IPR2018-00952
`U.S. 9,253,239
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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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`UNIFIED PATENTS INC.
`Petitioner
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`v.
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`BRADIUM TECHNOLOGIES LLC
`Patent Owner
`_________________________
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`IPR2018-00952
`U.S. Patent 9,253,239
`_________________________
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`PETITIONER’S REPLY TO PATENT OWNER
`RESPONSE
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`U.S. 9,253,239
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________________
`
`
`UNIFIED PATENTS INC.
`Petitioner
`
`v.
`
`BRADIUM TECHNOLOGIES LLC
`Patent Owner
`_________________________
`
`IPR2018-00952
`U.S. Patent 9,253,239
`_________________________
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`
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`PETITIONER’S REPLY TO PATENT OWNER
`RESPONSE
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`TABLE OF CONTENTS
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`IPR2018-00952
`U.S. 9,253,239
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`
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`I.
`II.
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`V.
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`INTRODUCTION .......................................................................................... 1
`UNIFIED IS THE SOLE REAL PARTY-IN-INTEREST ............................. 1
`A.
`Legal Standard ...................................................................................... 2
`B.
`Unified Solely Directed, Funded, and Controlled this IPR .................. 4
`C.
`None of the Problematic Circumstances in AIT Are Present ................ 6
`D.
`Bradium’s Generic Evidence Is Insufficient ....................................... 12
`III. THE BOARD SHOULD NOT EXERCISE ITS DISCRETION TO
`TERMINATE THE IPR ................................................................................ 12
`IV. THE BOARD HAS CONSTITUTIONAL POWER TO DECIDE THIS IPR
`PROCEEDING ............................................................................................. 13
`CLAIM 20 OF THE ’239 PATENT IS INVALID ....................................... 14
`A.
`Claim Construction ............................................................................. 14
`1. “a step for determining priority of the first request and the
`second request” ................................................................... 14
`2. “user-controlled image viewpoint” ..................................... 17
`The Combination of Reddy, Hornbacker, and Rosasco Renders
`Obvious the “Determining Priority” Limitation ................................. 18
`1. The Prior Art References Render Obvious Determining
`Priority of the First Request and the Second Request ......... 18
`2. The Prior Art References Render Obvious Determining
`Priority Between the First Request and the Second Request ..
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` ............................................................................................ 20
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`B.
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`
`
`i
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`
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`TABLE OF AUTHORITIES
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`IPR2018-00952
`U.S. 9,253,239
`
`
`Cases
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`Adobe Inc. v. RAH Color Tech. LLC, IPR2019-00627, Paper 15 (PTAB Apr. 25,
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`2019) .................................................................................................................... 10
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`Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336 (Fed. Cir. 2018)
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` ...................................................................................................................... passim
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`Liebel-Flarsheim Co. v. Medrad Inc., 358 F.3d 898 (Fed. Cir. 2004) .............. 15, 16
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`Medronic, Inc. v. Robert Bosch Healthcare Sys., Inc., IPR2014-00488, Paper 61
`
`(PTAB May 22, 2015) ......................................................................................... 13
`
`Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., 839 F.3d 1382 (Fed. Cir.
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`2016) .............................................................................................................. 12, 13
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`Microsoft Corp. v. Bradium Tech. LLC, IPR2016-01897, Paper 17 (PTAB Apr. 5,
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`2017) ...................................................................................................................... 6
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`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) ............. 14, 15, 16
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`Riggin v. Off. of Senate Fair Emp. Prac., 61 F.3d 1563 (Fed. Cir. 1995) .............. 14
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`Square, Inc. v. Unwired Planet LLC, IPR2014-01165, Paper 32, 25 (PTAB Oct.
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`30, 2015) .............................................................................................................. 14
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`Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870 (Fed. Cir. 2004).....
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` ....................................................................................................................... 15, 16
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`
`
`ii
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`Unified Patent Inc. v. Barkan Wireless IP Holdings, L.P., IPR2018-01186, Paper
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`IPR2018-00952
`U.S. 9,253,239
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`27 (PTAB Jan. 8, 2019) ......................................................................................... 4
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`Unified Patent Inc. v. Fall Line Patents, LLC, IPR2018-00043, Paper 34 (PTAB
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`Apr. 4, 2019) .......................................................................................................... 4
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`Unified Patents Inc. v. MOAEC Techs., LLC, IPR2018-01758, Paper 12 (PTAB
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`April 17, 2019) ..................................................................................................... 14
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`Unified Patents, Inc. v. Realtime Adaptive, IPR2018-00883, Paper 36, 19 (PTAB
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`Oct. 11, 2018) ............................................................................................... passim
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`Unified Patents Inc. v. Uniloc 2017 LLC, IPR2017-02148, Paper 82 (PTAB Apr.
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`11, 2019) .................................................................................................... 4, 10, 11
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`Unified Patents Inc. v. Universal Secure Registry LLC, IPR2018-00067, Ex. 1045
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`(public version of Paper 54) (PTAB May 1, 2019) ............................................... 4
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`Ventex Co. v. Columbia Sportswear N. Am., Inc., IPR2017-00651, Paper 152
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`(PTAB Jan. 24, 2019) (precedential) ....................................................... 3, 4, 10
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`Worlds Inc. v. Bungie, Inc., 903 F.3d 1237 (Fed. Cir. 2018) .................................... 2
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`Statutes
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`35 U.S.C. § 312(a)(2) ........................................................................................ 11, 12
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`35 U.S.C. § 314(a) ................................................................................................... 12
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`35 U.S.C. § 315(b) .................................................................................................... 9
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`35 U.S.C. § 325(b) .............................................................................................. 9, 12
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`
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`iii
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`IPR2018-00952
`U.S. 9,253,239
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`37 C.F.R. § 42.71(d) ................................................................................................ 13
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`Other Authorities
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`Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012) ................................ 2, 13
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`iv
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`
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`I.
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`INTRODUCTION
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`IPR2018-00952
`U.S. 9,253,239
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`Nothing in Bradium’s Patent Owner Response (“POR”) suggests that claim
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`20 should remain patentable for the reasons discussed herein. Despite the Board’s
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`Institution Decision (“ID”), Bradium copied most of its POR from its Patent Owner
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`Preliminary Response (“POPR”). Those arguments are still unpersuasive for the
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`same reasons previously noted by the Board.
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`Bradium requests again, with limited additional evidence than what was
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`previously considered by the Board, that this trial be terminated because all of the
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`real parties-in-interest (“RPI”) allegedly were not identified. But, as detailed below,
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`Bradium’s position continues to be without merit.
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`Finally, Bradium improperly requests that (1) the Board should use its
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`discretionary power to terminate the proceeding; and (2) the Board should terminate
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`the proceeding because it allegedly does not have the constitutional authority to
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`decide this IPR proceeding. These arguments fail, and the Board should maintain
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`this IPR proceeding.
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`Unified requests that the Board cancel claim 20 of the ’239 patent as being
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`unpatentable.
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`II. UNIFIED IS THE SOLE REAL PARTY-IN-INTEREST
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`In the ID, the Board correctly determined that Unified is the sole RPI. ID, 2-
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`14. The Board’s preliminary determination was based on the Federal Circuit’s
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`
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`1
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`IPR2018-00952
`U.S. 9,253,239
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`decision in Applications in Internet Time, LLC v. RPX Corp., 897 F.3d 1336 (Fed.
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`Cir. 2018) (“AIT”). Rather than the overly broad and overly simplistic “benefits-
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`plus-relationship” test urged by Bradium, the Federal Circuit’s AIT decision
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`endorsed the Trial Practice Guide’s (“TPG”) multi-factor approach in which
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`funding, direction, and control are central to the question of whether a third party is
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`an RPI. See, e.g., TPG, 77 Fed. Reg. 48756, 48759 (Aug. 14, 2012); AIT, at 1349-
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`51; Worlds Inc. v. Bungie, Inc., 903 F.3d 1237, 1245 (Fed. Cir. 2018). This panel’s
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`ID recognized this understanding of the law, and Bradium cites no subsequent legal
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`authority that alters this analysis. ID, 2-14; POR, 3-15. Bradium’s incorrect
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`interpretation of AIT has been repeatedly rejected by the Board in this and other
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`cases. Bradium’s POR presents few additional facts as compared to its POPR given
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`the extensive discovery that occurred prior to institution—and the little that is new
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`is similar to what was already rejected in the ID. Compare POPR, 3-10 with POR,
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`3-15; see also ID, 2-14. The relevant factors that led to remand in AIT do not exist
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`in this case. Thus, the Board should confirm its determination that Unified is the sole
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`RPI.
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`A. Legal Standard
`The legal standard discussed in Petitioner’s Reply to the POPR (pp. 2-4), and
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`adopted in the ID, has not changed. Bradium cites no subsequent legal authority that
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`alters this analysis. ID, 2-14; POR, 3-15. Indeed, Bradium failed to mention that its
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`2
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`IPR2018-00952
`U.S. 9,253,239
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`interpretation contradicts binding authority issued after the ID. In a precedential
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`decision, the Board cautioned against “‘overextend[ing]’ the reasoning set forth in
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`AIT to any situation where ‘a party benefits generally from the filing of the Petition
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`and also has a relationship with the Petitioner.’” Ventex Co. v. Columbia
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`Sportswear N. Am., Inc., IPR2017-00651, Paper 152, 10 (PTAB Jan. 24, 2019)
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`(precedential) (holding that the unnamed party was an RPI because it did not
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`“receive a merely generalized benefit” and “had a specially structured,
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`preexisting, and well established business relationship with one another,
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`including indemnification and exclusivity agreements”). Consistently, the
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`Board has understood AIT as in this case’s ID.1 See, e.g., Unified Patents, Inc. v.
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`1 In more than 150 IPR petitions, both before and after AIT and including the this
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`ID, each time a patent owner has challenged Unified’s RPI certification, the Board
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`has found that Unified properly certified it is the sole RPI. See, e.g., Uniloc 2017
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`LLC, IPR2017-02148, Paper 82 (Apr. 11, 2019); Universal Secure Registry LLC,
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`IPR2018-00067, Ex. 1045 (public version of Paper 54) (May 1, 2019); Barkan
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`Wireless IP Holdings, L.P., IPR2018-01186, Paper 27 (Jan. 8, 2019); Realtime
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`Adaptive Streaming, IPR2018-00883, Paper 36 (Nov. 27, 2018); Fall Line Patents,
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`LLC, IPR2018-00043, Paper 34 (Apr. 4, 2019) (non-exhaustive list of post-AIT cases
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`3
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`IPR2018-00952
`U.S. 9,253,239
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`Realtime Adaptive, IPR2018-00883, Paper 36, 19 (PTAB Oct. 11, 2018) (finding,
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`after applying AIT, that Unified is the sole RPI; cited by Ventex, IPR2017-00651,
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`Paper 152, 10). All of Bradium’s arguments are incorrectly based on applying
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`a “benefits-plus-relationship” test to determine whether a third party is an IPR.
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`Thus, Bradium has not presented arguments or facts germane to the proper standard
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`used in the ID—none exist.
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`B. Unified Solely Directed, Funded, and Controlled this IPR
`No third party directed, funded, or controlled this IPR. Ex. 2013, 3; see also
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`Ex. 2004, 149. Unified members are contractually prevented from attempting to
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`assert control over Unified’s filing activities. See Ex. 2008, 10-11; Ex. 2013, 2-3.
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`No member communicated with Unified regarding the filing of this IPR, much less
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`directed and controlled Unified’s filing of the IPR. Ex. 2013, 3. Unified is unaware
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`that any of its members have an interest in the patent—none of its members have
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`been served with a complaint alleging infringement of this patent.2 See Ex. 2004,
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`138:14-151:6. No member payed Unified to file this IPR. See Ex. 2013, 3.
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`in which the Board affirmed Unified’s RPI certification over patent owner’s
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`challenge).
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`2 Thus, none of Unified’s members are time-barred under 35 U.S.C. § 315(b).
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`4
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`IPR2018-00952
`U.S. 9,253,239
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`Unified operates independently to protect technology zones, not individual
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`members. Ex. 2004, 153 (“[W]e just don’t do any type of collaboration around what
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`we should file on and what we shouldn’t . . . our strategy is, instead, to protect a
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`technology zone”). Unified directs its work to protecting those zones from the threat
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`of poor-quality patents by “independently select[ing] which patents to challenge
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`based on the perceived deterrent value to a technology zone.” Ex. 2013, 5. Unified
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`members pay annual zone subscription fees based on their subscription date; Unified
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`alone determines whether and how it spends its money. See Ex. 2013, 5. No fees are
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`designated for filing challenges, let alone challenges against a specific patent. See
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`id.
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`Consistent with these long-standing practices, Unified filed this IPR
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`independently without input from any member. Unified alone decided to challenge
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`the claims of the ’239 patent and used solely in-house resources and attorneys to
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`prepare its Petition based on an earlier challenge. See Ex. 2004, 149; Ex. 2013, 7-
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`12. No member payed Unified to file this IPR. See Ex. 2013, 3. The ’239 patent is
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`owned by Bradium—an entity openly related to well-known patent assertion entity
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`General Patent Corporation (“GPC”) as advertised on Bradium’s website. Ex. 2014.
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`5
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`IPR2018-00952
`U.S. 9,253,239
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`The Board already noted that the ’239 patent was likely unpatentable,3 and in view
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`of public information about Bradium’s business, Bradium could assert this patent
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`again. See Ex. 2004, 153. Thus, Unified acted in accordance with its independent
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`mission to challenge weak patents within its protected zones. Unified was not driven
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`by the desires of a specific member.
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`Bradium presents no evidence contradicting these factors. Instead, Bradium
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`tries to tie its licensing activities with certain companies to Unified’s petition—yet
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`it is uncontested that Unified was unaware of these activities before this petition was
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`filed. POR, 9, 12-14; ID, 7, 13; Ex. 2013, 12-13. Not only is Bradium’s argument
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`illogical, it leads to the absurd result that Bradium’s choice of who to seek a license
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`from dictates who is an RPI to Unified’s petition.
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`C. None of the Problematic Circumstances in AIT Are Present
`Bradium narrowly read the Board’s ID as relying on the fact that neither
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`Google nor Apple (the alleged RPIs) have been sued to distinguish the facts of AIT.
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`POR, 12. However, this was just one of the distinguishing factors that the Board
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`analyzed. The Board noted that Bradium “ignores the many facts that distinguish the
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`circumstances present here from those in AIT” such as (1) no member is time-barred;
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`3 See Microsoft Corp. v. Bradium Tech. LLC, IPR2016-01897, Paper 17, 33-34
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`(PTAB Apr. 5, 2017) (instituting an IPR of the ’239 patent).
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`6
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`IPR2018-00952
`U.S. 9,253,239
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`(2) no payment was made to Unified shortly before the filing of the IPR, (3) Google
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`and Apple did not discuss the patent or a potential IPR with Unified prior to the
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`filing of the IPR; and (4) Unified, Google, and Apple do not share a board member.
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`ID, 7, 9-12. Moreover, unlike AIT, Unified did not seek to negotiate a settlement or
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`license with Bradium on behalf of Google or Apple while they were time-barred
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`from challenging the patent. None of this is contested.
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`The facts here are markedly different from AIT. There is a clear, independent
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`explanation for why Unified filed this IPR: the ’239 patent falls squarely within one
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`of Unified’s zones, has been asserted by an NPE, and had previously been held,
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`preliminarily, as likely unpatentable. See Ex. 2013, 6. No member made Unified
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`aware of the ’239 patent or even of Bradium and GPC generally, and none expressed
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`to Unified any interest in the ’239 patent. See Ex. 2013, 14; Ex. 2004, 134. Unified
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`shares no managers, directors, or any other officer with any of its members. Ex.
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`2013, 17.4 Unified never sought to ascertain the desires of any of its members when
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`4 Contrary to Bradium’s speculation (POR, 7), Unified uses the phrase “tightly
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`aligns” (Ex. 2020) to indicate that Unified protects technology zones in which its
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`members practice, not to convey that it in any way coordinates IPR challenges with
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`members (which it does not). See Ex. 2004, 94-95 (explaining why Unified set up
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`its “zone structure” to enable it to “work independently”); see also AIT, 897 F.3d at
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`
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`7
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`IPR2018-00952
`U.S. 9,253,239
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`filing this petition. See Ex. 2004, 97-98, 152 (“[W]e don’t have conversations with
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`our members about this, who is licensed . . . .”).5 Again, Unified was unaware of
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`Bradium’s licensing efforts against its members which Bradium heavily relies upon
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`for its argument. POR, 9, 12-14.
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`There is also no evidence of any time bar under 35 U.S.C. § 315(b), a “crucial”
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`fact in AIT. Realtime Adaptive, IPR2018-0083, Paper 36, 15 (quoting AIT, 897 F.3d
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`at 1353). Furthermore, Bradium’s RPI arguments regarding whether a hypothetical
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`IPR filed in the future by either Google or Apple would be denied institution under
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`35 U.S.C. § 325(d) based on discretionary reasons are speculative at best and do not
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`relate to the type of benefit contemplated by AIT. No Unified member has filed its
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`1357 (noting petitioner’s language that “its interests are 100% aligned with those of
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`[its] clients”) (citation omitted); Realtime Adaptive, IPR2018-00883, Paper 36, 15
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`(noting the RPI analysis must include more than cursory examination of statements
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`about interest alignment).
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`5 Bradium’s vague suggestion in its POR and in deposition questioning of Unified’s
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`CEO, Kevin Jakel, that it may have threatened parties with suit regarding the
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`challenged patent are the only times Unified has been made aware of the possibility
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`that such threats might exist. See, e.g., POR, 9; Ex. 2004, 145 (noting Unified was
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`unaware of whom, if anyone, Bradium has approached for licensing).
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`8
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`IPR2018-00952
`U.S. 9,253,239
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`own patent challenge to the ’239 patent; none have been sued by Bradium, or, to the
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`best of Unified’s knowledge at the time it filed the Petition, even threatened with
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`suit. See POR, 6, 9 (identifying only Microsoft as an entity sued by Bradium and
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`disclosing that Bradium has had “licensing” discussions with certain of Unified’s
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`members); see also Ex. 2004, 178 (noting no member sent Unified any demand
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`letters).
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`The Board did not fail to consider the “nature of the entity” as alleged by
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`Bradium. POR, 12-15. The Board correctly analyzed the factors discussed above and
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`determined that “beyond the general benefit received from Petitioner’s common
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`practice of filing IPRs in relevant technology areas and, . . . the mixed, at best benefit
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`based on the fact that the two members have had licensing discussions with Patent
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`Owner, the evidence does not point to any further specific benefits the two members
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`cited by Patent Owner would have received from Petitioner’s actions in return for
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`membership.” ID, 12. Seeking in vain to align this case with AIT, Bradium
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`speculates about the relationship between Unified and its members, arguing that
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`Unified members must benefit from this IPR because they practice in technology
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`zones that Unified protects. POR, 8. But Bradium’s arguments that certain members
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`are “clear” beneficiaries because they provide similar services to a company that
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`9
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`IPR2018-00952
`U.S. 9,253,239
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`Bradium previously sued is not consistent with the caselaw.6 “The ‘interest’ or
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`‘benefit’ discussed in AIT is not so broad as to mean any interest whatsoever.” Uniloc
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`2017 LLC, IPR2017-02148, Paper 82, 22. The interest or benefit cannot be a “merely
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`generalized benefit.” Ventex Co., IPR2017-00651, Paper 152, 10. And
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`Bradium’s simplistic “benefits-plus-relationship” test would lead to another absurd
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`result; every member of a joint defense group would automatically become RPIs to
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`a single member’s petition without needing to look at the specific facts of the case
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`at hand. This is inconsistent with the caselaw. Adobe Inc. v. RAH Color Tech.
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`LLC, IPR2019-00627, Paper 15, 10 (PTAB Apr. 25, 2019).
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`Regardless, Bradium’s speculation is incorrect. Unified files IPR petitions to
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`protect technology zones, not individual members. See Ex. 2004, 94-95. Many
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`companies practicing in a Unified technology zone may be threatened by NPEs,
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`whether Unified members or otherwise. None of Unified’s members have been sued
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`by Bradium. In the absence of suit, there is no way for Unified to know whether any
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`entity may “benefit” from an unpatentability determination of these particular
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`challenged claims; in theory, other members or other entities could already be
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`licensed, or this challenge could frustrate others’ litigation goals. See Ex. 2004, 152-
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`6 Bradium ignores other companies that make, use, or sell mapping technology that
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`are not Unified’s members such as Michelin Maps and HERE (f/k/a Nokia Maps).
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`10
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`IPR2018-00952
`U.S. 9,253,239
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`53 (“[B]ecause we don’t have conversations with our members about this, who is
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`licensed . . . we don’t have any knowledge of what their litigation strategy is. . . .
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`[W]e are just as likely to file an IPR with a claim construction that they don’t like as
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`we are to file a claim construction that they love.”). Bradium’s “benefit” theory alone
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`is too speculative to support a finding that any other entity is an RPI.
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`Furthermore, Google and Apple’s membership dues are irrelevant. Bradium
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`argues that these members would not pay Unified unless they perceived a benefit.
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`POR, 8, 10-13. However, as the Board in Uniloc recognized, “[Unified] is not solely
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`an inter partes review-filing entity; it provides several services, including
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`monitoring, patent licensing, and various analytics.” Uniloc 2017 LLC, 20 (internal
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`citations omitted). The general benefit of protecting a particular technology zone
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`(which provides a general benefit to both members and non-members that practice
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`in the zone) does not make an unnamed entity an RPI. Id., 22. Membership alone is
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`not enough. See Realtime Adaptive, IPR2018-00883, Paper 36, 19 (finding that “the
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`general benefits accruing from such membership” are insufficient “under the
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`principles espoused by AIT and the common law to require that all [Unified]
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`members be identified as RPIs under § 312(a)(2)”). Further, Unified’s members pay
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`their fees once annually. See Ex. 2013, 5. Unlike in AIT, there is no evidence here of
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`a non-party paying fees suspiciously near the filing of the IPR. See AIT, 897 F.3d at
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`1342.
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`11
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`D. Bradium’s Generic Evidence Is Insufficient
`Bradium notes that Unified’s “join” web page linked to a third-party article
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`IPR2018-00952
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`stating that Unified’s membership structure allowed its members to benefit from
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`Unified’s IPRs without being considered RPIs. POR, 9-10 (citing Ex. 2010, 6-7).
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`But Bradium cherry-picked what information is contained in the third-party article.
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`Bradium failed to note that the third-party article indicates that members’ inability
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`to direct or control Unified’s actions or spending led to members not being RPIs.
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`Ex. 2010, 7. Regardless, no evidence exists that the alleged RPIs sought this
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`particular “benefit” in general much less for the patent challenged here.
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`III. THE BOARD SHOULD NOT EXERCISE ITS DISCRETION TO
`TERMINATE THE IPR
`The Board should not reverse its decision to institute based on either § 325(d)
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`or § 314(a). The Board already analyzed the Petition based on these sections and
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`used its discretion to institute. Furthermore, the caselaw that Bradium cites
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`(Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., 839 F.3d 1382, 1385 (Fed.
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`Cir. 2016)) is not applicable to the facts here. In that IPR, the Board reversed its
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`decision to institute because the Petitioner failed to name an RPI and that unnamed
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`party was time-barred from filing a Petition. Medronic, Inc. v. Robert Bosch
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`Healthcare Sys., Inc., IPR2014-00488, Paper 61, 18-19 (PTAB May 22, 2015).
`
`
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`12
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`IPR2018-00952
`U.S. 9,253,239
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`Thus, the Board did not reverse itself based on a discretionary reason to institute
`
`because the petition was time-barred.
`
`Moreover, Bradium’s request is procedurally improper. Bradium should have
`
`raised this issue in a request for rehearing, not in its POR. 37 C.F.R. § 42.71(d). In
`
`Medronic, the Board held that a motion to terminate was appropriate (instead of a
`
`request for rehearing) because the motion was based on new evidence uncovered in
`
`discovery post-institution. Id., 20. The Board cited to the Trial Rules which stated
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`that “[a]fter institution, standing issues may still be raised during the trial. A patent
`
`owner may seek authority from the Board to take pertinent discovery or to file a
`
`motion to challenge in petitioner’s standing.” Id.; see also TPG, 77 Fed. Reg. at
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`48695. Here, Bradium (1) did not file a request for rehearing on these issues; (2) is
`
`not relying on any new evidence obtained post-institution; and (3) has not timely
`
`requested or filed a motion to terminate this proceeding.
`
`For at least these reasons, the Board should not reverse itself regarding
`
`discretionary reasons to institute at this point in the proceeding.
`
`IV.
`
`IT IS CONSITUTIONAL FOR THE BOARD TO DECIDE THIS
`PROCEEDING
`The Board should not terminate the proceeding based on Bradium’s
`
`contentions that the Board lacks constitutional authority. POR, 29-32. The Board
`
`should continue review of this proceeding and decline to take a position regarding
`
`
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`13
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`IPR2018-00952
`U.S. 9,253,239
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`the constitutional question posed by Bradium. As a general matter, “administrative
`
`agencies do not have jurisdiction to decide the constitutionality of congressional
`
`enactments” where consideration of the constitutional question would “require the
`
`agency to question its own statutory authority or to disregard any instructions
`
`Congress has given it.” Riggin v. Off. of Senate Fair Emp. Prac., 61 F.3d 1563,
`
`1569–70 (Fed. Cir. 1995). The Board has previously declined to consider patent
`
`owner arguments based on constitutional challenges to its authority and should again
`
`decline to consider Bradium’s arguments here. Unified Patents Inc. v. MOAEC
`
`Techs., LLC, IPR2018-01758, Paper 12, 21 (PTAB April 17, 2019); Square, Inc. v.
`
`Unwired Planet LLC, IPR2014-01165, Paper 32, 25 (PTAB Oct. 30, 2015).
`
`V. CLAIM 20 OF THE ’239 PATENT IS INVALID
`A. Claim Construction
`1.
`“a step for determining priority of the first request and the
`second request”
`
`
`Bradium has not proposed a construction for this term, but its attempt to
`
`distinguish the prior art betrays a latent construction that is inappropriate under the
`
`Phillips standard—much less the broadest reasonable interpretation (BRI) standard
`
`that governs here. Specifically, Bradium appears to rewrite this term as “determining
`
`priority between of the first request and the second request.” See POR, 61. This
`
`interpretation is unduly narrow in view of the intrinsic record.
`
`
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`14
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`IPR2018-00952
`U.S. 9,253,239
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`The plain language of the term merely recites that priority pertaining to the
`
`first request and the second request be determined—not that a priority between the
`
`two requests must be determined. According to claim 1, the first request is associated
`
`with a first viewpoint and the second request is associated with a second viewpoint.
`
`Ex. 1001, 12:29-39, 49-60. A POSA would have understood that determining
`
`priority for these two requests could involve determining priority of the first request
`
`among other requests associated with a first viewpoint and determining priority of
`
`the second request among other requests associated with a second viewpoint. Ex.
`
`1027, ¶28. A POSA would have also understood that the priority determined in this
`
`term could refer to prioritizing between the first request and the second request. The
`
`Board recognized that “the claim broadly requires prioritizing requests for update
`
`data parcels,” but Bradium’s apparent construction ignores this by excluding the first
`
`type of prioritization. ID, 40 (emphasis added). The plain language of the term does
`
`not require Bradium’s narrow reading—especially under the BRI standard. And
`
`even under Phillips, the claims do not recite “between,” and it is improper for
`
`Bradium to attempt to add that language into the claim. Superguide Corp. v. DirecTV
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`Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004); see also Liebel-Flarsheim Co.
`
`v. Medrad Inc., 358 F.3d 898, 906 (Fed. Cir. 2004).
`
`The specification confirms this understanding of the claim’s plain language.
`
`The specification describes determining prioritization of a request for each field of
`
`
`
`15
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`
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`IPR2018-00952
`U.S. 9,253,239
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`view separately. Ex. 1001, 4:1-3 The specification further explains that “image
`
`parcels with lower resolution levels will accumulate greater priority values. . . . Such
`
`lower resolution image parcels are therefore more likely to be preferentially
`
`downloaded.” Id., 10:57-64. Conversely, “relatively higher-resolution image parcels
`
`near the image view point will occasionally achieve a higher priority than relatively
`
`remote and partially viewed image parcels of lower resolution.” Id., 11:1-4. “Thus,
`
`in accordance with the present invention, the priority assigned to image parcel
`
`requests effectively influences the order of requests based on the relative
`
`contribution of the image parcel data to the total display quality of the image.” Id.,
`
`11:10-14. Thus, the specification describes prioritizing data parcels within a current
`
`viewpoint based on resolution. Ex. 1027, ¶30. As the current viewpoint changes, the
`
`process would be repeated for the new viewpoint. Id.
`
`In arguing that the claims require a prioritization “between” the first request
`
`and the second request, Bradium ignores the majority of the specification’s
`
`discussion regarding prioritization (summarized above); instead, Bradium cites to
`
`the single place the specification addresses prioritization regarding multiple
`
`viewpoints: “based in part in changes on the viewing frustum, determin[ing] the
`
`ordered priority of image parcels to be requested from the server 12, 22 to support
`
`the progressive rendering of the displayed image queue. . . . Preferably, the pending
`
`requests are issued in priority order, thereby dynamically reflecting changes in the
`
`
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`16
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`IPR2018-00952
`U.S. 9,253,239
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`viewing frustum with minimum latency.” Ex. 1001, 7:54-63 (emphases added); POR,
`
`34-35. The remaining citations Bradium relies on are related to generally
`
`implementing a prioritization queue but are not specific to a prioritization queue
`
`between viewpoints. Id., 9:4-21, 10:20-52, 11:17-21, POR, 34-35. While a POSA
`
`may have been able to use this teaching to construct a basic prioritization scheme
`
`between two different viewpoints, it is inappropriate for Bradium to import this one,
`
`vaguely-described embodiment into the claim while ignoring the clearly-described
`
`embodiments that the specification ties to the claim. Ex. 1027, ¶¶31-32. Therefore,
`
`Bradium’s latent construction that interprets this term as “determining priority
`
`between of the first request and the second request” should be rejected.
`
`2.
`“user-controlled image viewpoint”
`Bradium proposed that “user-controlled image viewpoint” should be
`
`construed as a viewpoint that is controlled by the user, for example, by user
`
`navigational controls. POR, 39-40. Unified does not contest this construction. Under
`
`this construction, user navigational controls would include several mechanisms for
`
`allowing the user to control the viewpoint. Ex. 1027, ¶25. Some non-comprehensive
`
`examples of user navigation controls include (1) a user entering coordinates for a
`
`viewpoint; (2) a user moving a mouse to control direction and speed for changing
`
`the viewpoint; (3) a user using a mouse to select a location to view; (4) a user using
`
`keyb
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