Trials@uspto.gov
`571.272.7822
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` Paper 7
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` Entered: February 11, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2019-01470
`Patent 6,836,654 B2
`____________
`
`
`
`Before JENNIFER S. BISK, NEIL T. POWELL, and JOHN D. HAMANN,
`Administrative Patent Judges.
`
`HAMANN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314
`
`
`
`
`
`
`
`

`

`IPR2019-01470
`Patent 6,836,654 B2
`INTRODUCTION
`I.
`Microsoft Corporation (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting an inter partes review of claims 1–9 of U.S. Patent No. 6,836,654
`B2 (Ex. 1001, “the ’654 patent”) pursuant to 35 U.S.C. § 311. Uniloc 2017
`LLC (“Patent Owner”) filed a Patent Owner Preliminary Response (Paper 6,
`“Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review under 35 U.S.C. § 314 and 37 C.F.R. § 42.4(a). Upon consideration
`of the Petition and the Preliminary Response, we exercise our discretion to
`deny institution under 35 U.S.C. § 314(a) for the reasons explained below.
`A. Related Matters
`Petitioner identifies the following as related matters that involve the
`’654 patent.
`1. Uniloc 2017 LLC v. Microsoft Corp., 8-19-cv-00781 (C.D. Cal.)
`2. Uniloc USA, Inc. v. Apple Inc., 3-19-cv-01697 (C.D. Cal.)
`3. Uniloc 2017 LLC v. HTC Am., Inc., 2:18-cv-01732 (W.D. Wash.)
`4. Uniloc 2017 LLC v. Motorola Mobility, LLC, 1:18-cv-01844 (D. Del.)
`5. Uniloc 2017 LLC v. Google LLC, 2:18-cv-00493 (E.D. Tex.)
`6. Uniloc 2017 LLC v. Samsung Elecs. Am., Inc., 2:18-cv-00508 (E.D.
`Tex.)
`7. Uniloc 2017 LLC v. Huawei Device USA, Inc., 2:18-cv-00509 (E.D.
`Tex.)
`8. Uniloc 2017 LLC v. Google LLC, 2:18-cv-00422 (E.D. Tex.)
`9. Uniloc USA, Inc. v. Huawei Device USA, Inc., 2-18-cv-00357 (E.D.
`Tex.)
`10. Uniloc USA, Inc. v. Motorola Mobility, LLC, 1:18-cv-01230 (D. Del.)
`11. Uniloc USA, Inc. v. Samsung Elecs. Am., Inc., 2:18-cv-00309 (E.D.
`Tex.)
`12. Uniloc USA, Inc. v. Huawei Device USA, Inc., 2:18-cv-00310 (E.D.
`Tex.)
`13. Uniloc USA, Inc. v. Apple Inc., 1:18-cv-00293 (W.D. Tex.)
`14. Samsung Elecs. Am., Inc. v. Uniloc 2017 LLC, IPR2019-01218
`(PTAB)
`
`2
`
`

`

`IPR2019-01470
`Patent 6,836,654 B2
`15. Samsung Elecs. Am., Inc. v. Uniloc 2017 LLC, IPR2019-01219
`(PTAB)
`16. Microsoft Corp. v. Uniloc 2017 LLC, IPR2019-01471 (PTAB)
`
`
`
`Pet. vii–viii. Patent Owner identifies nine of these matters as being
`“active proceedings.” Paper 4, 2.
`B. The Challenged Patent (Ex. 1001)
`The ’654 patent relates to deterring the theft of a mobile
`radiotelephony device. Ex. 1001, code (57), 1:60–65. In particular, the ’654
`patent discloses that it deters theft by making the device “totally unusable,”
`if it is stolen. Id. at 1:60–65. The ’654 patent states that it does so by
`resolving what it identifies as a problem in a prior art protection method. Id.
`at 1:31–41.
`More specifically, and as described by the ’654 patent, the prior art
`method provides protection by “establishing a link between [a] device and a
`specific user identification module and blocking the normal operation of the
`device when the user identification module that is placed inside the device is
`not the one that is linked to the device.” Id. at 1:21–29. The ’654 patent,
`however, identifies as a problem with this method that “[w]hen the device is
`lost or stolen with the identification module to which it is linked,” the device
`can be freely used until the device’s network operator is notified to block the
`device, which “may take a certain period of time.” Id. at 1:31–37.
`
`In resolving this problem, the ’654 patent notes that “when the device
`falls into the hands of a third party together with the identification module to
`which it is linked, it has most probably been inactive for a period of time.”
`Id. at 1:52–54. The ’654 patent discloses that this inactive period is
`“sufficiently long” so that it can be used as a way to block the device’s
`
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`

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`IPR2019-01470
`Patent 6,836,654 B2
`normal operation, and to require a deblocking code to use the device, in
`accordance with the ’654 patent’s invention. Id. at 1:55–59.
`
`Figure 3, shown below, “represents a flow chart explaining the
`operation of the device,” in accordance with the invention of the ’654 patent.
`Id. at 2:26–27, 2:30–31.
`
`
`Figure 3 illustrates “a function flow chart of a device in accordance
`
`with the invention” of the ’654 patent. Id. at 2:61–62. Starting at box K1,
`
`4
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`

`

`IPR2019-01470
`Patent 6,836,654 B2
`“the device is in a state of availability, that is to say that the user has access
`to all the functions of the device.” Id. at 2:62–65. As illustrated by box K2,
`the user has the choice whether to lock the device. Id. at 2:65–66. If the
`user locks the device (box K2), “the identification module that is inside the
`device is automatically linked to the device. For this purpose, the device
`starts reading a data D1 in the identification module (for example, the
`international identification number IMSI) and he stores it in the random-
`access memory 24,” the ’654 patent states. Id. at 2:67–3:6. As illustrated,
`“[o]nce locked, the device remains in the state of availability indicated in
`box Kl.” Id. at 3:6–7.
`
`In accordance with the ’654 patent, “[w]hen the device is in the state
`of availability, one looks whether it is locked (box K3). If it is not locked
`(arrow N3), the device remains in the state of availability indicated in box
`Kl.” Id. at 3:7–10. However, “[i]f it is locked (arrow Y3), one looks
`whether the identification module which is placed inside the device is the
`one that is linked to the device (box K4).” Id. at 3:10–13. If the
`identification module inside the device “is not the one that is linked to the
`device (arrow N4), the device goes to a first blocking state indicated in box
`K5,” and “is disconnected from the network.” Id. at 3:14–18.
`
`Alternatively, “[i]f the identification module that is placed inside the
`device is linked to the device (arrow Y4), one looks whether the device has
`remained in the state of availability for a certain period of time T . . . (box
`K10),” as illustrated. Id. at 3:32–36. If not T “(arrow N10), the device
`remains in the state of availability indicated in box K1.” Id. at 3:36–37.
`However, if the device has remained available for time period T, the device
`“passes on to a second blocking state indicated in box K11,” and
`“initialize[s] a variable A which represents the number of attempts made at
`
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`IPR2019-01470
`Patent 6,836,654 B2
`supplying a deblocking code.” Id. at 3:37–42. “In this second blocking state
`the device only processes incoming calls (box K13) and, possibly, the
`outgoing calls that correspond to emergency numbers (box K14).” Id. at
`3:44–46.
`
`The ’654 patent discloses that at this stage the user is prompted to
`supply a deblocking code, and “[i]f the code . . . is recognized (arrow Y11),
`the device goes back to the state of availability indicated in box Kl.” Id. at
`3:49–53. On the other hand, if the code is not recognized (arrow N11),
`variable A is tested (box K15), and if A is lower than a certain figure, A is
`incremented (box K16); otherwise “the test of box K15 causes the total
`blocking of the device indicated in box K30” (i.e., a third blocking state).
`Id. at 3:53–61. The ’654 patent discloses that “[t]o leave this third blocking
`state[,] it is necessary to contact the organization that provides the
`identification module.” Id. at 3:61–63.
`C. The Challenged Claims
`Petitioner challenges claims 1–9 of the ’654 patent. Claim 1 is the
`only challenged independent claim. Claim 1 is reproduced below:
`1.
`A mobile radiotelephony device, comprising:
`
`blocking means for preventing a normal operation of the
`mobile radiotelephony device, wherein the normal operation
`includes a processing of outgoing calls;
`
`timing means for activating the blocking means in
`response to the mobile radiotelephony device being inactive
`during the normal operation of the mobile radiotelephony device
`for a defined period of time subsequent to a mounting of a linked
`user identification module inside the mobile radiotelephony
`device; and
`
`deblocking means for permitting the normal operation of
`the mobile radiotelephony device in response to a supply of a
`deblocking code
`to
`the mobile
`radiotelephony device
`subsequent to the mounting of the linked user identification
`
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`IPR2019-01470
`Patent 6,836,654 B2
`module inside the mobile radiotelephony device and subsequent
`to the defined period of time.
`Ex. 1001, 4:39–56.
`D. Asserted Grounds of Unpatentability
`Petitioner asserts the following grounds of unpatentability:
`
`
`
`
`Claims Challenged 35 U.S.C.
`§1
`103(a)
`103(a)
`103(a)
`103(a)
`
`1–4, 7–9
`5, 6
`1–4, 7–9
`5, 6
`
`Basis
`
`Nokia Manual,2 Barvesten3
`Nokia Manual, Barvesten, Martino4
`Barvesten, Schultz5
`Barvesten, Schultz, Martino
`
`
`Pet. 14–67. Petitioner submits the Declaration of Steven Harris (Ex. 1007),
`the Declaration of Henry Houh (Ex. 1010), and the Declaration of Timo
`Henttonen (Ex. 1014) in support of its arguments.
`II. ANALYSIS
`A threshold issue here is whether we should deny institution under
`
`35 U.S.C. § 314(a) in view of Petitioner’s filing of two concurrent petitions
`against the ’654 patent (i.e., “parallel petitions”). See Pet. 6–7; Prelim.
`Resp. 6–8. Because we determine that the circumstances here warrant denial
`of institution under § 314(a), this threshold issue is dispositive.
`
`
`1 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. § 103 that became effective on March 16, 2013. Because the ’654
`patent issued from an application filed before March 16, 2013, we apply the
`pre-AIA version of the statutory basis for unpatentability.
`2 Owner’s Manual for the Nokia 9000i Communicator, Issue 1.1 (Ex. 1003).
`3 U.S. Patent No. 5,940,773 (issued Aug. 17, 1999) (Ex. 1006).
`4 U.S. Patent No. 5,987,103 (issued Nov. 16, 1999) (Ex. 1012).
`5 Charles P. Schultz, Communication Device Inactivity Password Lock, 29
`MOTOROLA TECH. DEVS. 14–15 (Nov. 1996) (Ex. 1008).
`
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`

`IPR2019-01470
`Patent 6,836,654 B2
`A. Legal Framework of 35 U.S.C. § 314(a)
`Under 35 U.S.C. § 314(a), a decision whether to institute an inter
`
`partes review is within the Director’s discretion. See, e.g., Oil States Energy
`Services, LLC v. Greene’s Energy Group, LLC, 138 S. Ct. 1365, 1371
`(2018) (“The decision whether to institute inter partes review is committed
`to the Director’s discretion.”); Harmonic Inc. v. Avid Tech., Inc., 815 F.3d
`1356, 1367 (Fed. Cir. 2016) (“[T]he [Patent Office] is permitted, but never
`compelled, to institute an [inter partes review] proceeding.”). This
`discretion has been delegated to the Board. See 37 C.F.R. § 42.4(a); Cuozzo
`Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s
`decision to deny a petition is a matter committed to the Patent Office’s
`discretion.”).
`
`To guide the use of this discretion, the Director designated certain
`Board decisions as precedential. For example, the Director designated a
`portion of General Plastic Industrial Co. v. Canon Kabushiki Kaisha, which
`sets forth seven non-exhaustive factors to consider in determining whether to
`deny institution under § 314(a) of a follow-on petition challenging the same
`patent. Case IPR2016-01357, slip op. at 16 (PTAB Sept. 6, 2017) (Paper
`19) (Section II.B.4.i designated as precedential) (citing NVIDIA Corp. v.
`Samsung Elec. Co., Case IPR2016-00134 (PTAB May 4, 2016) (Paper 9)).
`These seven factors, however, are “not exclusive and are not intended to
`represent all situations where it may be appropriate to deny a petition” under
`§ 314(a). Trial Practice Guide Update (July 2019) (available at
`https://www.uspto.gov/sites/default/files/documents/trial-practice-guide-
`update3.pdf) (“TPGU”), 25 (citing Gen. Plastic, Paper 19, at 16).
`
`In fact, “[t]here may be other reasons besides the ‘follow-on’ petition
`context where the ‘effect . . . on the economy, the integrity of the patent
`
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`IPR2019-01470
`Patent 6,836,654 B2
`system, the efficient administration of the Office, and the ability of the
`Office to timely complete proceedings.’” TPGU, 25 (quoting 35 U.S.C.
`§ 316(b)). For example, “[b]ased on the Board’s prior experience, one
`petition should be sufficient to challenge the claims of a patent in most
`situations,” and thus, “[t]wo or more petitions filed against the same patent
`at or about the same time . . . may place a substantial and unnecessary
`burden on the Board and the patent owner and could raise fairness, timing,
`and efficiency concerns.” Id. at 26 (citing 35 U.S.C. § 316(b)); see also id.
`(characterizing circumstances where “two petitions by a petitioner may be
`needed” as “rare”).
`
`The TPGU further provides:
`
`To aid the Board in determining whether more than one
`petition is necessary, if a petitioner files two or more petitions
`challenging the same patent, then the petitioner should . . .
`identify: (1) a ranking of the petitions in the order in which it
`wishes the Board to consider the merits, if the Board uses its
`discretion to institute any of the petitions, and (2) a succinct
`explanation of the differences between the petitions, why the
`issues addressed by the differences are material, and why the
`Board should exercise its discretion to institute additional
`petitions if it identifies one petition that satisfies petitioner’s
`burden under 35 U.S.C. § 314(a). The Board encourages the
`petitioner to use a table to aid in identifying the similarities and
`differences between petitions.
`
`Id. at 27 (footnotes omitted).
`B. The Present Proceeding
`Petitioner filed this Petition, which challenges claims 1–9 of the ’654
`
`patent, concurrently with a second petition (IPR2019-01471), which
`challenges claims 10–20 of this same patent. E.g., Pet. 6. Petitioner argues
`that although it “is filing two petitions against the same patent, no claim is
`
`9
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`IPR2019-01470
`Patent 6,836,654 B2
`being challenged in both petitions, and [thus,] . . . the Board should give
`consideration to all challenged claims.” Id. at 7. Moreover, Petitioner
`argues that “claims 1–9 recite means plus function language, which is not
`found in claims 10–20.” Id. at 6. “It is possible that the Board will
`determine that corresponding structure is lacking in the [S]pecification for
`the functions recited by claims 1–9,” according to Petitioner. Id.
`
`In addition, in view of the TPGU, “Petitioner notes that it would
`prioritize concurrently filed IPR2019-01471 challenging claims 10–20 over
`this [P]etition, which challenges claims 1–9, and which are not presently
`asserted against Petitioner in the underlying district court litigation.”
`Id. at 6–7.
`
`Patent Owner argues that “Petitioner’s filing of two petitions on the
`’654 patent at the same time, . . . places a substantial and unnecessary
`burden on the Board and . . . Patent Owner, and raises fairness, timing, and
`efficiency concerns.” Prelim. Resp. 6. Patent Owner argues that the Board
`recognized, inter alia, that “one petition should be sufficient to challenge the
`claims of a patent in most situations,” and that “[t]his is not a ‘rare’ case in
`which “more than one petition may be necessary, including, for example,
`when the patent owner has asserted a large number of claims in litigation or
`when there is a dispute about priority date requiring arguments under
`multiple prior art references.” Id. at 7 (quoting TPGU, 26). Moreover,
`Patent Owner argues that the TPGU “provides no indication that merely
`dividing claims between two petitions justifies filing multiple petitions.” Id.
`Patent Owner argues that “[a]t least one of the petitions should be denied on
`at least this basis.” Id. at 8.
`
`
`10
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`

`IPR2019-01470
`Patent 6,836,654 B2
`C. Our Analysis
`Petitioner ranked the parallel petition in IPR2019-01471 ahead of this
`
`Petition. Pet. 7. After reviewing the petition, preliminary response, and
`relevant exhibits in IPR2019-01471, we were persuaded to grant that petition
`and institute trial in IPR2019-01471. See Microsoft Corp. v. Uniloc 2017
`LLC, IPR2019-01471, Paper 7 (PTAB Feb. 11, 2020) (Decision on
`Institution). Hence, we now turn to whether the circumstances here justify
`this second petition against the ’654 patent.
`
`To that end, we have considered the parties’ arguments directed to
`having two petitions in light of General Plastic’s guidance in determining
`whether to deny institution under § 314(a). However, the General Plastic
`factors have limited applicability here. See, for example, the third General
`Plastic factor: “[W]hether at the time of filing of the second petition the
`petitioner already received the patent owner’s preliminary response to the
`first petition or received the Board’s decision on whether to institute review
`in the first petition.” General Plastic, Paper 19 at 9. Petitioner could not
`have had the benefit of Patent Owner’s preliminary response or the Board’s
`decision before filing because the two petitions were filed on the same day.
`Likewise, the fifth factor (whether the petitioner provides adequate
`explanation for the time elapsed between the filings of multiple petitions) is
`not applicable here as there is no time lapse.
`
`More pertinent to our analysis is the TPGU’s guidance that “one
`petition should be sufficient to challenge the claims of a patent in most
`situations,” although in certain “rare” situations two petitions by a petitioner
`may be needed. TPGU, 26. Again, the concern is that parallel petitions
`“may place a substantial and unnecessary burden on the Board and the
`patent owner and could raise fairness, timing, and efficiency concerns.” Id.
`
`11
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`

`IPR2019-01470
`Patent 6,836,654 B2
`We also rely on the TPGU’s guidance that when filing parallel petitions,
`“the petitioner should . . . identify . . . a succinct explanation of the
`differences between the petitions, why the issues addressed by the
`differences are material, and why the Board should exercise its discretion to
`institute additional petitions.” Id. at 27.
`
`We find that Petitioner does not provide a sufficient explanation that
`persuades us to exercise our discretion to institute multiple, parallel
`petitions. Rather, Petitioner asserts that “[i]t is possible that the Board will
`determine that corresponding structure is lacking in the [S]pecification for
`the functions recited by claims 1–9.”6 Pet. 6 (emphasis added). Notably,
`Petitioner does not identify any legitimate concern or argument that would
`support such a possibility. See generally id. Nor do we glean any other
`arguments in the Petition supporting a legitimate concern that we may
`determine that the ’654 patent’s Specification fails to disclose corresponding
`structure. For example, Petitioner’s statements that (i) it “does not waive
`any argument in any litigation that claim terms in the ’654 patent are
`indefinite,” or (ii) its table identifies “the disclosed ‘structure’ most likely
`corresponding to the means-plus-function limitations of claims 1–9,” do not
`evidence any legitimate concern or articulated argument that we might find
`that the ’654 patent’s Specification lacks corresponding structure. Id. at 12
`(emphasis added). Moreover, if the mere possibility (without more) that the
`Board may find a lack of corresponding structure was sufficient justification
`
`
`6 We understand Petitioner’s argument to be directed to the issue of
`indefiniteness, which we cannot address in an inter partes review. E.g.,
`Oticon Med. AB v. Cochlear Bone Anchored Sols. AB, IPR2017-01018,
`Paper 52 at 14 n.9 (PTAB Aug. 21, 2018) (“[W]e may not cancel a claim in
`an inter partes review by finding that claim indefinite.”) (citing Cuozzo, 136
`S. Ct. at 2141–42).
`
`12
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`IPR2019-01470
`Patent 6,836,654 B2
`for filing parallel petitions, then parallel petitions would be justified against
`any patent employing means-plus-function claim limitations. We do not
`understand the TPGU to provide such guidance.7 See TPGU, 26–27.
`
`Secondly, we do not find persuasive Petitioner’s argument that “no
`claim is being challenged in both petitions,” and we “should give
`consideration to all challenged claims.” Pet. 7. Such reasoning would
`justify as many petitions as there are claims in a patent, which is untenable.
`Notably, Petitioner does not argue that Patent Owner “has asserted a large
`number of claims in litigation,” which is a listed example in the TPGU that
`may necessitate parallel petitions. See id. at 6–7; TPGU 26. To the
`contrary, according to the Petition, none of the claims challenged in this
`Petition are “being asserted against Petitioner in the underlying district court
`litigation.” Pet. 6.
`
`Accordingly, based on our analysis above, we exercise our discretion
`under § 314(a) to deny institution of this Petition.
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied and no trial is instituted.
`
`
`
`
`
`7 We do not mean to suggest that an explanation that clearly articulates
`legitimate concerns regarding whether sufficient corresponding structure is
`disclosed in a challenged patent’s Specification cannot serve to justify the
`exercise of our discretion to institute on multiple, parallel petitions.
`
`13
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`

`IPR2019-01470
`Patent 6,836,654 B2
`PETITIONER:
`
`Todd M. Siegel
`Andrew M. Mason
`John M. Lunsford
`Joseph T. Jakubek
`KLARQUIST SPARKMAN, LLP
`todd.siegel@klarquist.com
`andrew.mason@klarquist.com
`john.lunsford@klarquist.com
`joseph.jakubek@klarquist.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
`
`
`14
`
`