UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
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`LG ELECTRONICS, 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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`______________
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`IPR2018-01503
`PATENT 6,216,158
`______________
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.107(a)
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`
` The owner of this patent is Uniloc 2017 LLC.
`
` 1
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`______________
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`______________
`
`
`
`LG ELECTRONICS, INC.
`
`Petitioner
`
`v.
`
`UNILOC LUXEMBOURG, S.A. 1
`
`Patent Owner
`
`______________
`
`IPR2018-01503
`PATENT 6,216,158
`______________
`
`
`
`
`
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`
`
`
`PURSUANT TO 37 C.F.R. §42.107(a)
`
`
`
`
` The owner of this patent is Uniloc 2017 LLC.
`
` 1
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`IPR2018-01503
`U.S. Patent 6,216,158
`
`Table of Contents
`
`
`
`I.
`II.
`III.
`IV.
`V.
`
`VI.
`
`INTRODUCTION .................................................................................... 1
`THE ’158 PATENT .................................................................................. 1
`RELATED PROCEEDINGS .................................................................... 2
`LEVEL OF ORDINARY SKILL IN THE ART ...................................... 3
`THE REDUNDANT CHALLENGE IN GROUND 2 IS
`PROCEDUARLLY AND SUBSTANTIVELY DEFICIENT ................. 3
`PETITIONER DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM .......................................................................... 5
`A.
`Claim Construction ......................................................................... 6
`1.
`“palm sized computer” ......................................................... 6
`2.
`“means for accessing a description of a service” ................. 7
`3.
`“means for downloading the program code” ....................... 8
`4.
`“means for executing at least a portion of the
`program code” ...................................................................... 9
`“means for sending control commands to the
`service in response to the means for executing” ................ 10
`Ground 1 Should be Denied ......................................................... 12
`1.
`The Cited References that Rely on “Jini” Do not
`Qualify as Prior Art ............................................................ 12
`2. Multiple Ground 2 References are Not Enabling ............... 13
`3.
`The Ground 2 references do not disclose
`“accessing a description of the service from a
`directory of services, the description of the
`service including at least a reference to program
`
`B.
`
`5.
`
`ii
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`
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`IPR2018-01503
`U.S. Patent 6,216,158
`code for controlling the service” (Claim 1)........................ 15
`The Ground 2 references do not disclose
`“accessing a directory of services, a service in the
`directory of services corresponding to the
`program, the description of the service including
`at least a reference to program code for
`controlling the service” (Claim 8) or “means for
`accessing a description of a service, the
`description of the service including at least a
`reference to program code for controlling a
`service” (Claim 20) ............................................................ 17
`The Ground 2 references do not disclose
`“downloading the program code to the palm sized
`computer” (Claim 1) or “loading the program
`code,” (Claim 8), “loading the program code onto
`the palm sized computer” (Claim 9) or “means
`for downloading the program code” (Claim 20) ............... 18
`The Ground 2 references .................................................... 21
`do not disclose “the palm sized computer
`executing at least a portion of the program code;
`and sending control commands to the service
`from the palm sized computer in response to the
`executing, wherein the service controls an
`application that cannot be executed on the palm
`sized computer.” (Claim 1) ................................................ 21
`The Ground 2 references do not disclose a
`“method of controlling a program on a network
`device from a palm sized computer, the computer
`is not capable of executing the program by
`itself…” (Claim 8) and means for sending control
`commands to the service in response to the means
`for executing, wherein the service controls an
`application that cannot be executed on the means
`for executing (Claim 20) .................................................... 24
`The Petition fails to show a POSA would have
`
`4.
`
`5.
`
`
`6.
`
`7.
`
`8.
`
`iii
`
`
`
`c)
`
`C.
`
`9.
`
`2.
`
`b)
`
`IPR2018-01503
`U.S. Patent 6,216,158
`combined Jini-QS (EX1005), and Arnold
`(EX1006), and McCandless (EX1007) .............................. 25
`a)
`The proposed combination fails because a
`POSA would not have looked to Jini-QS
`(EX1005) or McCandless (EX1007) as
`teaching references ................................................... 25
`The proposed combination further fails
`because Jini-QS itself does not support
`making the proposed combination ........................... 26
`The proposed combination further fails
`because Arnold and the RMI Protocol do
`not support making the proposed
`combination .............................................................. 28
`Ground 1 should further be denied because all
`other challenged claims of Ground 1 depend from
`Claim 1 or Claim 8 ............................................................. 29
`Ground 2 Should be Denied ......................................................... 29
`1.
`The Ground 2 references do not disclose
`“accessing a description of the service from a
`directory of services, the description of the
`service including at least a reference to program
`code for controlling the service” (Claim 1)........................ 29
`The Ground 2 references do not disclose
`“accessing a directory of services, a service in the
`directory of services corresponding to the
`program, the description of the service including
`at least a reference to program code for
`controlling the service” (Claim 8) ...................................... 34
`The Ground 2 references fail to disclose “wherein
`the service controls an application that cannot be
`executed on the palm sized computer” (Claim 1) .............. 34
`The Ground 2 references fail to disclose a
`“method of controlling a program on a network
`
`3.
`
`4.
`
`iv
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`IPR2018-01503
`U.S. Patent 6,216,158
`device from a palm sized computer, the computer
`is not capable of executing the program by
`itself…” (Claim 8) .............................................................. 35
`The Petition fails to show a POSA would have
`combined the Ground 2 references of Riggins
`(EX1008) and Devarakonda (EX1009) ............................. 36
`a)
`There is no evidence that Riggins
`(EX1008)’s teachings of web browser
`applets could be implemented in a PDA .................. 37
`The proposed combination fails because
`Riggins (EX1008) teaches away from the
`passing reference PDA of Devarakonda
`(EX1009) .................................................................. 39
`The Petition lacks the required factual
`inquiry into reasons for the proposed
`combination and lacks explanation as to
`how or why the references would be
`combined .................................................................. 41
`Ground 2 should be denied because all other
`challenged claims of Ground 2 depend from
`Claim 1 or Claim 8 ............................................................. 44
`THE CONSTITUTIONALITY OF INTER PARTES REVIEW
`IS THE SUBJECT OF A PENDING APPEAL ..................................... 44
`VIII. CONCLUSION ....................................................................................... 45
`
`VII.
`
`5.
`
`6.
`
`b)
`
`c)
`
`v
`
`
`
`Description
`Declaration of William C. Easttom
`“Power Browser: Efficient Web Browsing for PDAs,” FN2 of
`2001
`“Two Approaches to Bringing Internet Services to WAP
`Devices,” FN3 of EX2001
`Declaration of William C. Easstom in Case No. 3:18-cv-00365
`
`
`Exhibit No.
`2001
`2002
`
`2003
`
`2004
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`IPR2018-01503
`U.S. Patent 6,216,158
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`I.
`
`INTRODUCTION
`Uniloc 2017 LLC (“Uniloc” or “Patent Owner”) submits this Response to
`Petition IPR2018-015032 for Inter Partes Review (“Pet.” or “Petition”) of United
`States Patent No. 6,216,158 (“the ’158 patent” or “EX1001”) filed by LG
`Electronics, Inc. (“Petitioner”). The Petition is procedurally and substantively
`defective for at least the reasons set forth herein.
`
`II. THE ’158 PATENT
`The ’158 patent is titled “System and method using a palm sized computer to
`control network devices.” The ʼ158 patent issued April 10, 2001, from U.S. Patent
`Application No. 09/237,609 filed January 25, 1999 and originally assigned to 3Com
`Corporation (3Com).
`The inventors of the ’158 patent observed that at the time, relative to desktop
`and laptop computers, palm sized computers had limited processing, display and
`input capabilities. As a result of those limitations, palm sized computers did not run
`the same applications as desktop or laptop computers. Other limitations of palm
`sized computers included limited battery life and lower bandwidth communications
`with other devices. Nonetheless, because palm sized computers have a big advantage
`in portability, it was desirable to be able to access desktop functionality from palm
`sized computers. EX1001, 1:22-32.
`
`
`
` 2
`
` The instant Petition and Petitioners seek joinder to IPR2018-00361. See Paper 3.
`Furthermore, as Petitioners state, the instant Petition is a “carbon copy” of the
`original petition in IPR2018-00361. Id., at 1.
`
`1
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`IPR2018-01503
`U.S. Patent 6,216,158
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`According to the invention of the ’158 Patent, a program on the palm sized
`computer is used to access a registry of network services. Id., 1:36-38. The registry
`includes descriptions for various services. Id., 1:38-40. Each description includes at
`least a reference to program code that can be downloaded to the palm sized
`computer. Id., 1:40-41. Executing this program causes the palm sized computer to
`issue commands directly to the specific network services needed. Id., 1:41-43. In
`some cases, these network services include application services for running desktop
`applications that the palm sized computer could not execute. Id., 1:43-45
`In some embodiments, the device executing the network services and the palm
`sized computer are executing middleware applications for communicating with the
`registry. In some embodiments, this middleware includes Jini technology from Sun
`Microsystems. Additionally, the programs downloaded can include Java program
`code. Id., 1:46-51.
`
`III. RELATED PROCEEDINGS
`The following proceedings are currently pending cases concerning U.S. Pat.
`No. 6,216,158 (EX1001). All district court cases are stayed pending this IPR.
`
`Case Caption
`Uniloc USA, Inc. et al v. Apple Inc.
`
`Case Number District
`2-17-cv-
`TXED
`00571
`
` Case Filed
`August 2,
`2017
`
`Uniloc USA, Inc. et al v. LG Electronics
`USA, Inc. et al
`
`Uniloc USA, Inc. et al v. Exclusive Group
`LLC d/b/a Binatone North America
`
`Apple Inc. v. Uniloc 2017 LLC et al
`
`4-17-cv-
`00827
`
`1-17-cv-
`03962
`
`IPR2018-
`00361
`
`TXND
`
`October 13,
`2017
`
`INSD
`
`October 27,
`2017
`
`PTAB Dec. 20, 2017
`
`2
`
`
`
`Uniloc USA, Inc. et al v. Apple Inc.
`
`Uniloc USA, Inc. et al v. LG Electronics
`USA, Inc. et al
`
`Uniloc USA, Inc. et al v. Amazon.com,
`Inc.
`
`3-18-cv-
`00365
`4-17-cv-
`02915
`
`2-18-cv-
`00123
`
`IPR2018-01503
`U.S. Patent 6,216,158
`CAND
`January 17,
`2018
`CAND May 17, 2018
`
`TXED
`
`March 31,
`2018
`
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART
`Given that the Petition does not offer a definition of a person of ordinary skill
`in the art (“POSA”), Patent Owner does not offer a competing definition for POSA
`at this time, but reserves the right to do so.
`
`V. THE REDUNDANT CHALLENGE IN GROUND 2 IS
`PROCEDUARLLY AND SUBSTANTIVELY DEFICIENT
`The Petition presents a facially-redundant challenge against the challenged
`claims based in Ground 2. As a procedural matter, this redundant challenge of the
`challenged claims should ultimately be denied because Petitioner made no attempt
`to articulate the relative strengths and weaknesses of Ground 1 so as to justify the
`redundancy in raising multiple redundant challenges against the challenged claims.
`The Board often cites the seminal holding in Liberty Mut. that “multiple
`grounds, which are presented in a redundant manner by a petitioner who makes no
`meaningful distinction between them, are contrary to the regulatory and statutory
`mandates, and therefore are not all entitled to consideration.” See Liberty Mutual
`Insurance Co. v. Progressive Casualty Insurance Co., CBM2012-00003, 2012 WL
`9494791, at *2 (Paper 7 Order) (PTAB October 25, 2012). The Board further
`confirmed in Liberty Mut. (and has since reiterated in legions of cases citing Liberty
`
`3
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`IPR2018-01503
`U.S. Patent 6,216,158
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`Mut.) that multiple grounds for unpatentability for the same claim will not be
`considered unless the petition itself explains the relative strengths and weaknesses
`of each ground. Id.
`Here, Petitioner contends that it included redundant Ground 2 because of the
`possibility that Jini may not qualify as prior art.3 Pet. 16-17. However, Petitioner
`provides no controlling authority confirming that this is sufficient reason to burden
`both the Board and the petitioner with redundant challenges. Controlling authority
`(including Liberty Mut.) requires a showing of the relative strengths and weaknesses
`of the substantive merits of the references be provided to consider redundant
`challenges. No such showing was provided.
`Petitioner purports to rely on Sure-Fire Elec. Corp. v. Yongjiang Yin, et. al.
`IPR2014-01448, Paper 25 (P.T.A.B. June 1, 2015), for support of its improper
`redundancy. However, Sure-Fire is not controlling authority. Furthermore, Sure-
`Fire is distinguishable on its facts and is therefore not applicable here. In Sure-Fire,
`the Board found it compelling that the addition of a single ground would also only
`add one additional reference to the proceedings. Sure Fire (Paper 25 at 5). Here,
`Petitioner is seeking to include multiple additional references (an alternative
`different combination of references in Ground 2), in addition to its several references
`asserted in Ground 1.
`
`
`
` 3
`
` Patent Owner acknowledges that one or more of the references may not qualify as
`prior art. However, given the other deficiencies present in the petition, this issue
`need not be addressed at this time.
`
`4
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`U.S. Patent 6,216,158
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`The seminal holding in Liberty Mut. explained that that “multiple grounds,
`which are presented in a redundant manner by a petitioner who makes no meaningful
`distinction between them, are contrary to the regulatory and statutory mandates,
`and therefore are not all entitled to consideration.” See Liberty Mut. CBM2012-
`00003, Paper 7 at 2 (Emphasis added). The Board further confirmed in Liberty Mut.
`(and has since reiterated in legions of cases citing Liberty Mut.) that multiple grounds
`for unpatentability for the same claim will not be considered unless the petition itself
`explains the relative strengths and weaknesses of each ground. Id. Here, Petitioner
`makes no attempt to differentiate the redundant challenges in terms of the relative
`strengths and weaknesses of overlapping Grounds 1 and 2, presumably to avoid
`having to concede any weakness in the Petition. Such circumstances invoke the
`Board’s discretion to ultimately deny Ground 2, the redundantly presented ground.
`Even if the Board were to consider the substantive merits of Ground 2,
`notwithstanding these multiple procedural defects, the Petition should nevertheless
`be denied as failing to present a prima facie case of obviousness for the reasons
`discussed below.
`
`VI. PETITIONER FAIL TO MEET ITS BURDEN OF PROVING
`UNPATENTABILITY OF THE CLAIMS
`The Petition raises the following obviousness challenges:
`
`Ground
`
`Claims
`
`Reference(s)
`
`5
`
`
`
`1
`2
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`IPR2018-01503
`U.S. Patent 6,216,158
`1-2, 6-9, 12, 14-15, and 20 Jini-QS4 and Arnold5 and McCandless6
`1-2, 6-9, 12, and 14-15
`Riggins7 and Devarakonda8
`A. Claim Construction
`Except for the means-plus-function claim terms addressed and arguments
`discussed in the body below, Patent Owner submits that the Board need not construe
`any claim term in a particular manner in order to arrive at the conclusion that the
`Petition is substantively deficient. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d
`1355, 1361 (Fed. Cir. 2011) (“need only be construed to the extent necessary to
`resolve the controversy”).
`While Patent Owner agrees in principle that independent Claim 20 invokes
`pre-AIA 35 U.S.C. § 112, ¶6, the Petition injects disputes over the relevant
`corresponding structure disclosed in the '158 Patent, as explained further below.
`
`1.
`“palm sized computer”
`Petitioner does not actually propose a construction in the Petition. Instead,
`Petitioner attempts to make an annotation to this term by stating: “For the purposes
`of this proceeding, it is sufficient to specify that a personal digital assistant (PDA)
`and a 3Com Palm Platform™ computer are examples of a “palm sized computer”
`
`
`
` 4
`
` EX1005, “Jini: Quick Study,” COMPUTERWORLD
`5 EX1006, U.S. Patent No. 6,393,497
`6 EX1007, “The PalmPilot and the Handheld Revolution”
`7 EX1008, U.S. Patent No. 6,131,116
`8 EX1009, U.S. Patent No. 6,757,729
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`6
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`U.S. Patent 6,216,158
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`in the context of the ’158 Patent.” Pet. 10 (emphasis added). That assertion is not a
`proper definition for the term “palm sized computer” nor does it fully define its
`scope. Petitioner’s attempt to define claim scope in terms of just two alleged
`“examples” should be rejected.
`In any event, Petitioner fails to present a case of prima facie obviousness even
`under its own construction.
`
`2.
`“means for accessing a description of a service”
`Patent Owner agrees that this claim term is governed by 35 U.S.C. § 112(6).
`Patent Owner also agrees that the recited function is “accessing a description of a
`service.” However, Petitioner’s proposed structure improperly focuses on a single
`example in a manner that excludes the full scope of the structural disclosure
`corresponding to this term. Phillips, 415 F.3d at 1313.
`Petitioner’s proposed structure is: “a palm-sized computer executing the Jini
`middleware from Sun Microsystems, and equivalents thereof.” Pet. 11 (emphasis
`removed). Not every embodiment uses Jini. Accordingly, it is improper to embed
`Jini into the structure. As an example, the quoted portion of the specification that
`Petitioner relies on for its proposed structure expressly states that it’s example is not
`limiting. See Id. quoting EX1001, 1:47-51 (“[i]n some embodiments…”)
`(emphasis added). Compare also FIG. 2 vs. FIG. 3.
`Furthermore, the Petition ignores portions of the specification that further
`shows Petitioner’s proposed structure is improperly limiting. For example:
`
`“Middleware allows palm sized computers to discover network-
`based computing resources. Once discovered, this middleware
`
`7
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`IPR2018-01503
`U.S. Patent 6,216,158
`provides a mechanism for the palm sized computer to use these
`resources. This middleware typically includes a directory of resources
`(or services), a protocol for storing and retrieving from the directory,
`and mechanisms to transfer software from the directory to a palm sized
`computer.”
`EX1001, 2:29-36 (emphasis added). As shown by the specification itself, there is no
`requirement that the specific middleware be “Jini middleware from Sun
`Microsystems”, to the exclusion of all other possibilities fitting the specific
`description of middleware in the block quotation above. Petitioner’s proposed
`structure should be rejected. Phillips, 415 F.3d at 1313.
`Thus, as shown in the above block quotation, for the function “means for
`accessing a description of a service” the correct structure is “middleware, and
`equivalents thereof,” which can readily be determined by the description of
`middleware provided in the ’158 Patent itself.
`
`3.
`“means for downloading the program code”
`As with the above term, Patent Owner agrees that this claim term is governed
`by 35 U.S.C. § 112(6), and Patent Owner also agrees that the recited function is
`“downloading the program code”. However, as with the above term, Petitioner’s
`proposed structure improperly reads limitations into the claim language and should
`be rejected. Phillips, 415 F.3d at 1313.
`Just like with the above term, Petitioner’s proposed structure is: “a palm-sized
`computer executing the Jini middleware from Sun Microsystems, and equivalents
`thereof.” Pet. 12 (emphasis removed). Again, not every embodiment uses Jini.
`Accordingly, it is improper to embed Jini into the structure. Exactly as above,
`Petitioner ignores the portions of the specification that show its proposed structure
`
`8
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`IPR2018-01503
`U.S. Patent 6,216,158
`
`is improperly limiting. For example:
`
`“Middleware allows palm sized computers to discover network-based
`computing resources. Once discovered, this middleware provides a
`mechanism for the palm sized computer to use these resources. This
`middleware typically includes a directory of resources (or services), a
`protocol for storing and retrieving from the directory, and mechanisms
`to transfer software from the directory to a palm sized computer.”
`EX1001, 2:29-36 (emphasis added). Compare also FIG. 2 vs. FIG. 3.
`Therefore, just as with the above term, there is no unambiguous requirement
`that middleware refers only to the example of “Jini middleware from Sun
`Microsystems.”. Petitioner’s proposed structure should be rejected. Phillips, 415
`F.3d at 1313.
`As shown in the above passage, for the function “means for downloading the
`program code” the correct structure is “middleware, and equivalents thereof”.
`
`4.
`“means for executing at least a portion of the program code”
`Patent Owner agrees that this claim term is governed by 35 U.S.C. § 112(6).
`Patent Owner also agrees that the recited function is “executing at least a portion of
`the program code.” However, Petitioner’s proposed structure improperly reads
`limitations into the claim language and should be rejected. Phillips, 415 F.3d at
`1313.
`Petitioner’s proposed structure is: “a palm sized computer executing a Java
`Virtual Machine.” Pet. 13 (emphasis removed). Not every embodiment uses a Java
`Virtual Machine. Accordingly, it is improper to embed such into the structure. And
`again, Petitioner ignores the portions of the specification which show its proposed
`structure is improperly limiting. For example:
`
`9
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`U.S. Patent 6,216,158
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`
`
`EX1001, 7:25-40 (emphasis added).
`Therefore, there is no unambiguous requirement that middleware refers only
`to the example of “a Java Virtual Machine”. Petitioner’s proposed structure should
`be rejected. Phillips, 415 F.3d at 1313. Compare, also, the description of FIG. 2 vs.
`FIG. 3.
`As shown in the above passage, for the function “means for executing at least
`a portion of the program code” the correct structure is “a CPU service, and
`equivalents thereof”.
`
`5.
`
`“means for sending control commands to the service in
`response to the means for executing”
`Patent Owner agrees that this claim term is governed by 35 U.S.C. § 112(6).
`Patent Owner also agrees that the recited function is “sending control commands to
`the service in response to the means for executing.” However, Petitioner’s proposed
`structure improperly reads limitations into the claim language and should be
`
`10
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`IPR2018-01503
`U.S. Patent 6,216,158
`
`rejected. Phillips, 415 F.3d at 1313. Not every embodiment uses Jini. Accordingly,
`it is improper to embed Jini into the structure.
`Petitioner’s proposed structure is: “a palm-sized computer executing a control
`protocol capable of issuing control commands or Java’s Remote Method Invocation
`(RMI) protocol, and equivalents thereof.” Pet. 14 (emphasis removed). First, “a
`control protocol capable of issuing control commands” is redundant and
`unnecessary. It is redundant because the claim language already recites “sending
`control commands.” Second, not every embodiment uses Java’s Remote Method
`Invocation (RMI) protocol. For example, Petitioner ignores the portions of the
`specification that shows its proposed structure is improperly limiting. For example:
`
`“The palm sized computer 100 accomplishes this via middleware (e.g.
`Jini) and a generic control protocol capable of issuing control
`commands to an offboard resource. The palm sized computer 100
`implements this control via the software components depicted in FIG.
`2. These software components represent a generic architecture for
`control of any network-based resource using a reduced functionality
`computer such as a palm sized computer. The software architecture,
`middleware, and control protocol implement a new model for
`lightweight mobile computing.”
`EX1001, 4:15-25 (emphasis added). See, also, the description of FIG. 2.
`Therefore, there is no unambiguous requirement that the term refers only to
`the example of “a control protocol capable of issuing control commands or Java’s
`Remote Method Invocation (RMI) protocol”. Petitioner’s proposed structure should
`be rejected. Phillips, 415 F.3d at 1313.
`As shown in the above passage, for the function “means for sending control
`commands to the service in response to the means for executing” the correct
`
`11
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`IPR2018-01503
`U.S. Patent 6,216,158
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`structure is “a control protocol, and equivalents thereof”.
`
`B. Ground 1 Should be Denied
`1.
`The Cited References that Rely on “Jini” Do not Qualify as
`Prior Art
`The principal applied references, Jini-QS (EX1005) and other Jini-related
`references (circa late 1998) do not qualify as prior art.9 Many of these Jini-references
`predate the ‘158 Patent’s filing date by mere months. Recently, in the underlying
`district court patent litigation between the same parties, Petitioner in IPR2018-00361
`deposed an inventor of the ‘158 Patent and also obtained discovery from the third-
`party prior owner of the ‘158 Patent. See Uniloc v. Apple, Case No. 3:18-cv-365.
`That discovery specifically related to the invention date of the ‘158 Patent. Patent
`Owner believes the information Petitioner in IPR2018-00361 obtained establishes
`that Jini-QS (EX1005) and the other references related to Jini do not qualify as prior
`art under any category of §102 et al. and thus cannot also be used in a §103
`combination. Patent Owner further believes that Apple (Petitioner in IPR2018-
`00361) discontinued pursuing such discovery once it discovered that the inventive
`team’s work behind the ‘158 Patent predates any public information related to the
`operation of Jini and, also, discovered why Jini was referenced in the patent
`
`
`
` 9
`
` See e.g., EX1013 (alleged date of Aug. 1998, not authenticated); EX1010
`(unidentified date and not authenticated); EX1012 (unidentified date and not
`authenticated); EX1018 (alleged date of Nov. 1998, not authenticated).
`
`
`
`12
`
`
`
`IPR2018-01503
`U.S. Patent 6,216,158
`
`application in only one, but not both embodiments.10
`Because the information obtained by Petitioner in IPR2018-00361 is subject
`to a different protective order, such information is not authorized to be used in the
`present preceding. To allow Petitioner in IPR2018-00361 to comply with its
`requirements under 37 CFR 42.5(b)(1), Patent Owner has agreed to join Petitioner
`in IPR2018-00361 in requesting that the third parties from whom Petitioner obtained
`this discovery allow it to also be made available in this proceeding. In particular,
`Patent Owner has proposed that Petitioner in IPR2018-00361 use the PTAB standard
`protective order for such third-party discovery. Patent Owner further suggests that
`the parties seek to allow such information to be used in the instant joinder request
`to IPR2018-00361.
`
`2. Multiple Ground 2 References are Not Enabling
`Just like a Sci-Fi article describing a flying saucer is not enabling as to an
`actual propulsion system, not all printed publications are enabling. As has been
`repeatedly held (and also specifically argued by Petitioner in IPR2018-00361), the
`material contained in the printed publication must enable one skilled in the art to
`practice the claimed invention. See e.g., Apple Inc. v. International Trade
`Com'n, 725 F.3d 1356 (Fed. Cir. 2013)(agreeing with Apple that alleged prior art
`patent did not have an enabling disclosure of a fully transparent surface as claimed,
`but only suggested that such a surface should be considered for “future work”); In
`
`
`
`10 Pursuant to 35 U.S.C. 102(b) one’s own work cannot be used against it unless it
`was published in a printed publication more than a year before the filing date.
`
`13
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`IPR2018-01503
`U.S. Patent 6,216,158
`
`re Antor Media Corp., 689 F.3d 1282, 1290-91, (Fed. Cir. 2012) (“Enablement of
`prior art requires that the reference teach a skilled artisan to make or carry out what
`it discloses in relation to the claimed invention”); and Bard Peripheral Vascular,
`Inc. v. W.L. Gore & Associates, Inc., 670 F.3d 1171, 1185 (Fed. Cir. 2012) (“. . . the
`reference must enable one of ordinary skill in the art to make the invention without
`undue experimentation.”).
`Here, as a first principal reference, Petitioner submitted a single-page
`marketing piece from ComputerWorld magazine released mere months before the
`filing date of the ‘158. See Jini-QS (EX1005). This marketing piece is not enabling
`as to features of the ‘158 patent but rather suggests something in the “works” – or to
`use Apple’s argument in the Apple ITC case, “future work.” Jini-QS (EX1005) and
`is not even a technical article, but rather describes to a business-person at a high-
`level something Sun Microsystems was working on. On its face, Jini-QS (EX1005)
`says it will not be released until “in the second half of [1999]” – after the filing date
`of the application. As Mr. Easttom testified in the litigation between the parties, Jini
`(as referenced in EX1005 and other references) was a concept that was not ready,
`does not fully function, and won’t be ready until late 1999. EX2002 at ¶25. “[A]
`skilled person would not have understood [EX1005] as teaching how to implement
`[challenged claims] of the ’158 patent.” EX2002 at ¶25, Likewise, the description of
`Jini as provided in EX1018 merely provides a vision for Jini, not an actual product.
`EX2002 at ¶26. Further, the description of Jini as reflected EX1013 is speculative
`and not technical. It does not disclose the features of any working prototype. A
`POSITA would not understand EX1013 as actually teaching how to make a device
`
`14
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`IPR2018-01503
`U.S. Patent 6,216,158
`
`using Jini. EX2002 at ¶27.
`Even petitioner’s declarant, Dr. Hough, recognized that Jini-QS (EX1005)
`doesn’t describe the operation of Jini in a manner one of ordinary skill in the art
`could actually
`implement. EX1003 at ¶78 (describing
`the omission of
`implementation details in Jini-QS (EX1005)). Rather, he alleges that an artisan
`simply need look at other Jini documentation. Id., (citing EX1010, EX1011, 1018).
`However, none of these references provide any actual implementation details of Jini
`and there is no other public Jini documentation to actually review concerning an
`alleged implementation of Jini. Had there been, Petitioner would have already cited
`such documents as opposed to the flying saucer—type sci-fi article it submitted
`along with an allegation that skilled artisans could simply figure out how such a
`saucer could fly by looking at other documents.
`
`3.
`
`Simply put, there is no teachings in the public domain as of
`the filing date of the ‘158 Patent that described how one might
`implement Jini to arrive at the claimed invention in the ‘158
`Patent. The fact that Petitioner and its declarant, Dr. Hough,
`have to cite so many different Jini references to try to
`understand how it might work is evidence in and of itself that
`these references were not enabling as to how Jini actually
`works or “might work” in the future. The Ground 2
`references do not disclose “accessing a description of the
`service from a directory of services, the description of the
`service including at least a reference to program code for
`controlling the service” (Claim 1)
`The petition exclusively relies on Jini-QS (EX1005) to disclose “accessing a
`description of the service from a directory of services, the description of the service
`including at least a reference to program code for controlling the service” as
`
`15
`
`
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`IPR2018-01503
`U.S. Patent 6,216,158
`
`required by Claim 1. P
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