
`show that in the Final Written Decision, the panel misapprehended or
`overlooked any matter.
`
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`

`IPR2018-00884
`Patent 8,539,552 B1
`
`Outcome of Decision on Rehearing:
`Claim(s)
`35 U.S.C. § Reference(s)
`103(a)
`Kalmanek
`1–4, 6–10,
`12–20, 22,
`23
`5, 11
`
`103(a)
`
`21, 24, 25
`
`103(a)
`
`17
`
`103(a)
`
`Overall Outcome
`
`Granted
`
`Denied
`1–4, 6–10,
`12–20, 22, 23
`
`5, 11
`
`21, 24, 25
`
`17
`
`1–25
`
`
`
`
`
`
`
`
`
`
`
`Kalmanek,
`Shaffer
`Kalmanek,
`Strathmeyer
`Kalmanek,
`Gleichauf
`
`Claim(s)
`
`35 U.S.C. § Reference(s)
`
`Final Outcome of Final Written Decision after Rehearing:
`Claims
`Shown
`Unpatentable
`1–4, 6–10,
`12–17, 23
`
`103(a)
`
`Kalmanek
`
`Claims Not
`Shown
`Unpatentable
`18–20, 22
`
`1–4, 6–10,
`12–20, 22,
`23
`5, 11
`
`103(a)
`
`21, 24, 25
`
`103(a)
`
`17
`
`103(a)
`
`Overall Outcome
`
`Kalmanek,
`Shaffer
`Kalmanek,
`Strathmeyer
`Kalmanek,
`Gleichauf
`
`5, 11
`
`24, 25
`
`17
`
`
`
`21
`
`
`
`1–17, 23–25
`
`18–22
`
`V. ORDER
`It is ORDERED that Patent Owner’s Request for Rehearing is denied.
`
`
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`IPR2018-00884
`Patent 8,539,552 B1
`
`For PETITIONER:
`Adam P. Seitz
`Paul R. Hart
`ERISE IP, P.A.
`adam.seitz@eriseip.com
`paul.hart@eriseip.com
`For PATENT OWNER:
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`Etheridge Law Group
`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`
`Ray A. King
`UNILOC USA, INC.
`ray.king@unilocusa.com
`
`10
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`