Trials@uspto.gov
`571-272-7822
`
`
`Paper 9
`Entered: July 15, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00056
`Patent 6,467,088 B1
`
`____________
`
`
`
`Before, SALLY C. MEDLEY, MIRIAM L. QUINN, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`DECISION
`ON PETITIONER’S REQUEST FOR REHEARING
`37 C.F.R. § 42.71(d)
`
`
`571-272-7822
`
`
`Paper 9
`Entered: July 15, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00056
`Patent 6,467,088 B1
`
`____________
`
`
`
`Before, SALLY C. MEDLEY, MIRIAM L. QUINN, and
`SEAN P. O’HANLON, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`DECISION
`ON PETITIONER’S REQUEST FOR REHEARING
`37 C.F.R. § 42.71(d)
`
`
`
`IPR2019-00056
`Patent 6,467,088 B1
`
`
`INTRODUCTION
`I.
`On April 29, 2019, the Board issued a Decision on Institution in this
`proceeding. Paper 7 (“Dec.”). In that Decision, we denied the Petition
`because we determined that Petitioner had not shown a reasonable likelihood
`of prevailing with respect to claims 1−21 (“challenged claims”) of the ’088
`patent. Id. at 21. On May 31, 2019, Petitioner filed a Request for
`Rehearing. Paper 8 (Req. Reh’g). Petitioner argues two points. First
`Petitioner argues that the Board “equates the word ‘appropriate,’ as used in
`Cole,1 with the word ‘acceptable,’ as used in the ’088 patent.” Req. Reh’g
`3−10. Second, Petitioner argues that the Board misapprehended and
`overlooked where Pitzel2 would be modified in view of Cole. Id. at 10−15.
`According to 37 C.F.R. § 42.71(d), “[t]he burden of showing a
`decision should be modified lies with the party challenging the decision,”
`and the “request must specifically identify all matters the party believes the
`Board misapprehended or overlooked.” The burden here, therefore, lies with
`Petitioner to show we misapprehended or overlooked the matters it requests
`that we review.
`II. ANALYSIS
`Having reviewed the Request for Rehearing and the Decision on
`Institution, we find that Petitioner’s arguments highlight, as described
`below, Petitioner’s disagreement with the Board’s analysis of its
`contentions. That is different than pointing out an argument that we
`overlooked or an issue raised in which we misapprehended Petitioner’s
`
`
`1 U.S. Patent No. 5,752,042 (Ex. 1002, “Cole”).
`2 U.S. Patent No. 7,062,765 B1 (Ex. 1005, “Pitzel”).
`
`2
`
`
`
`IPR2019-00056
`Patent 6,467,088 B1
`
`position. Thus, none of Petitioner’s arguments is persuasive. We are not
`persuaded that Petitioner has shown that we misapprehended or overlooked
`the matters raised in the Request for Rehearing. We address Petitioner’s
`arguments in turn.
`
`A. COLE’S ALLEGED CONFIGURATIONS
`In our Decision on Institution, we stated that Cole describes selected
`code updates as “potentially appropriate for client 14.” Dec. 11. Based on
`this and further descriptions of Cole’s code selection process we determined
`that “neither the client nor the server anticipates that the selected code
`updates at this point are actually a ‘known acceptable configuration for the
`electronic device.’” Id. “The indecisive language ‘potentially’ is not the
`required decisive language of ‘known’—a difference that Petitioner does not
`explain persuasively, if at all.” Id. at 11−12.
`Petitioner now focuses not on the “potentially” language we addressed
`in our Decision at page 11, but on the word “appropriate”—stating that the
`Board erred “in equating the words ‘acceptable’ and ‘appropriate’ . . . on
`page 11 of the Decision.” Req. Reh’g 6. Petitioner goes on to reiterate the
`arguments and characterizations of Cole as presented in the Petition and
`from our Decision on Institution. Id. at 6−9. None of these arguments and
`characterizations show error. Rather, they show a disagreement with the
`Board’s analysis of Cole and our view that the Petition did not explain
`persuasively the contention that something Cole describes as “potentially
`appropriate” would have been a “known” acceptable configuration, which is
`a configuration previously determined to be acceptable. See Dec. 8.
`Petitioner’s arguments do not point to error in our Decision, which did not
`
`3
`
`
`
`IPR2019-00056
`Patent 6,467,088 B1
`
`focus on “acceptable” configurations, but on whether the alleged acceptable
`configuration was “known.” Instead, we determined that based on Cole’s
`description of an update as “potentially” appropriate, Petitioner did not show
`that the configurations were “known.”
`Petitioner next argues that our further analysis of Cole, as requiring an
`additional recognition step to identify updates that would actually be
`appropriate for the client, as supporting Petitioner’s contention. Req. Reh’g
`9–10 (stating that the additional determinations of Cole are not precluded by
`the ’088 patent). According to Petitioner, our analysis gave the impression
`that the claims require some “guarantee” that the software update “will be
`installed.” Id. at 9. These arguments are not fair representations of our
`Decision. Again, we focused on the “known” term of the claim language.
`The additional recognition step in Cole is a fact confirming that Cole does
`not teach “known” acceptable configurations when determining whether an
`update is “potentially appropriate.” Petitioner on rehearing merely asks us
`to draw an opposite inference from the fact: that Cole’s “potentially
`appropriate” updates are “known” because Cole has determined beforehand
`that the updates would be “consistent with the basic system information of
`the client.” Id. at 7. This argument shows mere disagreement with the
`inference drawn from Cole’s description and our determination that the
`Petition lacked persuasive argument in this regard.
`Petitioner now asserts that the lack of explanation should not have
`resulted in denial of the Petition because Cole’s additional recognition step
`is “irrelevant to whether Cole discloses the limitation of the claim.” Id. at 10
`(emphasis omitted). We do not agree. We looked to the whole of Cole to
`ascertain how Cole selects updates using two distinct steps. Petitioner relied
`
`4
`
`
`
`IPR2019-00056
`Patent 6,467,088 B1
`
`on the first step alone, in which Cole’s selections are described as
`“potentially” appropriate, with little to no discussion of how those are
`“known” in light of the second step. Petitioner’s argument that it was proper
`to ignore the second step in our analysis is unpersuasive and does not show
`error. See Bausch & Lomb, Inc. v. Barnes-Hind / Hydrocurve, Inc., 796 F.2d
`443, 448 (Fed. Cir. 1986) (“It is impermissible within the framework of
`section 103 to pick and choose from any one reference only so much of it as
`will support a given position to the exclusion of other parts necessary to the
`full appreciation of what such reference fairly suggests to one skilled in the
`art.”).
`
`B. PITZEL’S MODIFICATION IN VIEW OF COLE
`In our Decision on Institution, we determined that Petitioner did not
`show that Pitzel alone teaches the comparison with “a list of known
`acceptable configurations for the electronic device.” Dec. 19. We also
`addressed the asserted combination of Pitzel and Cole. Id. at 19−20. We
`stated that the Petition was not clear about the combination of teachings of
`Pitzel and Cole, particularly with respect to what extent Cole was relied
`upon for the “list of known acceptable configurations,” which we found
`Pitzel did not teach. Id. We determined, nevertheless, that modifying Pitzel
`would not result in the claimed comparison, because “Pitzel does not
`compare the client condition and the requested (or missing) component with
`any other piece of information or list.” Id. at 20. We further found
`Petitioner’s assertions lacking in the event the Petition also relied on Cole as
`teaching storing Pitzel’s client conditions and components in a database
`table. Id. Our determination assessed what we could glean from the Petition
`as Petitioner’s contentions, but went further to determine that the Petition
`
`5
`
`
`
`IPR2019-00056
`Patent 6,467,088 B1
`
`was vague and required speculation, and failed to meet our specificity
`requirements under 37 C.F.R. §§ 42.22(a)(2), 42.104(b)(4).
`Petitioner does not challenge our determination concerning Pitzel
`alone not teaching the limitation. Rather, Petitioner focuses on Cole’s
`teachings and the explanations provided for the asserted combination with
`Pitzel. Req. Reh’g 11−13. Petitioner argues that the Board overlooked
`Petitioner’s reliance on Dr. Knutson to explain “why” it would have been
`obvious to modify the server of Pitzel to make its compatibility
`determination. Id. at 13. Petitioner argues that the Board overlooked
`Petitioner’s interpretation of Pitzel, “where a requested component is the
`claimed ‘device component,’ and the client conditions are the claimed ‘at
`least one component.’” Id. Petitioner argues that it provided three
`interpretations of Pitzel when considered alone and a different interpretation
`of Pitzel when considered in combination with Cole. Id. at 14. Petitioner
`now tries to unravel the contentions presented in the Petition. Id. at 14−15.
`We are not persuaded that we overlooked Petitioner’s alleged
`combination of Pitzel and Cole. In our Decision we addressed the
`arguments as they were presented in the Petition (at pages 51−52) for the
`alleged combination of teachings from Cole and Pitzel with regard to the
`“list of known acceptable configurations for the electronic device.” Dec.
`19−20. We addressed Petitioner’s reliance on Cole as allegedly teaching the
`recited “list.” See Req. Reh’g 14 (arguing that “Cole discloses utilizing the
`exact same type of information as Pitzel to determine whether a code update
`is consistent with a client and explains the mechanism for doing so”); Pet.
`51−52 (stating that the combination of teachings is comparing “client
`conditions and requested components with information in a database table
`
`6
`
`
`
`IPR2019-00056
`Patent 6,467,088 B1
`
`identifying known potentially appropriate configurations” (which is the
`“list” alleged to be taught by Cole), and arguing that a “POSA would have
`been motivated to utilize a database table identifying software updates and
`their corresponding system requirements, such as taught by Cole” (emphasis
`added)); Dec. 20 (addressing the addition of Cole’s “list” to Pitzel). The
`Petition asserts the use of Cole’s database table to store the “client
`conditions” correlated with the “version of a component,” which we found
`to address the “list” limitation we found lacking in Pitzel. Pet. 52
`(explaining the modification of Pitzel to use Cole’s database table to store
`the version of a component and its required client conditions). We
`addressed the combination in our Decision at page 20, and found Petitioner’s
`arguments unpersuasive because Cole, as determined in the previous ground,
`does not teach the recited “list.” Thus, we did not overlook Petitioner’s
`reliance on Cole as stated in the Petition. To the extent Petitioner now
`attempts to explain the combination of teachings to expand on how Cole is
`relied on in the Petition, we find the arguments presented unpersuasive and a
`natural consequence of the vagueness we encountered in addressing this
`ground as stated in our Decision on Institution. A request for rehearing is
`not an opportunity to make more specific a Petition that does not comply
`with 37 C.F.R § 42.104(b)(4). Nor is a request for rehearing an opportunity
`to convince the Board that a different result is warranted because obscure
`arguments and conclusory expert testimony may be clarified further on
`rehearing.
`III. ORDER
`Petitioner’s Request for Rehearing is denied.
`
`
`
`7
`
`
`
`IPR2019-00056
`Patent 6,467,088 B1
`
`PETITIONER:
`
`Larissa S. Bifano
`James M. Heintz
`Michael Van Handel
`DLA Piper LLP (US)
`larissa.bifano@dlapiper.com
`jim.heintz@dlapiper.com
`michael.vanhandel@dlapiper.com
`
`
`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
`
`
`
`8
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
