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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION
`Petitioner
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`v.
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`UNILOC 2017 LLC
`Patent Owner
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`IPR2019-01471
`PATENT 6,836,654
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`PATENT OWNER RESPONSE TO PETITION
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`IPR2019-01471
`U.S. Patent No. 6,836,654
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`TABLE OF CONTENTS
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`EXHIBITS............................................................................................................ III
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`I.
`
`INTRODUCTION ....................................................................................... 1
`
`II.
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`THE ‘654 PATENT ..................................................................................... 1
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`III. RELATED PROCEEDINGS ...................................................................... 3
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`IV. LEVEL OF ORDINARY SKILL IN THE ART ......................................... 4
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`V.
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`PETITIONER DOES NOT PROVE UNPATENTABILITY OF
`ANY CHALLENGED CLAIM ................................................................... 5
`
`A.
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`Claim Construction Standard ............................................................ 6
`
`B.
`
`C.
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`Nokia and Barvesten do not teach “verifying a user
`identification module mounted inside the mobile
`radiotelephony device is linked to the mobile
`radiotelephony device.” ..................................................................... 7
`
`The Petition does not establish that Barvesten and/or
`Schultz teaches “verifying a user identification module
`mounted inside the mobile radiotelephony device is
`linked to the mobile radiotelephony device” .................................. 12
`
`D.
`
`The Petition fails to prove obviousness of any dependent
`claim ................................................................................................ 14
`
`VI. APJS ARE UNCONSTITUTIONALLY APPOINTED
`PRINCIPAL OFFICERS ........................................................................... 14
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`VII. CONCLUSION .......................................................................................... 17
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`CERTIFICATE OF COMPLIANCE ................................................................... 19
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`CERTIFICATE OF SERVICE ............................................................................ 20
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`ii
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`
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`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`IPR2019-01471
`U.S. Patent No. 6,836,654
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`EXHIBITS
`
`Memorandum Opinion on Claim Construction, Uniloc 2017
`LLC v. Motorola Mobility, LLC, 1-18-cv-01841 (consolidated
`with 1-18-cv-01844), Dkt. 72 (D. Del. Jan. 17, 2020)
`Claim Construction Order, Uniloc 2017 LLC v. Motorola
`Mobility, LLC, 1-18-cv-018441 (consolidated with 1-18-cv-
`01844), Dkt. 75 (D. Del. Jan. 23, 2020)
`Claim Construction Memorandum Opinion and Order, Uniloc
`2017 LLC v. Samsung Electronics America, Inc., 2-18-cv-
`00508, Dkt. 61 (E.D. Tex. Jan. 20, 2020)
`Order, Uniloc 2017 LLC v. Samsung Electronics America,
`Inc., 2-18-cv-00508, Dkt. 71 (E.D. Tex. Feb. 26, 2020)
`(adopting magistrate’s claim construction order and
`overruling objections)
`Claim Construction Memorandum Opinion and Order, Uniloc
`2017 LLC v. Google LLC, 2-18-cv-00493, Dkt. 165 (E.D.
`Tex. Jan. 20, 2020)
`Order, Uniloc 2017 LLC v. Google LLC, 2-18-cv-00493, Dkt.
`212 (E.D. Tex. Mar. 23, 2020) (adopting magistrate’s claim
`construction order and overruling objections)
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`iii
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`I.
`
`INTRODUCTION
`
`Uniloc 2017 LLC (the “Patent Owner” or “Uniloc”) submits its Response to
`
`the Petition for Inter Partes Review (“Pet.” or “Petition”) of United States Patent
`
`No. 6,836,654 (“the ‘654 Patent” or “Ex. 1001”) filed by Microsoft Corp.
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`(“Petitioner”) in IPR2019-01471.
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`In view of the reasons presented herein, the Petition fails to meet its burden
`
`of proving any challenged claim is unpatentable.
`
`II. THE ‘654 PATENT
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`The ’654 patent is titled “Anti-theft protection for a radiotelephony device.”
`
`The ʼ654 patent issued December 28, 2004, from U.S. Patent Application No.
`
`09/739,507 filed December 18, 2000, claiming priority to French application 99-
`
`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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`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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`
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`2
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`states (K5, K11, K30) and decisional nodes related to these blocking states. See
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`EX1001, 2:61–4:6.
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`III. RELATED PROCEEDINGS
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`The ’654 patent is or was involved in the following proceedings.
`
`Case Filing
`Date
`4/9/2018
`
`Case Name
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`Case Number Court
`
`Uniloc USA, Inc. et al v. Apple Inc.
`
`1-18-cv-00293 WDTX
`
`7/23/2018 Uniloc USA, Inc. et al v. Samsung
`Electronics America, Inc. et al
`7/23/2018 Uniloc USA, Inc. et al v. Huawei
`Device USA, Inc. et al
`8/10/2018 Uniloc USA, Inc. et al v. Motorola
`Mobility, LLC
`8/14/2018 Uniloc USA, Inc. et al v. Huawei
`Device USA, Inc. et al
`10/1/2018 Uniloc 2017 LLC et al v. Google
`LLC
`11/17/2018 Uniloc 2017 LLC et al v. Google
`LLC
`11/17/2018 Uniloc 2017 LLC v. Samsung
`Electronics America, Inc. et al
`11/17/2018 Uniloc 2017 LLC v. Huawei Device
`USA, Inc. et al
`11/20/2018 Uniloc 2017 LLC v. Motorola
`Mobility, LLC
`11/30/2018 Uniloc 2017 LLC v. HTC America,
`Inc.
`Uniloc 2017, LLC v. Apple Inc.
`
`4/2/2019
`
`4/29/2019 Uniloc 2017 LLC v. Microsoft
`Corporation
`Samsung Electronics America, Inc.
`et al v. Uniloc 2017 LLC
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`6/19/2019
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`2-18-cv-00309 EDTX
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`2-18-cv-00310 EDTX
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`1-18-cv-01230 DDE
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`2-18-cv-00357 EDTX
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`2-18-cv-00422 EDTX
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`2-18-cv-00493 EDTX
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`2-18-cv-00508 EDTX
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`2-18-cv-00509 EDTX
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`1-18-cv-01844 DDE
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`2-18-cv-01732 WDWA
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`3-19-cv-01697 NDCA
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`8-19-cv-00781 CDCA
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`IPR2019-01218 PTAB
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`3
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`6/19/2019
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`8/9/2019
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`8/9/2019
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`3/11/2020
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`Samsung Electronics America, Inc.
`et al v. Uniloc 2017 LLC
`Microsoft Corporation v. Uniloc
`2017 LLC
`Microsoft Corporation v. Uniloc
`2017 LLC
`Samsung Electronics America, Inc.
`et al v. Uniloc 2017 LLC
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`IPR2019-01219 PTAB
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`IPR2019-01470 PTAB
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`IPR2019-01471 PTAB
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`IPR2020-00701 PTAB
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`Claim terms of the ’654 patent have been construed in three of the district
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`court actions listed above. See Ex. 2001, Memorandum Opinion on Claim
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`Construction, Uniloc 2017 LLC v. Motorola Mobility, LLC, 1-18-cv-01841
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`(consolidated with 1-18-cv-01844), Dkt. 72 (D. Del. Jan. 17, 2020); Ex. 2002, Claim
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`Construction Order, Uniloc 2017 LLC v. Motorola Mobility, LLC, 1-18-cv-018441
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`(consolidated with 1-18-cv-01844), Dkt. 75 (D. Del. Jan. 23, 2020); Ex. 2003, Claim
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`Construction Memorandum Opinion and Order, Uniloc 2017 LLC v. Samsung
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`Electronics America, Inc., 2-18-cv-00508, Dkt. 61 (E.D. Tex. Jan. 20, 2020); Ex.
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`2004, Order, Uniloc 2017 LLC v. Samsung Electronics America, Inc., 2-18-cv-
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`00508, Dkt. 71 (E.D. Tex. Feb. 26, 2020) (adopting magistrate’s claim construction
`
`order and overruling objections), Ex. 2005, Claim Construction Memorandum
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`Opinion and Order, Uniloc 2017 LLC v. Google LLC, 2-18-cv-00493, Dkt. 165 (E.D.
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`Tex. Jan. 20, 2020); Ex. 2006, Order, Uniloc 2017 LLC v. Google LLC, 2-18-cv-
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`00493, Dkt. 212 (E.D. Tex. Mar. 23, 2020) (adopting magistrate’s claim construction
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`order and overruling objections).
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`IV. LEVEL OF ORDINARY SKILL IN THE ART
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`The Petition proposes a person of ordinary skill in the art in December 2000
`
`(“PHOSITA”) would have had a bachelor’s degree in electrical engineering or
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`computer science, and one year of general programming experience. Additional
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`experience may substitute for education, and addition education may substitute for
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`experience. Pet. 5. For purposes of this Response, Patent Owner does not dispute
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`Petitioner’s definition of a PHOSITA. Moreover, Patent Owner does not provide its
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`own definition because even applying definitions proposed by Petitioner, Petitioner
`
`has not met its burden of showing that the cited references anticipate or render
`
`obvious, any of the disputed claims of the '654 Patent.
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`V.
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`PETITIONER DOES NOT PROVE UNPATENTABILITY OF ANY
`CHALLENGED CLAIM
`
`“In an [inter partes review], the petitioner has the burden from the onset to
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`show with particularity why the patent it challenges is unpatentable.” Harmonic Inc.
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`v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016).
`
`While the Board has instituted Inter Partes Review here, as the Court of
`
`Appeals has stated:
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`[T]here is a significant difference between a petitioner's burden to
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`establish a “reasonable likelihood of success” at institution, and
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`actually proving invalidity by a preponderance of the evidence at trial.
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`Compare 35 U.S.C. § 314(a) (standard for institution of inter partes
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`review), with 35 U.S.C. § 316(e) (burden of proving invalidity during
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`inter partes review).
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`Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016). As
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`demonstrated herein, Petitioner has failed to meet its burden of proving any
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`proposition of invalidity, as to any claim, by a preponderance of the evidence. 35
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`U.S.C. §316(e).
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`5
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`The Petition presents the following grounds of purported unpatentability
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`based on alleged obviousness:
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`Ground
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`References
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`Challenged Claims
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`Nokia (Ex. 1003) in view of Barvesten (Ex.
`1006)
`Barvesten (Ex. 1006) in view of Schultz
`(Ex. 1008)
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`10-20
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`10-20
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`1.
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`2
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`
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`A. Claim Construction Standard
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`The Petition proposes that the claim terms should be given the ordinary
`
`meaning that the terms would have to a person of ordinary skill in the art on the
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`earliest effective filing date, in view of the specification and file history. Pet. 11.
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`For this proceeding only, Patent Owner submits that all claim terms be given their
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`plain and ordinary meaning. Although Patent Owner provides arguments below on
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`the scope of certain claim terms, Patent Owner does not propose a comprehensive
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`construction, as it would not be necessary to resolve the controversy. See Nidec
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`Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed.
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`Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and
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`only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc.
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`v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)); see also Changes to
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`the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before
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`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,353 (Oct. 11, 2018) (Final
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`Rule) (“Moreover, it also may not be necessary to determine the exact outer
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`boundary of claim scope because only those terms that are in controversy need be
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`construed, and only to the extent necessary to resolve the controversy (e.g., whether
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`the claim reads on a prior art reference).” (citing Nidec)).
`
`B. Nokia and Barvesten do not teach “verifying a user identification
`module mounted inside the mobile radiotelephony device is linked
`to the mobile radiotelephony device.”
`
`The Petition relies on the combination of Nokia and Barvesten for teaching
`
`“verifying a user identification module mounted inside the mobile radiotelephony
`
`device is linked to the mobile radiotelephony device” (the "verifying" step) as recited
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`in independent claims 10 and 17. Pet. 19-25. The Petition fails at least because the
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`combination of references does not teach any user identification module that is
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`linked to a device such that it can only function with that device.
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`The Petition misconstrues the plain and ordinary meaning of the "verifying"
`
`step. For example, the Petition asserts that Nokia teaches a user identification
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`module that is "linked" to a mobile phone (communicator) in the context of its "SIM
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`change security" feature. Pet. 20 (citing Nokia 82/131). But the cited portion of
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`Nokia merely teaches a security option of the mobile phone in which a SIM card
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`may be authorized for use with that mobile phone. It does not, however, teach that
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`the SIM card is "linked" to the mobile phone within the meaning and intent of the
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`'654 Patent.
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`The '654 Patent describes how a user identification module is linked to an
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`electronic device (e.g., mobile phone). In an embodiment described in the ’654
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`patent, for example, the function of linking the user identification module to the
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`device involves not only authorizing the user identification module to permit the
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`normal operation of the device, but also ensuring that the user identification module
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`cannot be used with any other device. See ’654 Patent Fig. 3, 2:61-3:43. As shown
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`in the flow chart of Figure 3 and the accompanying text, in this embodiment, the
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`device is initially in a state of availability at box K1. Id, 2:63-65. When the user
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`locks the device at box K2, the identification module that is inside the device is
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`automatically linked to the device. The device is automatically linked by reading
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`data from the identification module (e.g., the international identification number
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`(IMSI)) and stores it in the random-access memory of the device. Id, 2:56-3:6. Thus,
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`the identification module is linked with the device in that the user identification
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`module will only function with that device.
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`Indeed, the '654 Patent teaches that, should the user identification module be
`
`placed within another device, normal operation of the device is not permitted. Id..,
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`4:23-30. Thus, the "verifying" step, when taken in the context of the '654 Patent
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`includes not only “confirming that a user identification module mounted inside the
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`mobile
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`radiotelephony device permits normal operation of
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`the mobile
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`radiotelephony device,” but also limiting the use of the user identification module
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`only to the device that it is linked with.
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`Nokia does not teach or suggest a user identification module (SIM card) that
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`once linked, is restricted to use with only the mobile phone (device) that it is initially
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`linked with. Nokia states that the communicator mobile phone recognizes up to five
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`different SIM cards. Nokia, 82/131. But Nokia does not teach or suggest how these
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`five different SIM cards may, or may not, function when used in conjunction with
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`another different mobile phone. Furthermore, Nokia provides no concrete examples
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`or embodiments associated with how this may be accomplished.
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`As an initial matter, Patent Owner notes that a PHOSITA would understand
`
`that Nokia is only a user’s manual that does not teach how to make or use the asserted
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`features of the claims 10 and 17. Rather, it merely describes, at a high level, the
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`supposed behavior of a particular phone (e.g., a Communicator) to a user. Moreover,
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`Nokia in no way explains to a user how to make a radio telephony device with the
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`features asserted by the Petition. As such, the teachings of Nokia are not enabling.
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`The Petition cites Nokia to assert:
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`A valid SIM card (supplied by your network operator) is required for
`
`making and receiving calls. The network operator may prevent the use
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`of the communicator with any other but the operator’s own SIM cards.
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`If an unacceptable SIM card is inserted, the message INVALID SIM
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`CARD will be displayed. Should this happen, contact your retailer or
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`network operator.
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`Pet. 19-20 (citing Nokia 11/131). But as shown here, the SIM card, which is required
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`for making and receiving calls, is provided by the network operator. Additionally,
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`Nokia states that the network operator may prevent the use of the phone (e.g.,
`
`Communicator) with only the SIM card provided by the network operator. Thus,
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`Nokia teaches that the SIM card is not locked or linked to the phone, but rather to
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`the network administered by the network operator because the network operator who
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`subsidizes the use of the phone, has a vested interest in how the phone is used as will
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`be described in detail herein below.
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`The Petition further asserts that the Nokia Manual discloses that the mobile
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`device can detect whether the “SIM card in the communicator has been changed”
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`and that the “communicator recognizes five different SIM cards as the owner’s
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`cards.” Pet. 21 (citing Ex. 1003 82/131). But this is not what Nokia teaches. Nokia
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`explicitly teaches, and only teaches "When active, this security option checks
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`whether the SIM card in the communicator has been changed." Nokia p. 82/131.
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`The security option could be performed anywhere in the network of the network
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`operator. But because Nokia is simply a user manual, it is silent as to exactly where
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`the security option performs this checking operation. There exists no teaching or
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`suggestion within the entirety of Nokia that the phone checks whether the SIM card
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`in the communicator has changed. As such, Nokia cannot be construed to teach or
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`suggest the "verifying" step of claims 10 and 17. It is respectfully submitted that the
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`Petition is attempting to impart disclosure into the teachings of Nokia where indeed,
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`none exists.
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`For at least the foregoing reasons, Nokia fails to teach “verifying a user
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`identification module mounted inside the mobile radiotelephony device is linked to
`
`the mobile radiotelephony device,” as recited in independent claims 10 and 17. If a
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`single limitation of a claim is absent from the prior art, the claim cannot be
`
`considered obvious. See CFMT, Inc. v. YieldUp Int’l Corp., 349 F.3d 1333, 1342
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`(Fed. Cir. 2003) (“Obviousness requires a suggestion of all limitations in a claim.”)
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`(citing In re Royka, 409 F.2d 981, 985 (C.C.P.A. 1974)); In re Rijckaert, 9 F.3d
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`1531, 1534 (Fed. Cir. 1993) (reversing obviousness rejection where prior art did not
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`teach or suggest all claim limitations).
`
`Barvesten does not teach or suggest the "verifying" step either. The Petition
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`cites Barvesten for its alleged teaching of storing the same data in the identification
`
`module and mobile device for comparison purposes. Pet. 21. But, like Nokia,
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`Barvesten does not teach or suggest a user identification module (SIM card) that
`
`once linked, is restricted to use with only the mobile phone (device) that it is initially
`
`linked with.
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`Barvesten is directed to an arrangement for rendering services such as
`
`telephone communication, data communication, etc., comprising a terminal unit
`
`(device) and an access unit (identification module). Barvesten, 2:20-23. Barvesten
`
`teaches that the access unit may be a subscriber identity module (SIM card). Id..,
`
`2:29. Barvesten further teaches that the terminal unit stores a first access-unit-
`
`identification means (international mobile subscriber identity (IMSIs)) for each of
`
`one or more IMSIcs stored in corresponding access units (SIM cards). Id.., 2:24-29.
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`Additionally, Barvesten
`
`teaches a second access-unit-identification means
`
`comprising a personal identification number (PINc) of the access unit (SIM card)
`
`that can be used to activate the terminal unit (device). Id.., 2:42-49. Barvesten,
`
`however, does not teach that the SIM card is linked to the terminal unit such that it
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`is restricted to use only with that terminal unit.
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`This functionality is substantially different from the "verifying" step as recited
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`in Claims 10 and 17 where the user identification module only functions with the
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`device that it is linked with. Thus, the access unit (SIM card) as described by
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`Barvesten cannot be construed to be linked with the terminal unit (radiotelephony
`
`device) within the scope and meaning of the "verifying" step as recited in Claims 10
`
`and 17.
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`It is also respectfully submitted that Barvesten cannot be reasonably combined
`
`with Nokia because it was well known to any PHOSITA at the time of the '654 Patent
`
`that a network operator subsidized use of the phone in return for profits associated
`
`with providing its communication services. Were the SIM card checking technique
`
`of Barvesten to be implemented in the Communicator described in Nokia, the
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`network operator could not monitor or control how the Communicator is used. Thus,
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`Barvesten effectively teaches away from a SIM card checking technique used by
`
`Barvesten because such a system would not allow a network operator to control
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`when and how its subsidized phones are used. Thus, Barvesten cannot be combined
`
`with Nokia because Nokia teaches away from a SIM card checking technique as
`
`taught by Barvesten.
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`For at least the foregoing reasons, Petitioner fails to meet its burden to show
`
`that Nokia, Barvesten, or any combination thereof teaches the claimed “verifying”
`
`step, or to show unpatentability based on Nokia and/or Barvesten.
`
`C. The Petition does not establish that Barvesten and/or Schultz
`teaches “verifying a user identification module mounted inside the
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`mobile radiotelephony device is linked to the mobile
`radiotelephony device”
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`The Petitioner has failed to meet its burden of establishing that Barvesten and
`
`Schultz teach or suggest “verifying a user identification module mounted inside the
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`mobile radiotelephony device is linked to the mobile radiotelephony device” as
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`recited in the Claims 10 and 17. In particular, the Patent Owner respectfully submits
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`that no combination of Barvesten or Schultz teaches or suggests any user
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`identification module that is linked to a device such that it can only function with
`
`that device.
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`As explained above with reference to Section V.B, Barvesten does not teach
`
`or suggest this feature. Regarding the teachings of Schultz, Schultz only teaches a
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`communication device, such as a radio, phone, etc., that may be incorporated with a
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`password lock feature that allows users to allow access to their communication
`
`devices based upon entry of a correct password. Schultz, ¶ 1. But Schultz provides
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`no disclosure involving any user identification module (e.g., a SIM card, etc.) that
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`may be mounted on the communication device. Furthermore, Schultz provides no
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`disclosure how any user identification module may be linked to the communication
`
`devices. Accordingly, Schultz fails to teach or suggest the aforecited feature of
`
`Claims 10 and 17.
`
`In view of the reasons presented herein, Petitioner has failed to meet its burden
`
`of showing that any challenged claim is unpatentable in view of Barvesten and
`
`Schultz. 35 U.S.C. § 316(e).
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`D. The Petition fails to prove obviousness of any dependent claim
`
`The deficiencies of the Petition articulated above concerning the challenged
`
`independent claims also apply to the analysis of the challenged dependent claims.
`
`Accordingly, the Petition should be denied in its entirety.
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`
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`VI. APJS ARE UNCONSTITUTIONALLY APPOINTED PRINCIPAL
`OFFICERS
`
`As determined in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed.
`
`Cir. 2019), “APJs have substantial power to issue final decisions on behalf of the
`
`United States without any review by a presidentially-appointed officer.” Patent
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`Owner submits that APJs are principal officers under the Appointments Clause of
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`the Constitution for this reason, but undisputedly are not appointed through the
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`constitutionally-mandated mechanism of appointment for principal officers.
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`Patent Owner submits that the Arthrex decision’s remedy (invalidation of the
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`statutory limitations on removal of APJs) impermissibly re-writes the statutes
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`governing APJs. As argued by Arthrex in its en banc petition:
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`Given the adjudicative nature of IPRs, Congress would not have
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`intended the IPR process to be run by decision-makers who lack the key
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`attributes of impartiality and independence mandated by the Due
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`Process Clause and the Administrative Procedure Act (“APA”). Patents
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`are property entitled to due process protections. See [Oil States Energy
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`Servs., LLC v. Greene’s Energy Grp., LLC, 138 S. Ct. 1365, 1379
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`(2018)]. Such protections include independent and impartial decision-
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`makers. See Schweiker v. McClure, 456 U.S. 188, 195 (1982) (“As [the
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`Supreme Court] repeatedly has recognized, due process demands
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`impartiality on the part of those who function in judicial or quasi-
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`judicial capacities”). This Court has likewise described as an
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`“indispensable ingredient []of due process” an opportunity to be heard
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`by a “disinterested decision-maker.” Belden, Inc. v. Berk-Tek LLC, 805
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`F.3d 1064, 1080 (Fed. Cir. 2015) (citations omitted).
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`Congress has recognized for decades that independence and
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`impartiality are essential for agency adjudicators. The Administrative
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`Procedure Act provides that a hearing must be conducted in an
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`“impartial manner.” 5 U.S.C. §556(b). And Congress expressly
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`provided that administrative law judges may be removed “only for good
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`cause established and determined by the Merit Systems Protection
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`Board.” 5 U.S.C. §7521(a). Those tenure protections play an
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`indispensable role in ensuring impartiality. As Justice Breyer explained
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`in Lucia:
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`The
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`substantial
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`independence
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`that
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`the
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`Administrative Procedure Act’s removal protections
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`provide to administrative law judges is a central part of the
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`Act’s overall scheme. See Ramspeck v. Federal Trial
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`Examiners Conference, 345 U.S. 128, 130 (1953); Wong
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`Yang Sung v. McGrath, 339 U.S. 33, 46 (1950). Before the
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`Administrative Procedure Act, hearing examiners “were
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`in a dependent status” to their employing agency, with
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`their classification, compensation, and promotion all
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`dependent on how the agency they worked for rated them.
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`Ramspeck, 345 U. S., at 130. As a result of that
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`dependence, “[m]any complaints were voiced against the
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`actions of the hearing examiners, it being charged that they
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`were mere tools of the agency concerned and subservient
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`to the agency heads in making their proposed findings of
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`fact
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`and
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`recommendations.”
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`Id.,
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`at 131. The
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`Administrative Procedure Act
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`responded
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`to
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`those
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`complaints by giving administrative
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`law
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`judges
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`“independence and tenure within the existing Civil Service
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`system.” Id., at 132; cf. Wong Yang Sung, supra, at 41-46
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`(referring
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`to
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`removal protections as among
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`the
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`Administrative Procedure Act’s “safeguards . . . intended
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`to ameliorate” the perceived “evils” of commingling of
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`adjudicative and prosecutorial functions in agencies).
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`Lucia v. SEC, 138 S. Ct. 2044, 2060 (2018) (Breyer, J.,
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`dissenting). This Circuit has also recognized the importance of the
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`decisional independence of ALJs and agreed that an ALJ may not be
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`placed in a position where he would be removable “at will.” See Vessel
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`v. Office of Pers. Mgmt., 29 F.3d 600, 605 (Fed. Cir. 1994).
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`Congress would have deemed those protections no less
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`important—and probably even more important—here. Though the
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`Arthrex panel determined that APJs are subject to a different removal
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`restriction than the one in the APA, the court correctly determined that
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`Congress granted APJs for-cause removal protections. [Opinion at 16-
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`17]. By doing so, Congress not only acknowledged the longstanding
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`importance of such protections but confirmed that they should apply
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`here to ensure decisional independence and impartiality.
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`Arthrex, Inc. v. Smith & Nephew, Inc., Appeal 2018-2140, APPELLANT
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`ARTHREX, INC.’S COMBINED PETITION FOR REHEARING AND/OR
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`REHEARING EN BANC, D.I. 78 (Fed. Cir.). Although the Federal Circuit has
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`denied en banc review of Arthrex, the issue is ripe for Supreme Court review.
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`In addition, the ability to remove APJs at will is insufficient to render APJs
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`inferior officers. The importance placed on review of the decisions of Court of
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`Criminal Appeals Judges in Edmond v. US, 520 U.S. 651 (1997), is inconsistent with
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`Arthrex’s determination that invalidation of statutory limitations on the removal of
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`APJs is sufficient to render APJs inferior officers. See Edmond, 520 U.S. at 665
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`(“What is significant is that the judges of the Court of Criminal Appeals have no
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`power to render a final decision on behalf of the United States unless permitted to
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`do so by other Executive officers.”).
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`In view of these issues, only Congress can fix the IPR statutory scheme, and
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`this case must be dismissed. Patent Owner recognizes that the Board has previously
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`“declin[ed] to consider . . . constitutional challenge[s] as, generally, ‘administrative
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`agencies do not have jurisdiction to decide the constitutionality of congressional
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`enactments.’” Square, Inc. Unwired Planet LLC, Case IPR2014-01165, Paper 32 at
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`25 (PTAB Oct. 30, 2015) (quoting Riggin v. Office of Senate Fair Emp’t Practices,
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`61 F.3d 1563, 1569 (Fed. Cir. 1995)).
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`VII. CONCLUSION
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`For the foregoing reasons, Uniloc respectfully requests that the Petition be
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`denied in its entirety.1
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`
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`Patent Owner does not concede, and specifically denies, that there is any
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`
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` 1
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`legitimacy to any arguments in the Petition that are not specifically addressed
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`herein.
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`17
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`Date: May 5, 2020
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`Respectfully submitted,
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`IPR2019-01471
`U.S. Patent No. 6,836,654
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`By: /Ryan Loveless/
`Ryan Loveless
`Reg. No. 51,970
`Brett A. Mangrum
`Reg. No. 64,783
`Attorneys for Patent Owner
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`CERTIFICATE OF COMPLIANCE
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`Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies that this Response
`
`to Petition complies with the type-volume limitation of 37 C.F.R. § 42.24(b)(2)
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`because it contains fewer than the limit of 14,000 words, as determined by the word-
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`processing program used to prepare the brief, excluding the parts of the brief
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`exempted by 37 C.F.R. § 42.24(a)(1).
`
`Date: May 5, 2020
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`
`
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`
`
`Respectfully submitted,
`
`By: /Ryan Loveless/
`Ryan Loveless
`Reg. No. 51,970
`Brett A. Mangrum
`Reg. No. 64,783
`Attorneys for Patent Owner
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`
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that an electronic
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`copy of the foregoing PATENT OWNER RESPONSE, along with any
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`accompanying exhibits, was served via email to Petitioner’s counsel at the following
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`addresses identified in the Petition’s consent to electronic service:
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`
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`Lead Counsel
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`Todd M. Siegel, Reg.
`No. 73,232
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`todd.siegel@klarquist.com
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`Back Up Counsel
`
`Andrew M. Mason,
`Reg. No. 64,034
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`andrew.mason@klarquist.com
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`Back Up Counsel
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`Back Up Counsel
`
`John M. Lunsford,
`Reg. No. 67,185
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`Joseph T. Jakubek,
`Reg. No. 34,190
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`
`
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`Date: May 5, 2020
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`
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`
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`
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`john.lunsford@klarquist.com
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`joseph.jakubek@klarquist.com
`
`Respectfully submitted,
`By: /Ryan Loveless/
`Ryan Loveless
`Reg. No. 51,970
`Brett A. Mangrum
`Reg. No. 64,783
`Attorneys for Patent Owner
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`20
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