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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`IPR2019-01470
`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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`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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`
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`IPR2019-01470
`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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`IPR2019-01470
`U.S. Patent 6,836,654
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`Table of Contents
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`
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`I.
`
`II.
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`INTRODUCTION .................................................................................... 1
`
`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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`VI.
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`THE BOARD SHOULD EXERCISE DISCRETION TO
`DENY INSTITUTION ON THIS CUMULATIVE PETITION .............. 3
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`THE PETITION SHOULD BE DENIED FOR FAILING TO
`JUSTIFY FILING MULTIPLE, CONCURRENT PETITIONS
`ON THE ’654 PATENT ........................................................................... 6
`
`PETITIONER DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM .......................................................................... 8
`
`A.
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`The Level of Ordinary Skill in the Art ........................................... 9
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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 .................................................... 10
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`VII.
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`CONCLUSION ....................................................................................... 14
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`ii
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`IPR2019-01470
`U.S. Patent 6,836,654
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`
`I.
`
`INTRODUCTION
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`Uniloc 2017 LLC (“Uniloc” or “Patent Owner”) submits this Preliminary
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`Response to Petition IPR2019-01470 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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`Microsoft Corporation (“Petitioner”). The instant Petition is defective for at least
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`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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`IPR2019-01470
`U.S. Patent 6,836,654
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`
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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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`IPR2019-01470
`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.
`
`No. 6,836,654 (EX1001).
`
`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
`
`
`Case Number
`2-18-cv-00493
`
`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. THE BOARD SHOULD EXERCISE DISCRETION TO DENY
`INSTITUTION ON THIS CUMULATIVE PETITION
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`Petitions challenging claims 1–9 (IPR2019-01218) and claims 10–20
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`(IPR2019-01219) of the ’654 patent were filed by Samsung Electronics America,
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`Inc. on June 19, 2019. Whether or not the Board institutes review in IPR2019-01218
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`3
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`IPR2019-01470
`U.S. Patent 6,836,654
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`(“Samsung IPR”), which challenges the same claims as the instant Petition, the
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`Petition in this case should be denied as cumulative of the Samsung IPR under 35
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`U.S.C. § 325(d).
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`The Board may exercise its discretion “to deny a petition when ‘the same or
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`substantially the same prior art or arguments previously were presented to the
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`Office.’” NHK Spring Co., Ltd., v Intri-Plex Techs., Inc., IPR2018-00752, slip op.
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`at 11 (PTAB Sept. 12, 2018) (Paper 8) (precedential). The Board considers several
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`non-exclusive factors in deciding whether to deny a petition under § 325(d),
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`including: (a) the similarities and material differences between the currently and
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`previously asserted art; (b) the cumulative nature of the currently asserted art with
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`respect to the previously asserted art; (c) the extent to which the asserted art was
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`previously considered; (d) the overlap between the currently and previously
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`presented patentability challenges; (e) whether Petitioner has pointed out any error
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`in the previously presented patentability challenges; and (f) the extent to which
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`additional evidence and facts presented in the Petition warrant reconsideration of the
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`previously asserted art or patentability challenges. Id. at 11–12 (citing Becton,
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`Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, slip op. at 17–18
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`(Paper 8) (PTAB Dec. 15, 2017) (informative, precedential as to § III.C.5)).
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`Despite an opportunity to do so in its Petition, Petitioner has not sufficiently
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`addressed the NHK Spring / Becton, Dickinson factors, which weigh in favor of
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`4
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`IPR2019-01470
`U.S. Patent 6,836,654
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`denial of institution here.
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`Factors (a) and (b) pertain to the similarities and differences between the prior
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`art relied upon in the Samsung IPR and this proceeding filed by Microsoft. Petitioner
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`acknowledges that it relies on the Nokia manual that was relied on in the Samsung
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`IPR, and states only that “it presents that art in a different light and combines it with
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`other art not cited in the Samsung Petition.” Pet. 5. Petitioner also states that it
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`“presents a ground based on Barvesten and Schultz, neither of which were even cited
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`in the Samsung petitions.” Id. The Petition does not, however, provide any specific
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`reasoning to support the argument. Petitioner’s bare contentions are insufficient to
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`show that any of the additional references present non-cumulative challenges to
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`claims 1–9 of the ’654 patent. See Medtronic, Inc. v. NuVasive, Inc., Case IPR2014-
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`00487, slip op. at 6 (Paper 8) (Sept. 11, 2014) (informative) (denying institution,
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`explaining in part that “[w]hile Petitioner argues that the grounds are not redundant
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`to those instituted on in the ’506 Proceeding, Petitioner does not provide any specific
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`reasoning to support that argument, other than to state that the grounds are based on
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`different prior art references.”); Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd.,
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`Case IPR2013-00324, slip op. at 6 (Paper 19) (Nov. 21, 2013) (informative) (“IBS
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`does not distinguish any teaching present in Odedra that is lacking from Ju, Tsien,
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`or any of the other references cited in the 128 Petition.”).
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`Factors (c) and (d) pertain to the similarities and differences in the arguments
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`5
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`IPR2019-01470
`U.S. Patent 6,836,654
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`raised in the Samsung IPR and this case, and factors (e) and (f) pertain to whether
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`Microsoft’s Petition adds any additional evidence, corrects any errors, or better
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`explains any of the grounds raised in the Samsung IPR. As with factors (a) and (b),
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`Petitioner provides no more explanation than that additional art is relied upon.
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`Petitioner does not identify any shortcoming of the references in the Samsung IPR
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`that the additional references are relied upon to overcome. Petitioner also does not
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`point out any error in the previously presented patentability challenge.
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`In sum, for the reasons stated above, NHK Spring factos (a) through (f) and
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`Petitioner’s lack of explanation on these factors favors denial of Microsoft’s petition,
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`which relies on substantially the same prior art and raises substantially the same
`
`arguments raised in the Samsung IPR. Accordingly, the Board should exercise its
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`discretion under 35 U.S.C. § 325(d) to deny the Petition.
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`V. THE PETITION SHOULD BE DENIED FOR FAILING TO JUSTIFY
`FILING MULTIPLE, CONCURRENT PETITIONS ON THE ’654
`PATENT
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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, Barvesten, Schultz, and Martino, in IPR2019-01470, and
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`6
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`IPR2019-01470
`U.S. Patent 6,836,654
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`(2) claims 10–20 based on similar grounds including Nokia, Barvesten, and Schultz,
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`in IPR2019-01471. As the Board recognized in the July 2019 Trial Practice Guide
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`Update:
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`Based on the Board’s prior experience, one petition should be
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`sufficient to challenge the claims of a patent in most situations. Two or
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`more petitions filed against the same patent at or about the same time
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`(e.g., before the first preliminary response by the patent owner) may
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`place a substantial and unnecessary burden on the Board and the patent
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`owner and could raise fairness, timing, and efficiency concerns. See 35
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`U.S.C. § 316(b). In addition, multiple petitions by a petitioner are not
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`necessary in the vast majority of cases. To date, a substantial majority
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`of patents have been challenged with a single petition.
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`Trial Practice Guide Update, 26 (July 2019).
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`This is not a “rare” case in which “more than one petition may be necessary,
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`including, for example, when the patent owner has asserted a large number of claims
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`in litigation or when there is a dispute about priority date requiring arguments under
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`multiple prior art references.” Id. Petitioner argues that its multiple, concurrent
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`petitions challenge different claims, and that this is not a case in which Petitioner
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`“filed six separate petitions challenging claims 1-28 of the same patent.” Pet. 6–7.
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`Neither excuse justifies Petitioner’s actions in this case. As to the first argument,
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`the Trial Practice Guide Update provides no indication that merely dividing claims
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`between two petitions justifies filing multiple petitions. As to the second argument,
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`7
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`IPR2019-01470
`U.S. Patent 6,836,654
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`the Trial Practice Guide Update counsels that “one petition should be sufficient to
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`challenge the claims of a patent in most situations” and recognizes that two or more
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`may be a burden. Just because the two petitions here are not as extreme as six does
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`not justify Petitioner’s filing of multiple, concurrent petitions on the ’654 patent. At
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`least one of the petitions should be denied on at least this basis.
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`VI. 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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`8
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`
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`IPR2019-01470
`U.S. Patent 6,836,654
`
`
`Ground
`
`Claims
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`Reference(s)
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`1–4 and 7–9
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`Nokia1 and Barvesten2
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`5 and 6
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`Nokia, Barvesten, and Martino3
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`1–4 and 7–9
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`Barvesten and Schultz4
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`5 and 6
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`Barvesten, Schultz, and Martino
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`1
`
`2
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`3
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`4
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`
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`A. The Level of Ordinary Skill in the Art
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`Given that Petitioner fails to meet its burden of proof in establishing
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`obviousness when applying its own definition of a person of ordinary skill in the art
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`(“POSITA” or “POSA”), Patent Owner does not offer a competing definition for
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`POSITA at this preliminary stage, though it reserves the right to do so in the event
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`that trial is instituted.
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`B. Claim Construction
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`“In an inter partes review proceeding, a claim of a patent . . . shall be
`
`
`
` 1
`
` EX1003, Owner’s Manual for the Nokia 9000i Communicator.
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`2 EX1006, U.S. Pat. No. 5,940,773.
`
`3 EX1012, U.S. Pat. No. 5,987,103.
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`4 EX1008, “Communication Device Inactivity Password Lock.”
`
`9
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`
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`IPR2019-01470
`U.S. Patent 6,836,654
`
`construed using the same claim construction standard that would be used to construe
`
`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
`
`skill in the art and the prosecution history pertaining to the patent.” 37 C.F.R.
`
`§ 42.100(b).
`
`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-
`
`function or step-plus-function limitation as permitted under 35 U.S.C. 112(f), the
`
`construction of the claim must identify the specific portions of the specification that
`
`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.
`
`1.
`
`Petitioner Does Not Meet Its Burden to Address How the
`Claims Are to Be Construed and Identify Corresponding
`Structure
`
`The Petition contends claims 1–9 “most likely recite means-plus-function
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`limitations.” Pet. 12. Petitioner’s equivocation fails to address its burden to show
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`“[h]ow the challenged claim is to be construed.” 37 C.F.R. § 42.104(b)(3) (emphasis
`
`added).
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`Petitioner states that it “does not waive any argument in any litigation that
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`claim terms in the ’654 patent are indefinite.” Pet. 12. In order to preserve its
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`indefiniteness argument, which cannot be presented in an IPR, the Petition provides
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`10
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`IPR2019-01470
`U.S. Patent 6,836,654
`
`a table with citations to the Specification, stating that the table “identifies the
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`disclosed ‘structure’ most likely corresponding to the means-plus-function
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`limitations of claims 1–9.” Id. (emphasis added). The approach taken by Petitioner
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`suffers from at least two fatal flaws.
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`First, by implying an intent to challenge the claims on indefiniteness grounds,
`
`including the word “structure” in quotes, and purporting to identify the structure
`
`“most likely” corresponding to the means-plus-function limitations, Petitioner again
`
`fails to set forth how the challenged claims are to be construed as required by 37
`
`C.F.R. § 42.104. In other words, to the extent the Petition provides a construction
`
`of these claims, it is purely hypothetical, and not Petitioner’s view of “[h]ow the
`
`challenged claim[s] [are] to be construed.” Such a hypothetical construction is no
`
`different than Petitioner taking the position that the specification does not disclose
`
`corresponding structure to the claimed functions. Where Petitioner takes the
`
`position that the specification does not disclose corresponding structure to the
`
`claimed functions, the Board “merely determine[s] that Petitioner has not adequately
`
`identified the structure(s), if any, disclosed” in the patent that correspond to the
`
`functions. Intex Recreation Corp. v. Team Worldwide Corp., Case IPR2019-00243,
`
`slip op. at 19 (PTAB May 8, 2019) (Paper 7). “When a petitioner has not adequately
`
`identified a construction for a means-plus-function limitation, the Board typically
`
`denies institution . . . .” Id. (citing Becton, Dickinson & Co. v. Baxter Int’l, Case
`
`11
`
`
`
`IPR2019-01470
`U.S. Patent 6,836,654
`
`IPR2018-01741, slip op. at 13–14 (PTAB Mar. 18, 2019) (Paper 8) (collecting
`
`cases)). “Institution is denied in these situations because the basis for the
`
`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. Patent
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`Owner need not argue against a hypothetical, “most likely” claim construction
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`position, and the Board should deny the Petition based on Petitioner’s apparent
`
`position that the specification does not disclose corresponding structure to the
`
`claimed functions.
`
`Second, Patent Owner cannot decipher even a hypothetical claim construction
`
`from the Petition. There is no column in the table providing Petitioner’s proposed
`
`construction of the claim limitations. Rather, the table consists primarily of bare
`
`cites to the specification. The rules do not require merely a list of citations, but rather
`
`“the construction of the claim must identify the specific portions of the specification
`
`that describe the structure, material, or acts corresponding to each claimed function.”
`
`37 C.F.R. § 42.104(b)(3) (emphasis added). Citations to the Specification are
`
`merely one part of that construction, not the construction itself. For this additional
`
`reason, the Petition does not address how the challenged claims are to be construed,
`
`as required. Petitioner’s invitation for Patent Owner and the Board to review the
`
`cited portions of the Specification to find how the challenged claims are to be
`
`construed, including the corresponding structure, fails to meet Petitioner’s burden to
`
`12
`
`
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`IPR2019-01470
`U.S. Patent 6,836,654
`
`
`set forth how the challenged claims are to be construed.
`
`Even considering the Petition’s discussion of specific claim limitations, for
`
`example that “the blocking means of claim 1 corresponds to the second blocking
`
`state, K11,” Pet. 20, as noted above, Petitioner has not taken the position that this is
`
`how the claim “is to be construed” in accordance with 37 C.F.R. § 42.104(b)(3).
`
`Rather, by implying an intent to challenge the claims on indefiniteness grounds,
`
`including the word “structure” in quotes, and purporting to identify the structure
`
`“most likely” corresponding to the means-plus-function limitations, Pet. 12,
`
`Petitioner is taking the position that the specification does not disclose
`
`corresponding structure to the claimed functions. As noted above, where Petitioner
`
`takes the position that the specification does not disclose corresponding structure to
`
`the claimed functions, the Board should “merely determine that Petitioner has not
`
`adequately identified the structure(s), if any, disclosed” in the patent that correspond
`
`to the functions, and deny institution. Intex, IPR2019-00243, Paper 7, at 18.
`
`Petitioner’s implicit contention that the “means” recited in the challenged claims
`
`render these claims indefinite is appropriately determined only in a proceeding that
`
`encompasses such issues, and neither Patent Owner nor the Board need address
`
`arguments based on hypothetical claim constructions inconsistent with Petitioner’s
`
`apparent indefiniteness position. See id. at 21 (denying institution based on
`
`anticipation grounds because “[i]n an anticipation analysis, the step of construing a
`
`13
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`
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`IPR2019-01470
`U.S. Patent 6,836,654
`
`claim limitation precedes the step of comparing the construed limitation to the prior
`
`art,” and “[b]y purporting to perform the second step while affirmatively taking the
`
`position that the first step needs to be performed, but cannot be performed, Petitioner
`
`has not provided an adequate anticipation analysis to support institution.”).
`
`VII. CONCLUSION
`
`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.5
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`Date: November 13, 2019
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`
`
`
`
`Respectfully submitted,
`
`By: /Ryan S. Loveless/
`Ryan S. Loveless; Reg. No. 51,970
`Attorney for Patent Owner
`
`
`
`
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` Patent Owner does not concede, and specifically denies, that there is any legitimacy
`
`
`
` 5
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`to any arguments in the instant Petition that are not specifically addressed herein.
`
`14
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`
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`IPR2019-01470
`U.S. Patent 6,836,654
`
`
`
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`CERTIFICATE OF COMPLIANCE
`
`Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies that the foregoing
`
`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: November 13, 2019
`
`
`
`
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`Respectfully submitted,
`
`
`
`
`
`By: /Ryan S. Loveless/
`Ryan S. Loveless; Reg. No. 51,970
`Attorney for Patent Owner
`
`i
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`
`
`IPR2019-01470
`U.S. Patent 6,836,654
`
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`CERTIFICATE OF SERVICE
`
`
`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that an
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`electronic copy of the foregoing Patent Owner Preliminary Response was served,
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`along with any accompanying exhibits that were filed with the paper via the
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`PTAB E2E system, via email to Petitioner’s counsel at the following addresses
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`identified in the Petition’s consent to electronic service:
`
`Todd M. Siegel, Reg. No. 73,232
`todd.siegel@klarquist.com
`Andrew M. Mason, Reg. No. 64,034
`andrew.mason@klarquist.com
`John M. Lunsford, Reg. No. 67,185
`john.lunsford@klarquist.com
`Joseph T. Jakubek, Reg. No. 34,190
`joseph.jakubek@klarquist.com
`
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`Date: November 13, 2019
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`
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`Respectfully submitted,
`
`By: /Ryan S. Loveless/
`Ryan S. Loveless; Reg. No. 51,970
`Attorney for Patent Owner
`
`
`ii
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