Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper # 19
`Entered: 01/25/2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`___________
`
`IPR2019-01471
`Patent 6,836,654 B2
`___________
`
`Record of Oral Hearing
`Held: November 10, 2020
`
`
`
`
`Before JENNIFER S. BISK, JOHN D. HAMANN, and
`NEIL T. POWELL, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper # 19
`Entered: 01/25/2021
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`___________
`
`IPR2019-01471
`Patent 6,836,654 B2
`___________
`
`Record of Oral Hearing
`Held: November 10, 2020
`
`
`
`
`Before JENNIFER S. BISK, JOHN D. HAMANN, and
`NEIL T. POWELL, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-01471
`Patent 6,836,654 B2
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`TODD M. SIEGEL, ESQUIRE
`Klarquist Sparkman LLP
`One World Trade Center
`Suite 1600
`Portland, OR 97204
`
`
`ON BEHALF OF PATENT OWNER:
`
`
`
`
`
`
`BRIAN KOIDE, ESQUIRE
`Etheridge Law Group
`1100 Queensborough Blvd.
`Suite 200
`Mount Pleasure, SC 29464
`
`
`The above-entitled matter came on for hearing on Tuesday,
`November 10, 2020, commencing at 10:00 a.m., EST, at the U.S. Patent and
`Trademark Office, by video/by telephone, before Julie Souza, Notary Public.
`
`
`
`
`
`2
`
`
`
`IPR2019-01471
`Patent 6,836,654 B2
`
`
`P R O C E E D I N G S
` - - - - -
`JUDGE HAMANN: Good morning. We are here for IPR 2019-
`
`01471, Microsoft Corporation v. Uniloc 2017 L.L.C. I am Judge Hamann.
`Also on the panel today are Judges Bisk and Powell. I would like to begin
`by having the parties introduce themselves. So first who is present on behalf
`of Petitioner, please?
`
`MR. SIEGEL: Todd Siegel from Klarquist Sparkman on behalf of
`Petitioner Microsoft.
`
`JUDGE HAMANN: Good morning. Is anyone else present from
`Petitioner today on the call?
`
`MR. SIEGEL: Not with me, Your Honor.
`
`JUDGE HAMANN: Okay. But no one's present from another
`location for Petitioner, correct?
`
`MR. SIEGEL: I sent out a public line information. I do not know if
`anybody has dialed in.
`
`JUDGE HAMANN: Fair enough. Thank you, Mr. Siegel. And for
`Patent Owner, who is present on today's video call for Patent Owner, please?
`
`MR. KOIDE: Good morning, Your Honor. This is Brian Koide of
`the Etheridge Law Group for Patent Owner Uniloc 2017 L.L.C. With me on
`the telephone public line today is Mr. Steve Peterson who is Uniloc's general
`counsel.
`
`JUDGE HAMANN: Good morning to everyone and as the parties
`have already noted there is a public access line, audio line so to the extent
`members of the public have called in to listen to today's hearing, we
`
`
`3
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
`
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`IPR2019-01471
`Patent 6,836,654 B2
`
`welcome them.
`
`The printed Oral Hearing Order, each side will have 60 minutes to
`present its arguments. We're going to, because Petitioner bears the burden
`of unpatentability, we'll begin with Petitioner followed by Patent Owner's
`response, followed by any time reserved by Petitioner for rebuttal and then
`finishing with time reserved by Patent Owner for surrebuttal. I will
`endeavor to track time and provide appropriate warnings on times, but you
`may find it helpful to also track your own time during the presentation.
`
`As we of course are doing this video conferencing, I suggest it'll
`provide and make it easier for the panel as well as for the record if before
`speaking referencing a particular slide or part of the record, please identify
`which slide by slide number or appropriate cite to where in the record is
`being referred to. I will also ask when you're not speaking to mute your mic
`so we don't have unnecessary noise. With that, I'd ask the Petitioner how
`much time would it like to reserve for rebuttal?
`
`MR. SIEGEL: Twenty minutes please, Your Honor.
`
`JUDGE HAMANN: Twenty minutes, okay. Thank you Mr. Siegel.
`You may proceed when you're ready.
`
`MR. SIEGEL: May it please the Board. We are here today to discuss
`why the petition proves that claims 10 through 20 of U.S. patent No.
`6,836,654, we'll refer to it as the '654 patent, why those claims are
`unpatentable as obvious over the prior art. The '654 patent is titled "Anti-
`theft protection for a radiotelephony device" and on slide 2 of Petitioner's
`demonstratives we see the two grounds. They're both obviousness grounds
`challenging claims 10 through 20. Ground 1 is the Owner's Manual for the
`
`
`4
`
`
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`IPR2019-01471
`Patent 6,836,654 B2
`
`Nokia mobile device combined with the Barvesten patent and ground 2 is
`the Barvesten patent as the lead reference combined with a Motorola
`technical disclosure bulletin by Schultz.
`Perhaps the best way to summarize the subject matter of the '654
`patent is to look at slide, look at claim 10 and we have that on slide 3. So
`claim 10 of the '654 patent, it has three primary steps. It's a method of
`protecting the mobile device and the three primary steps are verifying a user
`identification module inside the device is linked to the mobile device, then
`detecting a period of inactivity of the mobile device during normal operation
`of the device, and then preventing the normal operation of the mobile device
`in response to those two steps.
`JUDGE HAMANN: Mr. Siegel, what steps, if any, of method claim
`10 does Petitioner believe are in dispute?
`MR. SIEGEL: Right. We have highlighted on slide 3 the only
`limitation that Patent Owner has indicated that speaksto that, and so it's the
`verifying limitation. So we have that highlighted, so that is what we will be
`speaking primarily about. I will note that the detecting a period of inactivity
`step is really a limitation that was the focus of the prosecution history and
`was the reason why the patent was allowed. But today, the only limitation in
`dispute is the verifying limitation that we have highlighted.
`And on slide 4 we show the highlighted passages on slide 4 of what
`we submit are pertaining to the highlighted limitation, the verifying
`limitation on slide 3, and so the '654 patent a detailed description, it's just a
`couple of columns long and what we have highlighted here on slide 4 are the
`passages that we think are most pertinent to our discussion today. Just
`
`
`5
`
`
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`IPR2019-01471
`Patent 6,836,654 B2
`
`quickly, basically the '654 patent is describing its alleged invention in the
`context of a user just unlocking the mobile device with an identification
`module that is inside the device, and so what we have highlighted here there
`at the bottom of column 2, 65 through column 3, line 5 is the discussion in
`the '654 patent about how the device is locked with the module and then
`automatically linking that module to the device.
`So basically once the user has locked then the module is automatically
`linked to the device by reading the IMSI number, which is a unique
`identification number of the module, so the IMSI number is read from the
`module and is stored in the random access memory of the device, and so that
`is how the patent describes a module being linked to the device, and then it
`goes on at the bottom and says well, the last highlighted passage there at
`column 3, lines 9 through 12, this is where the module is verified according
`to the claim 10 step. All it says is,
`"One looks whether the identification module which is placed inside
`the device is the one that is linked to the device."
`And so that's really the discussion of how a module is linked and then
`how the module inside the device is verified, and then of course these
`passages do refer to Figure 3. Figure 3 is shown on the right of slide 4. It's
`just a flow chart of certain steps. You have decision nodes and we have
`boxed in red the two steps that are referenced in the passages there
`highlighted in column 3. The K2 box is simply a user choosing to lock or
`unlock the device and then the K4 box, which is the IMSI decision node,
`basically all that is is showing that there is a process comparing the IMSI
`number of the module that's on the device, comparing it to the IMSI number
`
`
`6
`
`
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`IPR2019-01471
`Patent 6,836,654 B2
`
`that is stored in the device. So that's really the disclosure of the key
`limitation at issue here today, and on slide 5 we show what the disputed
`issues are and so --
`JUDGE HAMANN: Mr. Siegel, let me if I could and I want to make
`sure I understand some of what's shown here on slide 5, and certainly part of
`this seems to be an identification of some District Court claim construction
`orders, is that a fact?
`MR. SIEGEL: That's right, that's right.
`JUDGE HAMANN: I want to, I'm sorry, I want to understand what
`District Courts have construed claims -- I'm sorry. terms of this patent, I
`want to make sure I understand the universe of that, so which District Courts
`have construed claims of this patent?
`MR. SIEGEL: Sure. So earlier this year there were some District
`Court claim constructions and this is, you know, after we filed the petition.
`So there was a case against Motorola that issued a claim construction
`decision and there were cases against Google and Samsung that issued a
`claim constructions and I just referred to it as the Google claim construction
`because that was, the Google and Samsung was in front of the same judge
`and the claim construction order was issued on the same date by the same
`judge with the same claim constructions that are pertinent. So the Motorola
`construction differed from the Google/Samsung construction and then just
`and maybe two weeks ago -- I'll back up. The Motorola case was in the
`District of Delaware, the Google/Samsung case was in the Eastern District
`of Texas and then I believe it was about two weeks ago the Western District
`of Washington in the HTC litigation issued another claim construction order
`
`
`7
`
`
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`IPR2019-01471
`Patent 6,836,654 B2
`
`and all of these opinions addressed several terms, many of which are
`pertinent to the proceeding today. Really the only terms that were construed
`by these various cases that were pertinent is they did talk about the verifying
`limitation and then they also talked about this, a phrase "linked to user
`identification" module.
`JUDGE HAMANN: But Mr. Siegel, you said they talked about the
`verifying step, I believe this -- to paraphrase what you just said. What's the -
`- which District Court decisions, if any, construed the verifying step?
`MR. SIEGEL: Yes. I believe, again I have slides on this. The
`Motorola, I'm on slide 11, so the Motorola decision addressed it and said
`verifying limitation no express construction was needed and then it just went
`on and discussed the phrase "linked to user identification module," and I
`should note that "linked to user identification module" isn't actually in the
`verifying limitation itself. It does show up later in claim 10 and claim 20,
`but it's not in the verifying limitation itself.
`The Google/Samsung, I have that on slide 16 and here they did
`actually have a construction for the verifying limitation here on slide 16
`confirming that a user identification module inside the mobile
`radiotelephony device from its normal operation of the mobile
`radiotelephony device. But then the Google court also separately construed
`this "linked to user identification module." So, but the verifying limitation
`by the Google court and the Motorola court is pretty consistent in its plain
`and ordinary reading of the claim language itself. The HTC decision which
`came much later and was just recently submitted, I don't believe they
`actually -- I don't believe the judge actually addressed the verifying step. It
`
`
`8
`
`
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`IPR2019-01471
`Patent 6,836,654 B2
`
`did address this "linked to user identification module."
`JUDGE HAMANN: In what way did the HTC District Court order
`address the "linked to user identification module"?
`MR. SIEGEL: So it adopted the same construction that the
`Google/Samsung court did which differs from the construction given to that
`phrase by the Motorola court.
`JUDGE HAMANN: Okay. And then across the Google/Samsung
`and HTC District Court orders is the reasoning for the construction they
`reached as to "linked to user identification module" different than any of
`those decisions?
`MR. SIEGEL: I would say it's not different. They're not verbatim but
`I think they're consistent and I'm happy to address that now or actually go to
`the presentation.
`JUDGE HAMANN: Oh, I'm just trying to understand. It seems to me
`the construction of the verifying step is certainly an important issue in the
`parties' dispute and at least initially Petitioner put forward a ordinary
`meaning construction for that and obviously since then, or potentially if all
`they were to draft in your petition, you know, is three or four District Courts
`have construed the limitations in claim 10. Guess I'm trying to understand
`what Petitioner's position is, just make sure I understand what Petitioner's
`position is as to what the construction should be for the verifying limitation
`as well as the "linked to user identification module" limitation.
`MR. SIEGEL: Sure. And I'll note, you know, that back on slide 5
`and I note a bullet that Patent Owner had its own separate interpretation in
`its Patent Owner response which is another disputed issue in another, you
`
`
`9
`
`
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`IPR2019-01471
`Patent 6,836,654 B2
`
`know, potential claim construction issue and so in our Reply we made clear
`that, you know, we still submit that really there no express construction
`necessary because frankly the claim language, a plain and ordinary reading
`of the claim language is sufficient and frankly the, whatever the scope of
`that limitation is it has to encompass the Barvesten prior art reference
`because the, and I'll show this, the Barvesten reference it uses nearly
`identical language to what we talked about here on slide 4 as far as what the
`'654 patent discloses with respect to these steps and so that's why we think
`that frankly, in view of the prior art, and in view of the claim language, it's
`so clear that no express construction is really necessary.
`I would say that the Motorola construction is probably perhaps the
`closest to the, you know, plain and ordinary meaning and then the
`Google/Samsung/HTC claim construction, its interpretation of this "linked
`to user identification module" brings in this limitation that perhaps, you
`know, the question is -- the answer to your question might depend on the
`interpretation of the interpretation. I don't really think it's necessary. I don't
`really think that express construction is necessary and I don't really think
`that this limitation that these, that Patent Owner seems to be relying on now
`in its Sur-Reply is appropriate claim construction and so, you know, the
`bottom line is that the construction that, you know, that is applied to this
`verifying limitation it must encompass the Barvesten because the disclosure
`in Barvesten is nearly identical to the '654.
`JUDGE HAMANN: Well if I could, counsel, understand some of
`what you said, I believe you said the Motorola court didn't find the need to
`construe the verifying step?
`
`
`10
`
`
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`IPR2019-01471
`Patent 6,836,654 B2
`
`
`
`
`MR. SIEGEL: Correct.
`JUDGE HAMANN: Okay. But you also said the Motorola court's
`construction is the most similar I believe to what it should be, for lack of a
`better phrase. That's paraphrasing you and certainly not nearly as articulate
`as you stated it, but that seems to me to be incongruent so it seems like we're
`conflating, you know, the verifying step limitations constructions and
`potentially the construction for the "linked to user identification module"
`and I'm trying to understand whether both of those terms are now in dispute
`and need to be addressed or what the answerto that is.
`MR. SIEGEL: Well you're right, and, you know, this came up
`because the way that the Patent Owner I think presented in its response, it
`argues the verifying limitation needed to be further limited by restricting the
`use of the user identification module only to the device that it's linked with
`and so in the Patent Owner response they didn't even really address any of
`these claim constructions from the courts or the "linked to user identification
`module" and, but what I was getting at with the Motorola is that the way it
`construes "linked to user identification module" is simply to mean an
`authorized user identification module that permits normal operation of the
`device, and so I'm not exactly sure where the Court got the word authorized
`but, you know, I think this is pretty -- but this construction it seems to me it's
`plain and ordinary language. It's basically a user identification module that
`permits normal operation of the device and I'll go ahead and add that.
`I mean the appropriate claim construction here is you start with the
`language of the claims and the language of the claims here are directed at
`permitting and preventing normal operation of the device and the language
`
`
`11
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`IPR2019-01471
`Patent 6,836,654 B2
`
`of the claims distinguish between a linked and an unlinked module and so
`the claims themselves actually take care of when operation is permitted to be
`normal and when it is to be prevented by just simply, you know, making the
`determination whether or not the module inside the device is linked or is
`unlinked, and so that's why I think that the Motorola language here seems to
`be consistent with the claim language without importing anything in from
`the specification.
`JUDGE HAMANN: Thank you.
`MR. SIEGEL: So, and so just quickly if I could go to slide 8 and
`again here we have element [10.2] from the petition. This is the verifying
`limitation and we submit that under a plain reading the prior art satisfies this
`verifying limitation and we've highlighted here what we talked about
`previously, is this limitation really includes two aspects. It includes the
`linking aspect and then verifying whether or not the user identification
`module that is inside has been linked and we talked about these passages
`before but I wanted to show how similar the Barvesten reference is.
`On slide 10, so we have the '654 patent disclosure on the left and we
`talked about it, and on the right Barvesten does the exact same thing. It's
`talking about the --
`JUDGE HAMANN: If you could read the cites into the record that
`you're referring to.
`MR. SIEGEL: Right. So the Barvesten -- on slide 10, the Barvesten
`patent at column 4, lines 24 to 28, they're on the right of slide 10, upon
`starting up or activation of the phone, the SIM card communicates with the
`phone, the telephone and the SIM card communicate with each other, and
`
`
`12
`
`
`
`
`
`IPR2019-01471
`Patent 6,836,654 B2
`
`then the IMSI code for the SIM card is stored in memory of the phone. So
`that's just like the linking disclosed in the '654 patent and then moving down
`Barvesten column 4, lines 45 to 50, and I have underlined there in red,
`basically it's -- this is where a card is being checked for whether or not it's
`going to permit normal operation. It can -- the processes to compare the
`IMSI number of the card that's in the device so what's been stored in
`memory of the device and so, again, that's just like the '654 patent and so
`that's why we submit that under a plain reading the prior art satisfies this
`limitation and the scope of this limitation, the verifying limitation, has to
`encompass this Barvesten disclosure.
`JUDGE HAMANN: Under what construction are you referring to?
`MR. SIEGEL: Well, we submit that the prior art would satisfy under
`any of the Court's constructions whether it's a plain reading construction,
`whether it's the Motorola construction, and frankly, the Motorola
`construction is consistent with how the petition mapped the prior art. But
`we submit that even under the Google construction that the prior art still
`satisfies that and I can speak to that.
`JUDGE HAMANN: Please.
`MR. SIEGEL: So for instance -- but, yes. So for instance, I'm on
`slide 16, and this is the Google construction and the verifying limitation is
`simply confirming that a user identification module mounted inside the
`mobile radiotelephony device commences normal operation, and certainly
`that is consistent with how the petition mapped the prior art, and it's
`consistent with, you know, the Nokia and the Barvesten disclosures.
`I should add that with respect to ground 2 of the petition the only
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
`13
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`IPR2019-01471
`Patent 6,836,654 B2
`
`disputed issue is whether or not Barvesten satisfies this verifying limitation.
`There's one other issue with respect to ground 1 and the Nokia combination,
`with respect to ground 2 this is it and then so, but that's the Google claim
`construction. So it added this construction of "linked to user identification
`module" to say it's under identification module, that's the only one that
`permits normal operation of the device and that phrase is not in the verifying
`limitation and that said, it does show up in claim 10 later on. But we submit
`that when claim 10 refers to "linked user identification module," this is in
`the last step, the preventing the normal operation in response to the
`verification of the "linked user identification module," that the use of that
`phrase in claim 10 is referring back to whatever module was verified in the
`first step, and so the claim language itself does not require further
`construction or bringing in this notion of only one module that prevents
`normal operation.
`But that brings me to the question, what's the interpretation of the
`interpretation? Does this mean that, you know, at the time time that a
`module is in the device that there's only one module that permits normal
`operation? Well if that's all it is then sure, then certainly the prior art teaches
`that because there's only one module in the device at a time that's allowing
`the device to operate and therefore certainly the prior art teaches that and if
`that's consistent with, you know, how the petition mapped the prior art.
`But in the Sur-Reply of Patent Owner, Patent Owner seems to suggest
`that this limitation really means more. It means that there can only ever be
`one module ever that could ever be linked and permitting normal operation
`of the device and we actually in our Reply, we recognized that even though
`
`
`14
`
`
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`IPR2019-01471
`Patent 6,836,654 B2
`
`the Patent Owner did not, in its response, did not cite to, discuss or address
`any of the Court's, the various Courts' claim construction, it just came up
`with its own, but we recognized that the Board probably looked to these
`claim constructions decisions and so we actually put in evidence why, you
`know, even under a more narrow reading of this phrase suggesting that there
`could only be one module that permits normal operation we put evidence in
`with our Reply why the prior art nonetheless satisfies that claim
`construction.
`So, for instance, I'm jumping to slide 18 and so this is showing the
`Barvesten disclosure. There at column 2, lines 29 through 30 it recognizes
`that there can be (n) number of SIM cards essentially and so we submit that,
`well certainly (n) could be one and certainly when you first start off the
`device and you put in the first SIM card, at that point there is only one SIM
`card that permits normal operation of the device, and Dr. Houh, our expert,
`testified that Barvesten discloses the scenario where a single SIM card is
`linked to a particular device.
`And then on slide 19, additional disclosures from Barvesten, we were
`able to look at this to some extent, column 4, lines 24 to 38, again talks
`about a SIM card communicating with a device. So here there's just one
`SIM card that's communicating, but yes, it does recognize, Barvesten does
`recognize that there could be multiple SIM cards that would work with the
`device, but that Dr. Houh testified nonetheless, a skilled artisan would
`understand that Barvesten nonetheless teaches this scenario of just a single
`SIM card being links, and so if the construction really means that there can
`only ever be one SIM card that works with the device, we submit that a
`
`
`15
`
`
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`IPR2019-01471
`Patent 6,836,654 B2
`
`skilled artisan would nonetheless read the prior art in that way, and it would
`be the scenario where it would indeed only be one.
`JUDGE HAMANN: And Mr. Siegel, that's under -- that discusses
`really the Barvesten, correct?
`MR. SIEGEL: Yes right, and with respect to Nokia for ground 1,
`same thing. Here on slide 17 Dr. Houh's supplemental declaration said that
`so the Nokia manual actually notes, it recognizes that there could actually be
`up to five SIM cards that the device would recognize but Dr. Houh testified
`that a skilled artisan would understand that in many cases there would only
`be a single card that would ever be linked with the device and that just
`makes sense. It's common sense that you're not going to probably be trying
`to swap in cards and, you know, for instance if there's just -- if there's only
`one person that's using the phone and isn't like they're going to just be using
`one SIM card with the device.
`JUDGE HAMANN: And just for the record I think the testimony
`from Dr. Houh is it, if I'm pronouncing that correctly?
`MR. SIEGEL: That's right.
`JUDGE HAMANN: That you cite the, on slide 17, there's Exhibit
`1020 paragraph 6.
`MR. SIEGEL: Correct.
`JUDGE HAMANN: Okay, thank you.
`MR. SIEGEL: Yes, Your Honor. And I would note, I mean going
`back up to slide 9 where we show some disclosures of the Nokia reference.
`So the Nokia manual, it's also very similar to the '654 patent. It locks the
`device and it checks for a valid SIM card and this is from pages 81 and 82 of
`
`
`16
`
`
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`IPR2019-01471
`Patent 6,836,654 B2
`
`the Nokia manual, and there on the right the second paragraph it says, "if the
`SIM card has been changed and the new SIM card has not previously been
`used," at that point there's only one SIM card that permits normal operation.
`It goes on to say that the device will be locked until some additional lock
`code is supplied but at this point it's disclosing only one SIM card.
`JUDGE HAMANN: And Mr. Siegel, I'm probably going to
`paraphrase Patent Owner's argument poorly, but as I recall Patent Owner
`argues that the Nokia reference manual does not teach or disclose that it's the
`device itself that does the checking of the SIM card?
`MR. SIEGEL: Well that's definitely -- yes right, and that's why the
`Nokia doesn't go into those details and that's why we combined Nokia with
`Barvesten because Barvesten brings in those details of exactly how the card
`is linked to the device by storing the IMSI number in the memory and then
`how is the card actually checked or verified and it's by comparing that IMSI
`number, and so we did that first and that's why this if Barvesten satisfies it
`then game over whether it's ground 1 or ground 2.
`JUDGE HAMANN: Okay. So I want to make sure I understand you.
`So Petitioner agrees that Nokia does not teach the device checking the SIM
`card; is that fair?
`MR. SIEGEL: No, it's not. I mean we think that is suggested. We
`think that, I mean we think that this disclosure fairly suggests that it is
`indeed the device doing the checking when you read -- I mean it says, it's
`there on the right on slide 9. This security option checks whether the SIM
`card in the communicator has been changed. We think the most fair reading
`would be that it is, essentially the device is doing -- is performing that
`
`
`17
`
`
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`IPR2019-01471
`Patent 6,836,654 B2
`
`security option check.
`JUDG EHAMANN: Thank you. You're about ten minutes remaining
`in your 40 minutes.
`MR. SIEGEL: Right. Thank you, Your Honor. And so I will say
`that, you know, and then I guess in the Sur-Reply, I want to address some
`things in the Sur-Reply because Patent Owner brought up some things in the
`Sur-Reply that we think that are just simply wrong or new arguments and so
`on slide 20, Patent Owner seemed to accuse Petitioner of injecting a claim
`construction dispute and attacking the District Court's claim construction
`and even suggested that the parties briefedthe District Court's constructions.
`We attacked, in our Reply, the Petitioner attacked the Patent Owner
`interpretation which we submit has no support in the specification and Patent
`Owner didn't even seem to, you know, disagree with that in its Sur-Reply.
`But because the Patent Owner's interpretation does differ from Google's
`interpretation. The Google interpretation is basically, it's directed at limiting
`the use of the device and the Patent Owner's interpretation is limiting the use
`of the identification module. So that is what we attacked.
`But then on slide 21 Patent Owner brought up another argument for
`the first time arguing that the claim language is directed to what is permitted
`by the linked to limitation and that's -- Patent Owner cites nothing to support
`that. Again, this is a new argument brought up in the Sur-Reply. It has no
`support for that. The claim language is clear. We have it right here on slide
`21. Verifying the user identification module mounted inside the device is
`linked to the mobile device. It's not directed to what is permitted by the
`linked to. It's directed at verifying whether or not the module inside will
`
`
`18
`
`
`
`
`
`IPR2019-01471
`Patent 6,836,654 B2
`
`permit normal operation or not and to the extent that, you know, this what is
`permitted feature is disclosed in the '654 patent, it's not claimed and it's
`improper to import something like that into the claim scope. You can
`disclose features and functionality and not claim it and if you disclose
`something and don't claim it, that's dedicated to the public and so we submit
`that there's just no reason to import into this claim scope some concept of
`what is permitted when the claim language is clear on its face.
`And we would add that the claim language, it does a good job
`distinguishing between permitting operation, suspending operation, link
`module and unlinked module. I mean claim 16 for instance, it could have
`been claim 10, claim 16 says preventing the normal operation of the mobile
`telephony device in response to any unlinked user identification module
`deemed not inside the radiotelephony device and so if, you know, claim 10
`is directed at verifying that the module is linked. But claim 16 and other
`claims, claims 4 and claim 9, they expressly recite an unlinked module and
`what happens with an unlinked module, and if the Board is to consider this
`only one construction, well we submit that the only one construction doesn't
`mean it shouldn't be imported here because if the Patent Owner claimed any
`unlinked, in claim 16 and 20 and claim 9, the Patent Owner claimed any
`unlinked user identification module. So if the Patent Owner responded the
`claim only – there's only one module that could ever be linked and any other
`module in the world is unlinked, there would be no reason in claim 16 for
`instance to use the word unlinked. They could have just said any other
`module.
`Yes, so I mean as far as plaintiff's construction and the interpretation
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
`
`
`
`
`19
`
`
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
