UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION
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`Petitioner
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`v.
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`UNILOC 2017 LLC
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`Patent Owner
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`IPR2019-01125
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`PATENT 7,016,676
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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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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION
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`Petitioner
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`v.
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`UNILOC 2017 LLC
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`Patent Owner
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`IPR2019-01125
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`PATENT 7,016,676
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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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`IPR2019-01125
`U.S. Patent 7,016,676
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`Table of Contents
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`I.
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`II.
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`INTRODUCTION .................................................................................... I
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`THE ’676 PATENT .................................................................................. I
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`III.
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`RELATED PROCEEDINGS .................................................................. III
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`IV.
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`THE LEVEL OF ORDINARY SKILL IN THE ART ........................... IV
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`V.
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`PETITIONER DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM ......................................................................... V
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`A.
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`Claim Construction ......................................................................... v
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`1.
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`2.
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`3.
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`“Stations Which Operate In Accordance With A
`First Radio Interface Standard And/Or A Second
`Radio Interface Standard” ................................................... vi
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`“Renders The Frequency Band Available For
`Access By The Stations Working In Accordance
`With The Second Radio Interface Standard If
`Stations Working In Accordance With The First
`Radio Interface Standard Do Not Request Access
`To The Frequency Band” .................................................... vi
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`“The Control Station Also Carries Out Functions
`Which Cause Radio Systems In Accordance With
`The First Radio Interface Standard To Interpret
`The Radio Channel As Interfered And To Seize
`Another Radio Channel For Its Own Operation” ...............vii
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`B.
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`None Of The Cited References Discloses “stations
`which operate in accordance with a first radio interface
`standard and/or a second radio interface standard”
`(Claim 1) (Grounds 1-4) ............................................................. viii
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`C.
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`None Of The Cited References Discloses “a control
`station which controls the alternate use of the frequency
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`ii
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`band” / “wherein the control station controls the access
`to the common frequency band for stations working in
`accordance with the first radio interface standard”
`(Claim 1) (Grounds 1-4) ................................................................. x
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`1.
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`2.
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`The Petition’s primary scenario .........................................xii
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`The Petition’s alternative scenario .................................... xiv
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`D.
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`The Petition Fails As To The Challenged Dependent
`Claim 5 ......................................................................................... xvi
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`VI.
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`THE PETITION SHOULD BE DENIED UNDER THE
`BOARD’S DISCRETION ................................................................... XVI
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`VII.
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`CONCLUSION ................................................................................. XVIII
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`U.S. Patent 7,016,676
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`I.
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`INTRODUCTION
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`UNILOC 2017 LLC (the “Uniloc” or “Patent Owner”) submits this
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`Preliminary Response to Petition IPR2019-01125 for Inter Partes Review (“Pet.” or
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`“Petition”) of United States Patent No. 7,016,676 (“the ’676 Patent” or “EX1001”)
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`filed by Microsoft Corporation (“Petitioner”). The instant Petition is defective for at
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`least the reasons set forth herein.
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`II. THE ’676 PATENT
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`The ’676 patent is titled “Method, network and control station for the two-
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`way alternate control of radio systems of different standards in the same frequency
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`band.” The ʼ676 patent issued March 21, 2006, from U.S. Patent Application No.
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`10/089,959 filed April 4, 2002, which was a National Stage Entry of PCT No.
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`PCT/EP01/09258 filed August 8, 2001 and published as W002/13457, which in turn
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`claims priority to German Application No. DE10039532.5 filed August 8, 2000.
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`The inventors of the ’676 patent observed that at the time of the invention, a
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`radio system for wireless transmission of information was allowed to use
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`transmission power only in accordance with standards by the national regulation
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`authority. The national regulation authority determined on what frequencies with
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`what transmission power and in accordance with what radio interface standard a
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`radio system is allowed to transmit. There was also provided so-called ISM
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`frequency bands (Industrial Scientific Medical) where radio systems transmitted in
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`the same frequency band but in accordance with different radio interface standards.
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`EX1001, 1:10-23. And in the event of interference, methods were standardized for
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`i
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`U.S. Patent 7,016,676
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`an active switching to another frequency within the permitted frequency band, for
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`controlling transmission power and for the adaptive coding and modulation to reduce
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`interference. However, despite operating in the same frequency band, different radio
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`systems have different Medium Access Controls (MAC), and despite the utilization
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`of methods such as Transmitter Power Control (TPC) and Dynamic Frequency
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`Selection (DFS), those methods did not make optimum use of spreading radio
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`channels over the stations which operate under different radio standards. EX1001,
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`1:24-2:10.
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`According to the invention of the ’676 Patent, there is provided a method, a
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`wireless network and a control station which make efficient use of radio transmission
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`channels possible by an interface control protocol method for a radio system, which
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`system comprises at least a frequency band provided for the alternate use of a first
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`and a second radio interface standard, the radio system comprising stations which
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`operate in accordance with a first radio interface standard and/or a second radio
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`interface standard, respectively, a control station being provided which controls the
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`alternate use of the frequency band. Based on the idea of providing a comprehensive
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`standard exchange of implicit or explicit control information in systems that have
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`the same radio transmission methods but different radio transmission protocols. This
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`makes a simple and efficient use possible of a radio channel via a plurality of radio
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`interface standards. EX1001, 2:14-28.
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`A first number of stations preferably forms a wireless local area network in
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`accordance with a first radio interface standard and a second number of stations
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`forms a wireless network in accordance with a second radio interface standard. The
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`control station is preferably a station that operates in accordance with both the first
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`and the second radio interface standard. The control station can utilize the common
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`radio channel more effectively when the demand for transmission capability in
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`accordance with the first and second radio standard varies. The control station may
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`release the common frequency band for access by stations operating under the
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`second radio interface if stations operating in accordance with the first radio
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`interface standard do not request access to the frequency band. The control station
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`controls the alternate access by the first wireless network and the second wireless
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`network to the common frequency band. The control station receives requests for
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`capacity from various stations and assigns capacity accordingly. The release of the
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`common frequency band for the second radio interface standard may be effected, for
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`example, by explicitly sending control information to the stations of the second radio
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`interface standard. As another example, control can be effected in that the control
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`station determines the respective duration in which the stations operating in
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`accordance with the second radio interface standard can utilize the common
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`frequency band. EX1001, 2:36-4:26.
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`III. RELATED PROCEEDINGS
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`The following proceedings are currently pending cases concerning U.S. Pat.
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`No. 7,016,676 (EX1001).
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`Case Name
`Google, LLC v. Uniloc 2017 LLC
`Ericsson Inc. et al v. Uniloc 2017
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`Case Number
`IPR2019-01541
`IPR2019-01550
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`Filing Date
`Court
`PTAB Aug. 29, 2019
`PTAB Aug. 29, 2019
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`iii
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`
`
`LLC
`Marvell Semiconductor, Inc. v.
`Uniloc 2017 LLC
`Marvell Semiconductor, Inc. v.
`Uniloc 2017 LLC
`Microsoft Corporation et al v.
`Uniloc 2017 LLC
`Uniloc 2017 LLC et al v. Google
`LLC
`Uniloc 2017 LLC v. Verizon
`Communications Inc. et al
`Uniloc 2017 LLC v. AT&T Services,
`Inc. et al
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`IPR2019-01125
`U.S. Patent 7,016,676
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`IPR2019-01349
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`PTAB
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`Jul. 22, 2019
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`IPR2019-01350
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`PTAB
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`Jul. 22, 2019
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`IPR2019-01116
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`PTAB May. 29, 2019
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`2-18-cv-00495
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`TXED Nov. 17, 2018
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`2-18-cv-00513
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`TXED Nov. 17, 2018
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`2-18-cv-00514
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`TXED Nov. 17, 2018
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`IV. THE LEVEL OF ORDINARY SKILL IN THE ART
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`The Petition alleges that “[t]he person of ordinary skill in the art at the time
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`the ’676 application was filed (“POSITA”) would have had a Bachelor’s Degree in
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`Electrical Engineering, Computer Science, or a related subject and one or more years
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`of experience working with wireless networks and related standards, and would have
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`had an understanding of work being done by companies within the field of wireless
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`networks and related standards, including, e.g., systems or protocols for shared
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`access of wireless networks by different protocols.” Pet. 19. Given that Petitioner
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`fails to meet its burden of proof in establishing prima facie anticipation or
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`obviousness when applying its own definition of a person of ordinary skill in the art
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`(“POSITA”), Patent Owner does not offer a competing definition for POSITA at this
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`preliminary stage, though it reserves the right to do so in the event that trial is
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`instituted.
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`V.
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`PETITIONER DOES NOT PROVE A REASONABLE LIKELIHOOD
`OF UNPATENTABILITY FOR ANY CHALLENGED CLAIM
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`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
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`§42.108(c) (“review shall not be instituted for a ground of unpatentability unless
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`. . . there is a reasonable likelihood that at least one of the claims challenged . . . is
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`unpatentable”). The Petition should be denied as failing to meet this burden.
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`The raises the following obviousness challenges under 35 U.S.C. § 103:
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`Ground
`1
`2
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`3
`4
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`5
`5
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`5
`5
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`Claims
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`Reference(s)
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`HomeRF1
`HomeRF and HomeRF Tutorial2 and
`HomeRF SWAP Spec3
`Home RF and Haartsen4
`HomeRF and HomeRF Tutorial and
`Haartsen
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`A. Claim Construction
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`At this preliminary stage, Patent Owner submits that the Board need not
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`construe any claim term in a particular manner in order to arrive at the conclusion
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`that the Petition is substantively deficient. Wellman, Inc. v. Eastman Chem. Co., 642
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`F.3d 1355, 1361 (Fed. Cir. 2011) (“need only be construed to the extent necessary
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`to resolve the controversy”). However, some of Petitioner’s proposed constructions
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`are addressed below. Further, in the event that trial is instituted, however, Patent
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`
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` 1
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` EX1006, “HomeRF: Wireless Networking for the Connected Home”, by Kevin J.
`Negus et al.
`2 EX1008, “HomeRF: Bringing Wireless Connectivity Home”, by Jim Lansford
`3 EX1018, Shared Wireless Access Protocol
`4 EX1017, U.S. Patent No. 7,280,580
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`Owner reserves the right to object to Petitioner’s proposed construction and provide
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`Patent Owner’s proposed construction.
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`1.
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`“Stations Which Operate In Accordance With A First Radio
`Interface Standard And/Or A Second Radio Interface
`Standard”
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`At this preliminary stage, Patent Owner submits that the Board need not
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`construe this claim term in order to arrive at the conclusion that the Petition is
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`substantively deficient. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
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`(Fed. Cir. 2011) (“need only be construed to the extent necessary to resolve the
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`controversy”). In the event that trial is instituted, however, Patent Owner reserves
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`the right to object to Petitioner’s proposed construction and provide Patent Owner’s
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`proposed construction.
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`2.
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`“Renders The Frequency Band Available For Access By The
`Stations Working In Accordance With The Second Radio
`Interface Standard If Stations Working In Accordance With
`The First Radio Interface Standard Do Not Request Access
`To The Frequency Band”
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`As the Petition acknowledges, the Petition may not challenge claims on the
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`basis of indefiniteness under this proceeding. Pet. 22. Therefore, Patent Owner does
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`not address Petitioner’s allegations. For the remaining proposed construction(s) in
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`this section, Patent Owner submits that the Board need not construe this claim term
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`in order to arrive at the conclusion that the Petition is substantively deficient.
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`Wellman, 642 F.3d at 1361. Nonetheless, to the extent Petitioner seeks to improperly
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`limit availability for “access” of the frequency band to only “transmitting” within
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`the frequency band (Pet 23-24), the Board should not adopt Petitioner’s proposed
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`vi
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`construction that improperly seeks to import limitations from the specification. See
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`Vitronics Corp. v. Conceptronic, 90 F.3d 1576, 1584-85 (Fed. Cir. 1996). Moreover,
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`Petitioner’s proposed construction is further erroneous because the specification
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`itself makes clear the term “access” is not so limiting. “Access” in light of the
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`specification allows for both sending an receiving (the expecting of) information.
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`See EX1001, 4:5-18.
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`Finally, Patent Owner disagrees with Petitioner that there is no antecedent
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`basis for “the stations” in this claim term. Here, “the stations” refers back to the
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`previous claim term which recites “stations which operate in accordance with a first
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`radio standard and/or a second radio interface standard”. As the Petition points out,
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`the previous claim limitation only requires a plurality of stations operating under a
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`first and/or second radio interface standard. And here, in this limitation, “the
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`stations” refers back to the entire and original set of stations, and then the limitation
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`further narrows that set of stations to just the stations “working in accordance to the
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`second radio interface standard”. Whether that number of stations is one or more
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`than one, there is no issue with antecedent basis.
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`3.
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`“The Control Station Also Carries Out Functions Which
`Cause Radio Systems In Accordance With The First Radio
`Interface Standard To Interpret The Radio Channel As
`Interfered And To Seize Another Radio Channel For Its Own
`Operation”
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`As the Petition acknowledges, the Petition may not challenge claims on the
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`basis of indefiniteness under this proceeding. Pet. 25. Therefore, Patent Owner does
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`not address Petitioner’s allegations that Petitioner may make “in another forum”.
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`vii
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`Pet. 25 (emphasis in original). For the remaining proposed construction(s) in this
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`section, Patent Owner submits that the Board need not construe this claim term in
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`order to arrive at the conclusion that the Petition is substantively deficient. Wellman,
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`642 F.3d at 1361. And at this preliminary stage, Patent Owner disagrees that any
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`phrase is written in “means plus function format”.
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`B. None Of The Cited References Discloses “stations which operate
`in accordance with a first radio interface standard and/or a second
`radio interface standard” (Claim 1) (Grounds 1-4)
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`The Petition relies exclusively on HomeRF and/or HomeRF Tutorial for this
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`claim limitation.5 See Pet. 45 (Ground 1); Pet. 62 (Ground 2); Pet. 68-70 (Ground 3,
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`does not address claim 1); Pet. 70-71 (Ground 4, does not address claim 1).
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`Therefore, the Petition’s deficiencies discussed below apply equally to all grounds
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`of the Petition.
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`Neither HomeRF or HomeRF Tutorial references discloses stations operating
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`under “a first radio interface standard and/or a second radio interface standard”,
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`as required by the claim language. Instead, HomeRF only discloses a single standard
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`– the “HomeRF Shared Wireless Access Protocol (‘SWAP’)”. Pet. 41. This is shown
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`by HomeRF itself in numerous places. For example, HomeRF’s Abstract recites:
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`“The SWAP specification for wireless voice and data networking within the home
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`will enable a new class or mobile consumer devices that draw from the power and
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` 5
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` HomeRF SWAP Spec and Haartsen are cited only against dependent Claim 5.
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`content of the Internet and home PC.” EX1006, Abstract. As stated by the Abstract,
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`HomeRF discloses a single standard – SWAP – and devices operating under that
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`single standard encompass both “voice and data networking”. HomeRF goes on to
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`describe “a SWAP network connection” (EX1006, at 20, column 2), in the singular.
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`Furthermore, that HomeRF’s SWAP happens to operate with isochronous
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`devices and asynchronous devices does not change the fact that all SWAP devices
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`(isochronous or asynchronous) are operating under a single radio interface standard
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`(i.e. SWAP). In fact, HomeRF itself describes SWAP as a “hybrid” protocol
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`(EX1006, at 22, column 1), further confirming that SWAP is a single radio interface
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`standard.
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`Additionally, HomeRF refers to its devices (again, whether isochronous or
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`asynchronous) as simply “SWAP devices”:
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`EX1006, 22, column 2 (highlighting and underlining added).
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`Finally, that HomeRF’s SWAP only discloses a single radio interface standard
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`is further confirmed by the Petitioner in its parallel petition in IPR2019-01116.
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`There, Petitioner provided the Lansford reference. See IPR2019-01116, EX1012.
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`And as the petition in IPR2019-01116 admits, under Lansford, in order to meet the
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`limitation requiring “stations which operate in accordance with a first radio interface
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`standard and/or a second radio interface standard”, Petitioner points to two devices,
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`one device (“Device B”) which is a “HomeRF device”, and another device (“Device
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`C”) which is a “Bluetooth device”. IPR2019-01116, Paper 2, at 72. As seen by the
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`Petitioner’s own admission, the “HomeRF device”, or SWAP device, is a device
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`operating under a single radio interface standard.
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`Therefore, the Petition fails because none of the HomeRF references discloses
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`“stations which operate in accordance with a first radio interface standard and/or
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`a second radio interface standard”, as required by the claim language.
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`C. None Of The Cited References Discloses “a control station which
`controls the alternate use of the frequency band” / “wherein the
`control station controls the access to the common frequency band
`for stations working in accordance with the first radio interface
`standard” (Claim 1) (Grounds 1-4)
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`As discussed above, in Section V.B, the Petition fails because none of the
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`HomeRF references discloses “stations which operate in accordance with a first
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`radio interface standard and/or a second radio interface standard”, as required by
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`the claim language. However, to the extent the Board will consider Petitioner’s
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`arguments regarding HomeRF’s so-called “I-nodes” and “A-nodes” as being
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`separate radio interface standards (which they are not), the Petition still fails for the
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`reasons below.
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`The Petition relies exclusively on HomeRF and/or HomeRF Tutorial for this
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`claim limitation.6 See Pet. 45-47 (Ground 1); Pet. 63-64 (Ground 2); Pet. 68-70
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`(Ground 3, does not address claim 1); Pet. 70-71 (Ground 4, does not address claim
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`1). Therefore, the Petition’s deficiencies discussed below apply equally to all
`
`grounds of the Petition.
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`The Petition points to HomeRF’s “control point” or “CP” as being the required
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`control station. Further, the Petition points to HomeRF’s the so-called “I-nodes”
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`(voice devices or isochronous data devices) as operating in accordance with a first
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`radio interface standard and points to the so-called “A-nodes” (asynchronous data
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`devices based on the CSMA/802.11 standard) as operating in accordance with a
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`second radio interface standard. See Pet. 43-45. And according to HomeRF, the
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`common frequency band is the “2.5 GHz band”. EX1006, at 26, column 1.
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`The Petition fails because HomeRF’s “control point” or “CP” does not
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`“control[] the alternate use of the frequency band” or, alternatively, “control[] access
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`to the common frequency band for stations working in accordance with the first radio
`
`interface standard” as required by the claim language. Specifically, under the
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`HomeRF system and the HomeRF references, because there is always a contention
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`period for the A-nodes, and because the A-nodes may communicate directly with
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`one another thereby bypassing the “control point” entirely, the “control point” has
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` 6
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` HomeRF SWAP Spec and Haartsen are cited only against dependent Claim 5.
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`no ability to control the alternate use of the frequency band; or under the Petition’s
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`alternative scenario, for the same reasons, nothing in any of the HomeRF references
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`discloses the ability to control access to the common frequency band to the stations
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`working in accordance with the first radio interface standard.
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`1.
`
`The Petition’s primary scenario
`
`In the Petition’s primary scenario, the use by HomeRF’s “A-nodes” are
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`considered the alternate use of the frequency band. And as the Petition
`
`acknowledges, in the HomeRF system, the use of the frequency band, including the
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`alternate use by the “A-nodes”, are defined by HomeRF’s superframe. However,
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`HomeRF’s own description of its superframe confirms that its “control point” has
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`no control over the alternate use of the frequency band. Specifically, HomeRF states
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`that its protocol “incorporates two contention-free periods (CFPs) and a contention
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`period.” EX1006, at 23, column 2.
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`In other words, according to HomeRF itself, there will always be some
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`available time for the contention period for the A-nodes (i.e. the alternate use of the
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`frequency band).7 And therefore, HomeRF’s control point does not control the
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`alternate use of the frequency band, because the HomeRF control point is not able
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`to restrict the alternate use of the frequency band, or grant the alternate use of the
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`
` 7
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` To the extent the Board may consider the testimony of Petitioner’s declarant, little
`to no weight should be given because Petitioner’s declarant merely parrots the
`conclusory statements of the Petition. Compare e.g. Pet. 46-47 with EX1004, ¶
`100. This is insufficient. 37 C.F.R. § 42.65(a).
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`frequency band. For example, the HomeRF control point does not have the ability
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`to deny the alternate use of the frequency band, even if there are no primary traffic,
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`and the HomeRF control point does not have the ability to grant the alternate use of
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`the frequency band, even if there is enough primary traffic to occupy the entire
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`superframe. This is further confirmed by HomeRF’s discussion of its Figure 1
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`“SWAP networking vision”:
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`
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`EX1006, at 21, column 1 (highlighting and underlining added).
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`As shown by the passage above, because asynchronous communication can
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`take place directly between two peers, that communication is not being controlled
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`by the control point. Therefore, HomeRF’s CP (or control point) does not disclose
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`“a control station which controls the alternate use of the frequency band” because
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`HomeRF’s control point cannot restrict the alternate use of the frequency band, or
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`grant the alternate use of the frequency band.
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`And nothing in HomeRF Tutorial shows otherwise. The Petition includes
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`HomeRF Tutorial merely for the proposition that “if there is no use of the shared
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`network by the voice (first radio interface system) traffic, HomeRF Tutorial explains
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`that the entire superframe is available for data (second radio interface standard)
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`traffic.” Pet. 64. However, the Petition still fails because HomeRF Tutorial merely
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`discloses allowing for more contention period if there is no voice traffic – this does
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`nothing to change the fact that there is still no disclosure anywhere that shows the
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`control point has any ability to restrict the alternate use of the frequency band, or
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`grant the alternate use of the frequency band. Specifically here, as disclosed by
`
`HomeRF shown above, there is always a contention period in the superframe. And
`
`there is nothing in HomeRF Tutorial that discloses the ability to grant the alternate
`
`use of the frequency band, even if there is enough primary traffic to occupy the entire
`
`superframe. Additionally, HomeRF Tutorial also still does not disclose the ability to
`
`deny the alternate use of the frequency band, even if there are no primary traffic.
`
`In sum, nothing in any of HomeRF or HomeRF Tutorial discloses “a control
`
`station which controls the alternate use of the frequency band” as the claim language
`
`requires.
`
`2.
`
`The Petition’s alternative scenario
`
`As a throwaway, the Petition merely makes the conclusory statement in a
`
`single sentence that: “Alternatively, in view of the disclosure of the CP managing
`
`when each node should send and receive data, and the presence of different slots
`
`xiv
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`within the contention-free period for the various I-nodes to transmit to and receive
`
`data from the CP, it would have been obvious that the CP “controls the access to the
`
`common frequency band” for these stations.” 8 Pet. 47.
`
`From what Patent Owner can discern from that single sentence, in the
`
`alternative Petitioner proposes HomeRF’s “A-node” to be the first radio interface
`
`standard, and the “I-node” to be the second radio interface standard, making the use
`
`by the “I-node” the alternate use of the frequency band.
`
`However, even under that alternative scenario, the Petition must still fail
`
`because in that case, HomeRF fails to disclose “wherein the control station controls
`
`the access to the common frequency band for stations working in accordance with
`
`the first radio interface standard”.
`
`As shown above in discussion the Petition’s primary scenario, HomeRF
`
`always provides for a contention period (for the “A-nodes”, and under the Petition’s
`
`alternative scenario,
`
`the first radio
`
`interface), and because
`
`in HomeRF,
`
`asynchronous communication can take place directly between two peers, that
`
`communication is not being controlled by the control point. There is nothing in
`
`HomeRF Tutorial that shows otherwise, in fact, those additional references only
`
`show that the contention period can only grow larger. See EX1008, p. 22; EX1009,
`
`
`
` 8
`
` To the extent the Board may consider the testimony of Petitioner’s declarant, little
`to no weight should be given because Petitioner’s declarant merely parrots the
`same conclusory statements of the Petition. Compare e.g. Pet. 47 with EX1004, ¶
`101. This is insufficient. 37 C.F.R. § 42.65(a).
`
`xv
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`p. 8.
`
`Thus, under the Petition’s alternative scenario, the Petition must still fail
`
`because there is nothing in the Petition or any of the HomeRF references that
`
`discloses the control point’s ability to control access to common frequency band to
`
`the stations working in accordance with the first radio interface standard (in the
`
`Petition’s alternative scenario, the “A-nodes” during the contention period),
`
`especially where HomeRF itself shows that asynchronous communications (e.g.
`
`communications between the A-nodes) is direct and that communication is not
`
`being controlled by the control point. Therefore, the Petition has failed to show
`
`that the HomeRF references discloses “wherein the control station controls the
`
`access to the common frequency band for stations working in accordance with the
`
`first radio interface standard”.
`
`D. The Petition Fails As To The Challenged Dependent Claim 5
`
`Because challenged dependent Claim 5 depends from the challenged
`
`independent Claim 1, the Petition should be denied in its entirety.
`
`VI. THE PETITION SHOULD BE DENIED UNDER THE BOARD’S
`DISCRETION
`
`The Board should exercise its discretion under 35 U.S.C. § 325(d) and deny
`
`the Petition because it relies on the same art and substantially the same arguments
`
`that is already pending before the Board in IPR2019-01116.
`
`In IPR2017-01780, the Board held that:
`
`“On its face, § 325(d) does not contain any recitation
`
`regarding the identity of the party that previously
`
`xvi
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`presented the prior art; instead, the language of § 325(d)
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`focuses solely on whether or not a petition relies on “the
`
`same or substantially the same prior art or argument
`
`previously . . . presented to the Office.” 35 U.S.C. §
`
`325(d). This stands in contrast to the estoppel provisions,
`
`for example, which only apply when the same petitioner
`
`brings a second petition for inter partes review.”
`
`IPR2017-01780, Paper 8 at 8.
`
`Accordingly, the Board confirmed that § 325(d) focuses on whether or not a
`
`petition relies on “the same or substantially the same prior art or argument previously
`
`. . . presented to the Office.” Id.
`
`Here, Petitioner acknowledges that it concurrently filed IPR2019-01116 along
`
`with the Petition. See Pet. 4-5. And while the Petition challenges just dependent
`
`Claim 5, Petitioner provides no explanation for why it filed the instant Petition when
`
`Petitioner’s IPR2019-01116 petition included a challenge to dependent Claim 2.
`
`Furthermore, because dependent Claims 2 and 5 both depend from Claim 1, and
`
`because the instant Petition and the petition in IPR2019-01116 both rely on
`
`substantially the same prior art, a review of the two petitions show that both petitions
`
`rely on “the same or substantially the same prior art or argument previously . . .
`
`presented to the Office.” 35 U.S.C. § 325(d).
`
`The instant Petition relies on the exact same prior art references, HomeRF and
`
`HomeRF Tutorial, as in IPR2019-01116. And the remaining two references,
`
`HomeRF SWAP Spec and Haartsen are applied only to challenged dependent Claim
`
`xvii
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`5. In other words, aside from the challenge to dependent Claim 5 (which Petitioner
`
`offers no explanation as to why it could not have been included in IPR2019-01116),
`
`the instant Petition and the petition in IPR2019-01116 are nearly identical. See e.g.
`
`Compare Pet. 3-50 with IPR2019-01116, Paper 2 (petition), pp. 3-46.9
`
`In sum, “the finite resources of the Board” support that denial is appropriate
`
`here. The Board has already been presented with “the same or substantially the same
`
`prior art or arguments” in the concurrently filed IPR2019-01116, denying the instant
`
`Petition would conserve the Board’s valuable and finite resources.
`
`VII. CONCLUSION
`
`For at least the reasons set forth above, Uniloc respectfully requests that the
`
`Board deny all challenges in the instant Petition.10
`
`
`
`Date: September 6, 2019
`
`
`
`
`
`Respectfully submitted,
`
`By: /s/ Brett A. Mangrum
`
`Brett A. Mangrum; Reg. No. 64,783
`
`Attorney for Patent Owner
`
`
`
` 9
`
` A longer section regarding claim construction with regards to challenged
`dependent Claim 5 in the instant Petition accounts for substantially all of the
`differences.
`
`10 Patent Owner does not concede, and specifically denies, that there is any
`legitimacy to any arguments in the instant Petition that are not specifically addressed
`herein.
`
`xviii
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`CERTIFICATE OF COMPLIANCE
`
`Pursuant to 37 C.F.R. § 42.24(d), we certify that this Preliminary Response
`
`to Petition complies with the type-volume limitation of 37 C.F.R. § 42.24(b)(1)
`
`because it contains fewer than the limit of 14,000 words, as determined by the
`
`word-processing program used to prepare the brief, excluding the parts of the
`
`brief exempted by 37 C.F.R. § 42.24(a)(1).
`
`Date: September 6, 2019
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`By: /s/ Brett A. Mangrum
`
`Brett A. Mangrum; Reg. No. 64,783
`
`Attorney for Patent Owner
`
`xix
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`CERTIFICATE OF SERVICE
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`
`
`Pursuant to 37 C.F.R. §§ 42.6(e), we certify that we served an electronic copy
`
`of the foregoing PATENT OWNER’S PRELIMINARY RESPONSE PURSUANT
`
`TO 37 C.F.R. § 42.107(a) along
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