UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS AMERICA, INC.
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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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`IPR2019-01218
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`PATENT 6,836,654
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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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`IPR2019-01218
`U.S. Patent 6,836,654
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`Table of Contents
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`I.
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`II.
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`INTRODUCTION .................................................................................... 1
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`THE ’654 PATENT .................................................................................. 1
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`III.
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`RELATED PROCEEDINGS .................................................................... 3
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`IV.
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`V.
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`GIVEN THE TRIAL SCHEDULE IN PARALLEL
`LITIGATION, AND MULTIPLE PETITIONS FILED BY
`PETITIONER ON THE ’654 PATENT, THE BOARD
`SHOULD EXERCISE DISCRETION UNDER 35 U.S.C.
`§ 314(A) AND NHK SPRING TO DENY INSTITUTION ..................... 3
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`PETITIONER DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM .......................................................................... 7
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`A.
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`The Level of Ordinary Skill in the Art ........................................... 8
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`B.
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`Claim Construction ......................................................................... 9
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`1.
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`Petitioner Does Not Meet Its Burden to Identify
`Corresponding Structure ...................................................... 9
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`VI.
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`CONCLUSION ....................................................................................... 12
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`ii
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`IPR2019-01218
`U.S. Patent 6,836,654
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`No.
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`LIST OF EXHIBITS
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`
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`Description
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`2001 Uniloc 2017 LLC v. Samsung Elecs. Am., Inc., No. 2:18-
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`00508, Docket Control Order, D.I. 20 (E.D. Tex.)
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`2002 Exhibit A-1 to Samsung Invalidity Contentions, Uniloc 2017 LLC
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`v. Samsung Elecs. Am., Inc., No. 2:18-00508 (E.D. Tex.)
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`2003 Exhibit B to Samsung Invalidity Contentions, Uniloc 2017 LLC v.
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`Samsung Elecs. Am., Inc., No. 2:18-00508 (E.D. Tex.)
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`iii
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`IPR2019-01218
`U.S. Patent 6,836,654
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`I.
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`INTRODUCTION
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`Uniloc 2017 LLC (“Uniloc” or “Patent Owner”) submits this Preliminary
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`Response to Petition IPR2019-01218 for Inter Partes Review (“Pet.” or “Petition”)
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`of United States Patent No. 6,836,654 (“the ’654 patent” or “EX1001”) filed by
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`Samsung Electronics America, Inc. (“Petitioner”). The instant Petition is defective
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`for at least the reasons set forth herein.
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`II. THE ’654 PATENT
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`The ’654 patent is titled “Anti-theft protection for a radiotelephony device.”
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`The ʼ654 patent issued December 28, 2004, from U.S. Patent Application No.
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`09/739,507 filed December 18, 2000, claiming priority to French application 99-
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`16136, filed December 21, 1999.
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`Figure 3 of the ’654 patent, reproduced below, is a flow chart depicting an
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`example embodiment.
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`1
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`IPR2019-01218
`U.S. Patent 6,836,654
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`The text accompanying Figure 3 describes operation from box K1 at the top
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`of the figure, in which the device is in a state of availability, through various blocking
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`states (K5, K11, K30) and decisional nodes related to these blocking states. See
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`2
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`IPR2019-01218
`U.S. Patent 6,836,654
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`EX1001, 2:61–4:6.
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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. 6,836,654 (EX1001).
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`Case Name
`Uniloc 2017 LLC et al v. Google
`LLC
`Uniloc 2017 LLC v. Samsung
`Electronics America, Inc. et al
`Uniloc 2017 LLC v. Motorola
`Mobility, LLC
`Uniloc 2017 LLC v. HTC America,
`Inc.
`Uniloc USA, Inc. et al v. Apple Inc.
`Uniloc 2017 LLC v. Microsoft
`Corporation
`Samsung Electronics America, Inc.
`v. Uniloc 2017 LLC
`Samsung Electronics America, Inc.
`v. Uniloc 2017 LLC
`Microsoft Corporation v. Uniloc
`2017 LLC
`Microsoft Corporation v. Uniloc
`2017 LLC
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`
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`Case Number
`2-18-cv-00493
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`Court
`TXED
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`Filing Date
`11/17/2018
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`2-18-cv-00508
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`TXED
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`11/17/2018
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`1-18-cv-01844
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`DED
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`11/20/2018
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`2-18-cv-01732 WAWD
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`11/30/2018
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`3-19-cv-01697
`8-19-cv-00781
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`CAND
`CACD
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`4/2/2019
`4/29/2019
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`IPR2019-01218
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`PTAB
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`6/19/2019
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`IPR2019-01219
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`PTAB
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`6/19/2019
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`IPR2019-01470
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`PTAB
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`8/9/2019
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`IPR2019-01471
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`PTAB
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`8/9/2019
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`IV. GIVEN THE TRIAL SCHEDULE IN PARALLEL LITIGATION,
`AND MULTIPLE PETITIONS FILED BY PETITIONER ON THE
`’654 PATENT, THE BOARD SHOULD EXERCISE DISCRETION
`UNDER 35 U.S.C. § 314(A) AND NHK SPRING TO DENY
`INSTITUTION
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`Instituting a trial under the facts and circumstances of this case would be an
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`inefficient use of Board resources. As Petitioner acknowledges, jury selection is set
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`3
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`IPR2019-01218
`U.S. Patent 6,836,654
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`to begin in the parallel litigation involving Petitioner on July 6, 2020, which is
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`approximately six months prior to any expected decision from the Board in this case
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`if trial were instituted. Pet. 75; see Uniloc 2017 LLC v. Samsung Elecs. Am., Inc.,
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`No. 2:18-00508, D.I. 20 (E.D. Tex.) (submitted for convenience of the Board as
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`Exhibit 2001). Petitioner asserts that it filed this Petition “promptly,” despite a delay
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`of eight months from the re-filing of the district court case, and inexplicably asserts
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`that “the section 314(a) consideration regarding parallel litigation in NHK Spring
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`Co., Ltd. v. Intri-plex Technologies, IPR2018-00752, Paper No. 8 at 20 (P.T.A.B.
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`Sept. 12, 2018), is wholly inapplicable here.” Pet. 75. To the contrary, the Board’s
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`precedential decision in NHK Spring is on point as to discretionary denial under
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`§ 314(a) based on the status of parallel litigation. Denial of institution on this basis
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`is respectfully requested.
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`In NHK Spring, expert discovery was set to close on November 1, 2018,
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`approximately two months from the date of the institution decision of September 12,
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`2018. NHK Spring, Case IPR2018-00752, Paper No. 8, 20 (PTAB Sept. 12, 2018)
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`(precedential). Trial was set to begin on March 25, 2019, just over six months from
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`the date of the institution decision. Id. Thus, the Board noted that trial before it on
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`the same asserted prior art would not conclude until September 2019, which was six
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`months after the scheduled trial date before the district court. Id. The Board
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`determined that “[i]nstitution of an inter partes review under these circumstances
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`would not be consistent with ‘an objective of the AIA . . . to provide an effective and
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`efficient alternative to district court litigation.’” Id. (quoting General Plastic Indus.
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`Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01357 (Paper 19) (PTAB Sept.
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`6, 2017) (precedential as to § II.B.4.i)). The Board thus found that the advanced
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`state of the district court proceeding weighed in favor of denying the Petition under
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`§ 314(a). Id. Although NHK Spring also involved factors under § 325(d), and
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`4
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`IPR2019-01218
`U.S. Patent 6,836,654
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`considered the advanced state of the district court litigation as an additional factor,
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`NHK Spring does not indicate that the state of district court litigation can only be
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`considered with other specific factors, rather than as part of a balanced assessment
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`of all relevant circumstances in the case. Indeed, the Board’s determination in NHK
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`Spring that “[i]nstitution of an inter partes review under these circumstances would
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`not be consistent with an objective of the AIA . . . to provide an effective and
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`efficient alternative to district court litigation” (internal quotation omitted) is in
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`reference to the parallel litigation, not additional 325(d) considerations. See NHK
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`Spring, Paper No. 8, 19–20. See also Thermo Fisher Scientific, Inc. v. Regents of
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`Univ. of Cal., IPR2018-01370, slip op. at 25–27 (Paper 11) (PTAB Feb. 7, 2019)
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`(determining that “the advanced stage of the pending district court proceeding, along
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`with the similarities involved in that proceeding and the Petition, warrant
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`additionally denying the Petition under § 314(a)”).
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`Here, a decision on institution is not expected until January 2020, which
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`means a trial before the Board would not conclude until January 2021. As Petitioner
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`acknowledges, Pet. 75, jury selection at the start of trial before the district court is
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`set for July 6, 2020, which is only six months after an anticipated decision on
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`institution and six months prior to conclusion of trial before the Board if one were
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`instituted, as in NHK Spring. And, as in NHK Spring, the same grounds proposed
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`in the Petition are included in Petitioner’s invalidity contentions in the district court.
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`See EX2002 (Exhibit A-1 to Petitioner’s invalidity contentions in Uniloc 2017 LLC
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`v. Samsung Elecs. Am., Inc., No. 2:18-00508 (E.D. Tex.); EX2003 (Exhibit B to
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`Petitioner’s invalidity contentions). Expert discovery will close March 30, 2020,
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`which is less than three months from an expected decision on institution in this
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`proceeding. EX2001. Although the district court has yet to construe the claims, a
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`claim construction hearing is set for December 17, 2019, prior to the anticipated date
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`5
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`IPR2019-01218
`U.S. Patent 6,836,654
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`of a decision on institution in this proceeding. Id.1 Samsung’s decision to wait eight
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`months from the filing of the infringement lawsuit to file its Petition, even after
`having earlier notice of the patent as asserted in a prior suit,2 has directly and
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`foreseeably resulted in the district court proceeding reaching this advanced stage
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`relative to this proceeding. As in NHK Spring, “[i]nstitution of an inter partes
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`review under these circumstances would not be consistent with ‘an objective of the
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`AIA . . . to provide an effective and efficient alternative to district court litigation.’”
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`NHK Spring, Paper No. 8, 20. Patent Owner, therefore, requests that the Board
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`exercise its discretion not to institute trial under the circumstances of this case.
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`An additional factor weighing in favor of denying the Petition is Petitioner’s
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`filing of two petitions on the ’654 patent at the same time, which places a substantial
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`and unnecessary burden on the Board and the Patent Owner, and raises fairness,
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`timing, and efficiency concerns. On the same day, Petitioner filed petitions on the
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`’654 patent asserting unpatentability of (1) claims 1–9 based on various grounds
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`including Nokia, Alos, Matsukida, Miller, and one additional reference (Kemppi),
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`in IPR2019-01218, and (2) claims 10–20 based on similar grounds including Nokia,
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`Alos, Matsukida, and Miller, in IPR2019-01219. As the Board recognized in the
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` 1
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` In light of the revised standard for claim construction in IPR proceedings, the
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`district court will construe the claims applying the same claim construction
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`standard as the Board.
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`2 Uniloc USA, Inc. et al v. Samsung Electronics America, Inc. et al, Case 2-18-cv-
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`00309 (E.D. Tex.) (filed July 23, 2018).
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`6
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`IPR2019-01218
`U.S. Patent 6,836,654
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`July 2019 Trial Practice Guide Update:
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`Based on the Board’s prior experience, one petition should be
`sufficient to challenge the claims of a patent in most situations. Two or
`more petitions filed against the same patent at or about the same time
`(e.g., before the first preliminary response by the patent owner) may
`place a substantial and unnecessary burden on the Board and the patent
`owner and could raise fairness, timing, and efficiency concerns. See 35
`U.S.C. § 316(b). In addition, multiple petitions by a petitioner are not
`necessary in the vast majority of cases. To date, a substantial majority
`of patents have been challenged with a single petition.
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` Trial Practice Guide Update, 26 (July 2019). This is not a “rare” case in which
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`“more than one petition may be necessary, including, for example, when the patent
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`owner has asserted a large number of claims in litigation or when there is a dispute
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`about priority date requiring arguments under multiple prior art references.” Id.
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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 Petition raises the following obviousness challenges under 35 U.S.C.
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`§ 103(a):
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`7
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`

`

`IPR2019-01218
`U.S. Patent 6,836,654
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`
`Ground
`1
`2
`3
`4
`5
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`Claims
`1–3 and 7–9
`4–6
`1–2 and 7–9
`4–6
`3
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`Reference(s)
`Nokia3 and Alos4
`Nokia, Alos, and Kemppi5
`Matsukida6 and Alos
`Matsukida, Alos, and Kemppi
`Matsukida, Alos, and Miller7
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`A. The Level of Ordinary Skill in the Art
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`The Petition alleges that a person of ordinary skill in the art at the time of
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`invention “would have had at least a bachelor’s degree in computer science,
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`computer engineering, electrical engineering, or the equivalent and at least two years
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`of experience in the relevant field, e.g., security of mobile devices.” Pet. 5. Given
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`that Petitioner fails to meet its burden of proof in establishing obviousness when
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`applying its own definition of a person of ordinary skill in the art (“POSITA” or
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`“POSA”), 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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` 3
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` EX1004, Owner’s Manual for the Nokia 9000i Communicator, Issue 1.1.
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`4 EX1005, U.S. Pub. No. 2002/0147028.
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`5 EX1006, U.S. Pat. No. 4,868,846.
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`6 EX1021, Japanese Patent Application Publication No. JP H6-216841.
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`7 EX1022, U.S. Pat. No. 6,141,563.
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`8
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`IPR2019-01218
`U.S. Patent 6,836,654
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`B. Claim Construction
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`“In an inter partes review proceeding, a claim of a patent . . . shall be
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`construed using the same claim construction standard that would be used to construe
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`the claim in a civil action,” which includes “construing the claim in accordance with
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`the ordinary and customary meaning of such claim as understood by one of ordinary
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`skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R.
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`§ 42.100(b).
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`The Petition must address “[h]ow the challenged claim is to be construed.”
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`Id. § 42.104(b)(3). “Where the claim to be construed contains a means-plus-
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`function or step-plus-function limitation as permitted under 35 U.S.C. 112(f), the
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`construction of the claim must identify the specific portions of the specification that
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`describe the structure, material, or acts corresponding to each claimed function.” Id.
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`The Petition must be denied for failing to perform this required analysis.
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`1.
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`Petitioner Does Not Meet
`Corresponding Structure
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`Its Burden
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`to
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`Identify
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`Petitioner contends the means-plus-function limitations in claims 1–9 “require
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`a special purpose computer because the claimed functions are specialized,” and that,
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`therefore, “the specification must disclose corresponding structure in the form of an
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`algorithm for performing the claimed function.” Pet. 6. Petitioner also
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`unambiguously takes the position that “the specification merely restates the
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`functions recited in the claims” and “does not set forth an algorithm for performing
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`the functions.” Id. at 7. The Board “need not . . . assess whether Petitioner’s
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`position is correct.” Intex Recreation Corp. v. Team Worldwide Corp., Case
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`9
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`

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`IPR2019-01218
`U.S. Patent 6,836,654
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`IPR2019-00243, Paper 7, at 18 (PTAB May 8, 2019). Instead, where Petitioner takes
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`the position that the specification does not disclose corresponding structure to the
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`claimed functions, the Board “merely determine[s] that Petitioner has not adequately
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`identified the structure(s), if any, disclosed” in the patent that correspond to the
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`functions. Id. “When a petitioner has not adequately identified a construction for a
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`means-plus-function limitation, the Board typically denies institution . . . .” Id. at
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`19
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`(citing Becton, Dickinson & Co. v. Baxter
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`Int’l, Case
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`IPR2018-
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`01741, slip op. at 13–14 (PTAB Mar. 18, 2019) (Paper 8) (collecting
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`cases)). “Institution is denied in these situations because the basis for the
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`petitioner’s challenge . . . cannot be adequately discerned, thereby depriving the
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`patent owner of sufficient notice as to the challenges being made.” Id. at 20.
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`Petitioner “assumes that Patent Owner will argue that the corresponding
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`structure for the identified functions is software executed by a processor that
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`performs the identified functions (or equivalents thereof) recited in the claims and
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`described in the portions of the specification cited in the table” on pages 7–9 of the
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`Petition. Id. Petitioner does not, however, adopt this position. Petitioner’s
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`hypothetical argument is not consistent with its burden to set forth “[h]ow the
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`challenged claim is to be construed,” including identification of “the specific
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`portions of the specification that describe the structure, material, or acts
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`corresponding to each claimed function.” 37 C.F.R. § 42.104(b)(3) (emphasis
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`added). Patent Owner need not make the argument “assume[d]” by Petitioner, and
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`the Board should deny the Petition based on Petitioner’s unambiguous position that
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`10
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`IPR2019-01218
`U.S. Patent 6,836,654
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`the specification does not disclose corresponding structure to the claimed functions,
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`as discussed above.
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`Even if the Board considers Petitioner’s hypothetical arguments and the table
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`at pages 7–9 of the Petition, these are also insufficient to meet Petitioner’s burden to
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`set forth how the challenged claims are to be construed. The Petition describes the
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`table as including citations to portions of the specification that describe the functions
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`recited in the claims. See Pet. 7. The Petition alleges that “Petitioner demonstrates
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`how the prior art discloses these claim limitations if interpreted to cover the assumed
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`corresponding structure, in the event the Board believes the specification does
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`disclose sufficient corresponding structure based on the portions of the specification
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`cited below.” Id. Petitioner’s invitation for the Board to review the cited portions
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`of the Specification to find the corresponding structure fails to meet Petitioner’s
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`burden to set forth how the challenged claims are to be construed.
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`Even considering Petitioner’s discussion of specific claim limitations, for
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`example that the ’654 patent contains a “description of what appears to be a ‘timing
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`means’ (box K10),” Pet. 17, the Petition unambiguously takes the position that this
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`is not how the claim should be construed. See Pet. 6–7 (contending that “the means-
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`plus-function limitations listed in the table below require a special purpose
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`computer,” that “the specification must disclose corresponding structure in the
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`form of an algorithm,” and that the specification “does not set forth an
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`algorithm for performing the functions”). As noted above, where Petitioner
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`takes the position that the specification does not disclose corresponding structure to
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`11
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`IPR2019-01218
`U.S. Patent 6,836,654
`
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`the claimed functions, the Board should “merely determine that Petitioner has not
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`adequately identified the structure(s), if any, disclosed” in the patent that correspond
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`to the functions, and deny institution. Intex, IPR2019-00243, Paper 7, at 18.
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`Petitioner’s implicit contention that the “means” recited in the challenged claims
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`render these claims indefinite is appropriately determined only in a proceeding that
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`encompasses such issues, and neither Patent Owner nor the Board need address
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`arguments based on hypothetical claim constructions inconsistent with Petitioner’s
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`argued position as to the meaning of the claims. See id. at 21 (denying institution
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`based on anticipation grounds because “[i]n an anticipation analysis, the step of
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`construing a claim limitation precedes the step of comparing the construed limitation
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`to the prior art,” and “[b]y purporting to perform the second step while affirmatively
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`taking the position that the first step needs to be performed, but cannot be performed,
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`Petitioner has not provided an adequate anticipation analysis to support
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`institution.”).
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`VI. CONCLUSION
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`For at least the reasons set forth above, Uniloc respectfully requests that the
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`Board deny all challenges in the instant Petition.8
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` 8
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` Patent Owner does not concede, and specifically denies, that there is any legitimacy
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`to any arguments in the instant Petition that are not specifically addressed herein.
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`12
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`

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`Date: October 11, 2019
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`Respectfully submitted,
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`IPR2019-01218
`U.S. Patent 6,836,654
`
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`By: /Brett A. Mangrum/
`
`Brett A. Mangrum; Reg. No. 64,783
`
`Attorney for Patent Owner
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`13
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`IPR2019-01218
`U.S. Patent 6,836,654
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`CERTIFICATE OF COMPLIANCE
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`
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`Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies that the foregoing
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`Preliminary Response to Petition complies with the type-volume limitation of 37
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`C.F.R. § 42.24(b)(1) because it contains fewer than the limit of 14,000 words, as
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`determined by the word-processing program used to prepare the brief, excluding
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`the parts of the brief exempted by 37 C.F.R. § 42.24(a)(1).
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`Date: October 11, 2019
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`Respectfully submitted,
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`By: /Brett A. Mangrum/
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`Brett A. Mangrum; Reg. No. 64,783
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`Attorney for Patent Owner
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`i
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`IPR2019-01218
`U.S. Patent 6,836,654
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that an electronic
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`copy of the foregoing Patent Owner Preliminary Response was served, along with
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`any accompanying exhibits, via the PTAB E2E system and/or email to Petitioner’s
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`counsel at the following addresses identified in the Petition’s consent to electronic
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`service:
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`Lead Counsel:
`Naveen Modi (Reg. No. 46,224)
`PH-Samsung-Uniloc-IPR@paulhastings.com
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`Backup Counsel:
`Joseph E. Palys (Reg. No. 46,508)
`Phillip W. Citroën (Reg. No. 66,541)
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`Date: October 11, 2019
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`Respectfully submitted,
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`By: /Brett A. Mangrum/
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`Brett A. Mangrum; Reg. No. 64,783
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`Attorney for Patent Owner
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`ii
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