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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 SUR-REPLY
`TO PETITIONER’S REPLY
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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.
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`II.
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`INTRODUCTION ....................................................................................... 1
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`CLAIM CONSTRUCTION DISPUTE IS DISPOSITIVE IN
`FAVOR OF PATENTABILITY ................................................................. 1
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`III.
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`PETITIONER HAS FAILED TO MEET ITS BURDEN TO
`PROVE UNPATENTABILITY .................................................................. 7
`
`A.
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`Petitioner has failed at least to prove Nokia teaches
`“verifying a user identification module mounted inside
`the mobile radiotelephony device is linked to the mobile
`radiotelephony device” ...................................................................... 7
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`1.
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`2.
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`3.
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`Example deficiencies of Nokia under the district
`court claim construction addressed in the parties’
`respective briefings ................................................................. 8
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`Additional deficiencies of Nokia arise from what
`claim element must perform the claimed
`“verifying” ............................................................................ 10
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`Petitioner fails at least to prove Barvesten cures the
`example deficiencies of Nokia Patent Owner had
`identified ............................................................................... 13
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`B.
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`C.
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`The Petition makes no attempt to prove Schultz cures the
`identified deficiencies of Nokia and Barvesten for the
`“verifying” limitations” ................................................................... 16
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`The Petition fails to prove obviousness of any dependent
`claim ................................................................................................ 16
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`IV. CONCLUSION .......................................................................................... 17
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`CERTIFICATE OF COMPLIANCE ................................................................... 18
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`CERTIFICATE OF SERVICE ............................................................................ 19
`
`ii
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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
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`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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`IPR2019-01471
`U.S. Patent No. 6,836,654
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`I.
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`INTRODUCTION
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`Uniloc 2017 LLC (“Uniloc” or “Patent Owner”) submits this Sur-Reply to the
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`Petition filed by Microsoft Corp. (“Petitioner”) for inter partes review of United
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`States Patent No. 6,836,654 (“the ’654 patent” or “Ex. 1001”) in IPR2019-01471.1
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`For the reasons given in Uniloc’s Response (Paper No. 9, “POR”) and herein,
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`Petitioner fails to carry its burden of proving unpatentability of the challenged claims
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`10‒20 of the ’654 patent based on the grounds presented in the Petition.
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`II. CLAIM CONSTRUCTION DISPUTE IS DISPOSITIVE IN FAVOR
`OF PATENTABILITY
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`Resolution of the claim construction dispute injected by Petitioner is
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`straightforward and dispositive. If the Board adopts the same claim construction
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`ordered in district court, and addressed in the parties’ respective briefing, then the
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`Petition should be denied in its entirety as being impermissibly keyed to the wrong
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`claim construction. See Reply 1‒3. The disputed claim language is recited in each
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`challenged claim as “verifying a user identification module mounted inside the
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`mobile radiotelephony device is linked to the mobile radiotelephony device.” Patent
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`Owner had observed that the Petition advances no obviousness theory under a
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`construction (as adopted in district court) that a “user identification module … linked
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`to the mobile radiotelephony device” means “a user identification module that is the
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`only one that permits normal operation of the device.” POR 2. In its Reply,
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` 1
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` Per the Board’s Decision Granting Institution and Joinder in IPR2020-00701,
`Apple Inc. and Motorola Mobility LLC have been joined as petitioners to this
`proceeding. Apple Inc. et. al. v. Uniloc 2017 LLC, IPR2020-00701, Paper 14 (PTAB
`Aug. 12, 2020). All petitioners are referred to herein collectively as Petitioner.
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`1
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`Petitioner challenges the same district court construction as purportedly “not found
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`either in the claims, or the specification.” Reply 2.
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`It is well established that inter partes review petitioners cannot prove
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`obviousness through application of an erroneous claim construction. See, e.g.,
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`Mentor Graphics Corp., v. Synopsys, Inc., IPR2014-00287, 2015 WL 3637569,
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`(Paper 31) at *11 (P.T.A.B. June 11, 2015), aff’d sub nom. Synopsys, Inc. v. Mentor
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`Graphics Corp., 669 Fed. Appx. 569 (Fed. Cir. 2016) (denying petition as tainted by
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`reliance on an incorrect claim construction); Vivint, Inc. v. Alarm.com Inc., 754 F.
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`App’x 999, 1005 (Fed. Cir. 2018) (vacating and remanding, in part, because Board
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`had adopted and applied certain incorrect claim constructions); Int’l Bus. Machines
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`Corp. (IBM) v. Iancu, 759 F. App’x 1002, 1005–06 (Fed. Cir. 2019) (finding that
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`the Board’s interpretation of key claim limitations was incorrect resulting in the
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`Board’s decisions having errors).
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`Because the Petition was filed after November 13, 2018, the Board interprets
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`the claim terms here using “the same claim construction standard that would be used
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`to construe the claim in a civil action under 35 U.S.C. 282(b).” 37 C.F.R.
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`§ 42.100(b) (effective November 13, 2018). In addition, “[a]ny prior claim
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`construction determination concerning a term of the claim in a civil action, or a
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`proceeding before the International Trade Commission, that is timely made of record
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`in the inter partes review proceeding will be considered.” Id.
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`In its Reply, Petitioner attacks the district court reasoning set forth in its orders
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`filed as Exhibit 2005 (Claim Construction Memorandum Opinion and Order, Uniloc
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`2017 LLC v. Google LLC, 2-18-cv-00493, Dkt. 165 (E.D. Tex. Jan. 20, 2020)) and
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`Exhibit 2006 (Order, Uniloc 2017 LLC v. Google LLC, 2-18-cv-00493, Dkt. 212
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`(E.D. Tex. Mar. 23, 2020) (adopting magistrate’s claim construction order and
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`overruling objections)). Reply 3. Specifically, Petitioner attacks the district court
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`reasoning that its construction is supported by the specification of the ’654 patent,
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`including Fig. 3 and its accompanying description. Id. (citing Ex. 2005, 9‒13).
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`The court offered the following informative backdrop for the claim language
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`in question:
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`Claim 16 of the ’654 Patent, which depends from Claim 10,
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`provides further context for “linked” by reciting (emphasis
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`added): “The method of claim 10, further comprising: preventing
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`the normal operation of the mobile radiotelephony device in
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`response to any unlinked user identification module being
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`mounted inside the mobile radiotelephony device.” The claims
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`thus refer to a user identification module being either “linked” or
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`“unlinked,” and the parties agree that only a “linked” user
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`identification module permits normal operation.
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`Ex. 2005, 10. Petitioner here does not dispute this understanding.
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`The court favorably noted the argument that the ’654 patent offers “repeated
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`and consistent teachings that the linked user identification module is the only module
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`with which the mobile device can be in normal operation.” Ex. 2005, 9; see also
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`Profoot, Inc. v. Merck & Co., 663 F. App’x 928, 932 (Fed. Cir. 2016) (“‘When a
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`patent ‘repeatedly and consistently’ characterizes a claim term in a particular way,
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`it is proper to construe the claim term in accordance with that characterization.’”)
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`(quoting GPNE Corp. v. Apple Inc., 830 F.3d 1365, 1370 (Fed. Cir. 2016)).
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`In support of this understanding, the court offered the following observations:
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`In discussing United States Patent No. 5,913,175 . . . , the ’654
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`Patent refers to “establishing a link between the device and a
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`specific user identification module and blocking the normal
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`operation of the device when the user identification module that
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`is placed inside the device is not the one that is linked to the
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`device.” ’654 Patent at 1:20–30 (emphasis added). The ’175
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`Patent also refers to a “locked mode” as to which “a link is
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`established between the terminal and a particular user card (the
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`linked user card).” ’175 Patent at 2:14–20 (emphasis added).
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`Ex. 2005, 11. Petitioner here ignores these court observations and offers no basis to
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`dispute whether they support the court’s construction.
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`The court also pointed to the following additional consistent teachings of the
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`’654 patent as similarly supportive of the court’s construction:
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`The specification likewise refers to whether an identification
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`module is “the one that is linked to the device.” ’654 Patent at
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`3:11–20 & 3:61–4:2 (emphasis added). Further, the specification
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`discloses that a first blocking mode “is applied in the case where
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`the device has been lost or stolen. The object is then to prevent
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`the device being usable with another identification module.” Id.
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`at 4:11–14 (emphasis added); see id. at 1:60–65 (“A fraudulent
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`person cannot send communications at the cost of the owner of
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`the device. But neither can he use the device with another
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`identification module.”).
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`Ex. 2005, 11‒12; see also id. (pointing to the “explanation of linking that is set forth
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`4
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`in the specification, which discloses that the ‘only way of leaving this first blocking
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`state is . . . to place the identification module that is linked to the device inside the
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`device.’”) (quoting ’654 patent, 3:28–31) (emphasis added by court).
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`The court also found that Figure 3 and its description further “reinforce” the
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`court’s understanding of the repeated and consistent teachings of the ’654 patent.
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`According to the court,
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`Figure 3 and the description thereof reinforce this understanding.
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`Referring to Figure 3, in box K1 the user has access to a
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`“configuration menu” whereby the user “has the choice of either
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`or not locking his device.” ’654 Patent at 2:63–66. “When the user
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`locks his device,” the module that is in the device is “automatically
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`linked to the device.” Id. at 2:67–3:2. Figure 3 and the description
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`thereof explains how the user could return to box K1, thus
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`regaining access to the configuration menu. See id. at 3:32–52.
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`Ex. 2005, 12. The court further held that “a fair reading” that “most naturally aligns”
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`with the above description “is that the ‘linked’ module is the particular module that
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`was in the device at the time of locking (and that was thus automatically linked when
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`the user locked the device).” Id. (citations to authority omitted).
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`In view of the reasoning summarized above and in Patent Owner’s Response,
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`which Petitioner largely ignores, the court construed “user identification module …
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`linked to the mobile radiotelephony device” to mean “a user identification module
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`that is the only one that permits normal operation of the device.” Id., 13.
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`Petitioner has the burden of proof here, yet it fails to offer any rebuttal claim
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`construction argument that the district court had not already considered and rejected.
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`5
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`Focusing exclusively on the description in the ’654 patent of Figure 3, Petitioner
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`argues—through its counsel only, and without any citation to alleged expert
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`testimony—that nothing in that description “would prevent the module from being
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`removed and installed in a different device that reads and stores its IMSI code” or
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`“would prevent the user from removing the module and unlocking the device, and
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`then locking the device with a different module inserted to link that module to the
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`device.” Reply 3. In considering similar arguments, the court held that “[n]othing
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`in the specification, . . . supports [the] suggestion that repeatedly ‘locking’ could
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`result in multiple ‘linked’ cards.” Ex. 2005, 12. Moreover, as emphasized above,
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`the court further held that “a fair reading” that “most naturally aligns” with the
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`description of Figure 3 “is that the ‘linked’ module is the particular module that was
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`in the device at the time of locking (and that was thus automatically linked when the
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`user locked the device).” Id. (citations to authority omitted). Petitioner fails to
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`acknowledge these court findings and provides no basis to disturb them.
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`Petitioner also argues, without any explanation, that Patent Owner’s claim
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`interpretation here is inconsistent with the claim construction adopted in district
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`court. Reply 5. Patent Owner’s Response identifies example deficiencies of the
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`Petition arising at least from the interpretation that the “linked to” claim language
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`requires a “user identification module that is linked to a device such that it can only
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`function with that device.” POR 7. Petitioner fails to explain whether and how this
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`interpretation differs in any from the district court interpretation of the same claim
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`language to mean “a user identification module that is the only one that permits
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`6
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`normal operation of the device.” Ex. 2005, 13. Moreover, the Petition remains
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`deficient under either of these similarly worded claim constructions.
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`Finally, Petitioner appears to argue that Patent Owner is estopped from
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`identifying deficiencies that would arise if the Board were to adopt the same claim
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`construction ordered in district court, ostensibly because Patent Owner had argued
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`“no construction was necessary” to resolve disputes unique to that parallel
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`proceeding. Reply 4‒5 (quoting Ex. 1019). Petitioner provides no legal authority
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`in support of the proposition that estoppel somehow applies here. Such a baseless
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`interpretation of the law at least runs afoul of the requirement that the Board must
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`consider the claim construction adopted in district court if it is made of record. See
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`37 C.F.R. § 42.100(b) (effective November 13, 2018).
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`III. PETITIONER HAS FAILED TO MEET ITS BURDEN TO PROVE
`UNPATENTABILITY
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`A.
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`Petitioner has failed at least to prove Nokia teaches “verifying a
`user identification module mounted inside the mobile
`radiotelephony device is linked to the mobile radiotelephony
`device”
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`As Patent Owner explained in its Response, Petitioner fails to prove that its
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`proposed combination of Nokia renders obvious “verifying a user identification
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`module mounted inside the mobile radiotelephony device is linked to the mobile
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`radiotelephony device” (the “verifying” step), as recited in independent claims 10
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`and 17 (and hence all challenged claims). Pet. 19‒25.
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`The Petition fails at least because Nokia (when considered either alone or in
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`combination with Barvesten) fails to disclose or suggest a user identification module
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`7
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`that is linked to a device such that it can only function with that device (id.), or, to
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`borrow from the similar district court wording, “a user identification module that is
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`the only one that permits normal operation of the device.” Ex. 2005, 12; see also §
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`II, supra (addressing the district court’s claim construction).
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`1.
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`Example deficiencies of Nokia under the district court claim
`construction addressed in the parties’ respective briefings
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`As explained in Patent Owner’s Response, the Petition fails to prove Nokia
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`satisfies the “verifying” limitations at least to the extent the Board adopts the district
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`court construction that “user identification module … linked to the mobile
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`radiotelephony device” means “a user identification module that is the only one that
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`permits normal operation of the device.” POR 7‒11. It is axiomatic, for example,
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`that the “only one” aspect of the district court construction addressed above (see §
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`II, supra) is distinguishable from the alleged teaching in Nokia that a mobile phone
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`may be configured to operate with up to five different SIM cards at a time. POR 8
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`(citing Nokia, p. 82). Petitioner also does not dispute, or even acknowledge, that
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`Nokia is silent as to whether five different SIM cards may each be configured to
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`allow normal operation of more than one phone. Id., 9.
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`In its Reply, Petitioner relies solely on attorney argument, without citation to
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`any allegedly supportive expert testimony, to newly argue that Nokia also teaches
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`the “linked to” limitations under the district court construction. Reply 14. Petitioner
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`first quote what it identifies as the “full passage” from Nokia:
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`If the SIM card has been changed and the new SIM card has not
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`previously been used with your communicator, the communicator
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`8
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`locks itself until the lock code, supplied with the communicator
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`sales package, is correctly entered. The communicator recognizes
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`five different SIM cards as the owner’s cards.
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`Reply 14 (quoting Nokia, p. 82) (emphasis added by Patent Owner). Rather than
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`address what the “full passage” from Nokia allegedly discloses, Petitioner offers the
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`attorney argument that “[n]othing about this disclosure suggests that five different
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`SIM cards are linked to the same device.” Id.
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`Petitioner provides no citation to any allegedly supportive expert testimony in
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`support of Petitioner’s attorney characterization of the cited passage. Petitioner’s
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`counsel evidently failed to recognize that that the Nokia reference is a user manual
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`provided in connection with the purchase of a single Nokia 9000i Communicator
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`phone.
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` Nokia, p. 7 (“Congratulations on purchasing
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`the Nokia 9000i
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`Communicator, the versatile communications tool you need to stay connected to the
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`office when you are out.”). Petitioner has failed to meet its burden prove,
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`particularly through its sole reliance on attorney argument, that the statement “[t]he
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`communicator recognizes five different SIM cards as the owner’s cards” means
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`anything other than what it states—i.e., each individual Nokia 9000i device is
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`designed to operate with five different SIM cards at a time. As explained above, and
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`in Patent Owner’s Response, Nokia speaks for itself, and is distinguishable on its
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`face, from the district court construction in question.
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`Next, Petitioner argues that “notwithstanding the [Nokia] Manual’s statement
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`about five SIM cards, in many cases, the owner of the device will use only one SIM
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`card with the device.” Reply 14‒15. Petitioner appears to misunderstand
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`9
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`deficiencies in the Petition resulting from interpreting the “linked to” claim language
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`in a manner consistent with the district court construction. Absent from the Reply
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`and its attached declaration, for example, is any explanation for why such an
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`undisclosed hypothetical (i.e., that a user may make use of only one of five different
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`possible SIM cards) would render obvious “a user identification module that is the
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`only one that permits normal operation of the device.” Under the district court
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`construction, the claim language in question is not directed to whether a user takes
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`advantage of SIM card options made available to it. Rather, it is directed to what is
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`permitted by the “linked to” requirement. Petitioner’s undisclosed hypothetical
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`simply does not cure deficiencies that would still arise under the district court
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`construction.
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`2.
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`Additional deficiencies of Nokia arise from which claim
`element must perform the claimed “verifying”
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`Patent Owner had also identified additional example deficiencies arising from
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`claim language explicitly identifying the claim element performing the verifying.
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`As recited in independent claim 17, for example, the “verifying” is attributed to
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`“computer readable code” of “computer readable medium” located “[i]n a mobile
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`radio telephony device.” To be clear, this additional, dispositive distinction is
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`independent of those arising from the district court construction of the “linked to”
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`terms. POR 10.
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`Patent Owner had observed that Nokia does not expressly state that the mobile
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`phone itself performs the functionality Petitioner has purported to map onto the
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`“verifying” limitations. Id. The Petition points to the statement in Nokia that
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`10
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`“[w]hen active, this security option checks whether the SIM card in the
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`communicator has been changed.” Pet. 21 (citing Nokia, p. 82). This statement is
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`itself unavailing. Given the Nokia reference is itself nothing more than a user
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`manual, it is not surprising “it is silent as to exactly where the security option
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`performs this checking operation.” Id. Patent Owner had further noted the
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`possibility that Nokia’s “security option could be performed anywhere in the
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`network of the network operator.” Id.
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`In the absence of an express disclosure as to how the security option is
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`performed, and whether, and to what extent, it is performed remote from the mobile
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`device itself, Petitioner tacitly offers a new theory of inherency in its Reply. The
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`Federal Circuit has recently reiterated the applicable standard of inherency as
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`follows:
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`“Inherency . . . may not be established by probabilities or
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`possibilities.” PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d
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`1186, 1195 (Fed. Cir. 2014). “The mere fact that a certain thing
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`may result from a given set of circumstances is not sufficient.” Id.
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`(emphasis added). Rather, a party must “show that the natural
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`result flowing from the operation as taught would result in the
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`performance of the questioned function.” Id. (emphasis in
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`original).
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`Personal Web Technologies, LLC v. Apple, Inc., 917 F.3d 1376, 1382 (Fed. Cir.
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`2019) (emphasis original). The Board has similarly instructed that “[i]n order to rely
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`on inherency to establish the existence of a missing claim limitation in an
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`obviousness analysis, ‘the limitation at issue necessarily must be present, or the
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`natural result of the combination of elements explicitly disclosed by the prior art.’”
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`Kaiser Aluminum v. Constellium Rolled Products Ravenswood, LLC, IPR2014-
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`01002 (P.T.A.B. Nov. 2, 2015), Paper 64 (quoting PAR Pharma., Inc. v. TWI
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`Pharmas., Inc., 773 F.3d 1186, 1195–96 (Fed. Cir. 2014)) (emphasis added).
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`Petitioner and its declarant come nowhere close to meeting this exacting standard to
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`prove obviousness by inherency.
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`In its Reply, Petitioner relies solely on attorney argument in alleging, without
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`any evidentiary support, and without any citation to any testimonial evidence, “[t]he
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`most logical reading of this disclosure is that it is the device performing the check,
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`therefore satisfying the “verifying” limitation.” Reply 8. Petitioner’s “most logical
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`reading” is a far cry from what is required to prove inherency in the absence of an
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`express disclosure in the printed publication relied upon.
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`While Petitioner’s Reply points without explanation to a single conclusory
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`sentence of Dr. Houh’s declaration, that sentence offers no opinion concerning
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`where or how Nokia performs its security check. Id. (citing Ex. 1010, ¶ 127). For
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`the convenience of the Board, the cited sentence from Dr. Houh’s declaration is
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`reproduced below in its entirety:
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`[T]he Nokia Manual discloses verifying the user identification
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`module is linked to the mobile phone in the context of describing
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`the 9000i Communicator’s “SIM change security” feature[.]
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`Ex. 1010, ¶ 127 (citation and quotation omitted). The singular, conclusory sentence
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`from Dr. Houh’s declaration simply expresses no opinion, much less an
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`accompanying explanation, as to where or how Nokia’s performs its security check.
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`12
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`All Petitioner is left with is conclusory attorney argument to make its point
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`concerning only an alleged “most logical reading” of Nokia. Reply 8. This falls far
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`short of Petitioner’s evidentiary burden.
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`3.
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`Petitioner fails at least to prove Barvesten cures the example
`deficiencies of Nokia Patent Owner had identified
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`As explained in Patent Owner’s Response, the Petition also at least fails to
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`prove Barvesten cures the example deficiencies of Nokia identified by Patent Owner
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`for at least the “verifying” limitations. POR 11‒12. In its Reply, Petitioner first
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`acknowledges the assertion of Barvesten in the Petition is keyed to an implicit
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`construction that is broader in scope than what the district court adopted. Reply
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`10‒12 (discussing Ex. 2005). Thus, if the Board adopts a claim construction similar
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`to the district court order addressed in the parties’ respective briefings, the theory set
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`forth in the Petition is admittedly deficient.
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`Petitioner also newly suggests in its Reply that Barvesten discloses the “linked
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`to” limitations even under the relevant construction adopted in district court—i.e.,
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`“a user identification module that is the only one that permits normal operation of
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`the device.” See Reply 15; see also Ex. 2005, 9‒12 and the discussion of the same
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`at § II, supra. As explained above, the Court adopted the reasoning that its
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`construction most naturally reflects “repeated and consistent teachings that the
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`linked user identification module is the only module with which the mobile device
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`can be in normal operation.” Ex. 2005, 9.
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`According to Petitioner, “a PHOSITA would understand Barvesten to disclose
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`the scenario where only one SIM card is linked with a particular device.” Reply 15.
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`Petitioner purports to rely on new evidence introduced in its Reply as a second
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`declaration of Dr. Houh. Id. (citing Ex. 1020, ¶ 11). Setting aside the untimeliness
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`of this new evidence, it should be afforded no weight toward the proposition for
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`which it is allegedly cited. Dr. Houh does not opine that Barvesten disclose that only
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`one SIM card is linked with a particular device, much less that such a SIM card is
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`the only one with which the mobile device can be in normal operation. Indeed, the
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`couplet “only one” does not appear in any context within Dr. Houh’s second
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`declaration.
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`At most, Dr. Houh opines in the cited paragraph that (1) the cited disclosure
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`in Barvesten and Nokia are similar (with Nokia admittedly making available five
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`different SIM cards per phone); and (2) that “Barvesten disclose[s] the scenario
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`where a single SIM card is linked to a particular device.” Ex. 1020, ¶ 11. Regardless
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`whether Dr. Houh’s new characterization of the cited references is correct, and
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`Patent Owner does not concede that it is, it simply does not reflect Petitioner’s
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`distinct attorney argument that Barvesten discloses “only one SIM card is linked
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`with a particular device.” Reply 15 (emphasis added). Dr. Houh’s opinion appears
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`to do nothing more than restate his understanding of Nokia—i.e., that a user may opt
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`to make use of one of the multiple different SIM cards that will enable operation of
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`his phone. This falls short of proving obviousness, at least under the district court
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`construction addressed above. See §§ II and III.1, supra.
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`Petitioner also appears to have overlooked Dr. Houh’s explanation for how
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`the cited “teachings of Barvesten” would allegedly be combined with Nokia under
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`his theory. According to Dr. Houh, “[i]ncorporating the teachings of Barvesten into
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`the Nokia device would protect the device and each of the accounts represented by
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`each linked SIM card, thereby increasing security and reducing the potential for
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`unauthorized and/or fraudulent use of the device and/or the linked SIM cards’ phone
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`accounts.” Ex. 1020, ¶ 10. Dr. Houh’s repeated reference to SIM cards in the plural
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`reflects a broad interpretation of claim scope that cannot be squared with the relevant
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`district court construction. See § II, supra.
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`Petitioner’s Reply also newly focuses on the statement of Barvesten, not cited
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`and relied upon in the Petition, that “the terminal unit furthermore are stored first
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`access-unit-identification means (IMSis) for a given number (n) of access units
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`(SIM).” Reply 15 (citing Barvesten, 2:29-30). Petitioner asserts this previously
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`uncited statement somehow maps onto the “only one” aspect of the district court’s
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`construction. Id.
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`Petitioner cannot escape the fact that Barvesten here expressly refers to
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`“access units” in the plural. Moreover, nothing in the newly cited statement
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`discloses or suggests configuring a “terminal unit” such that one and only one “SIM
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`card” will permit normal operation of the device. The cited reference to multiple
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`“access units” in the plural, when understood in light of the remainder of the
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`disclosure, simply reflects the teaching that Barvesten is purposefully and expressly
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`designed to enable a given mobile terminal to accept multiple SIM cards for
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`activation. See, e.g., Barvesten, 4:45-47 (“Upon activation of the telephone, wherein
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`either a card already is present in the telephone 1 or a new one has been introduced,
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`. . . .”). Thus, even in offering a disparate citation to Barvesten that is not relied upon
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`in the Petition itself, Petitioner fails to meet its burden to prove obviousness of the
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`“linked to” requirement under the district court construction.
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`Petitioner and its declarant also fail to address, much less persuasively rebut,
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`Patent Owner’s observation that Barvesten does not teach that its SIM card is linked
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`to the terminal unit such that it is restricted to use only with that terminal unit and
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`no other terminal unit. POR 11.
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`For at least the foregoing reasons, and for those reasons presented in Patent
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`Owner’s Response, Petitioner fails to meet its burden to show that Nokia, Barvesten,
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`or any combination thereof teaches the claimed “verifying” step, or to show
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`unpatentability based on Nokia and/or Barvesten.
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`B.
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`The Petition makes no attempt to prove Schultz cures the
`identified deficiencies of Nokia and Barvesten for the “verifying”
`limitations”
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`Patent Owner had observed in its Response that the Petition advances no
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`theory alleging that Shultz teaches the “verifying” limitations. POR 13. Petitioner
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`does not dispute in its Reply that Shultz is unavailing at least as to the “verifying”
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`limitations addressed in Patent Owner’s Response and herein. It follows that
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`Petitioner has failed to meet its burden of showing that any challenged claim is
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`unpatentable in view of Barvesten and Schultz. 35 U.S.C. § 316(e).
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`C. The Petition fails to prove obviousness of any dependent claim
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`The non-exhaustive, example deficiencies of the Petition identified above and
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`in Patent Owner’s Response apply not only to the challenged independent claims,
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`but also to the challenged claims depending therefrom. Accordingly, the Petition
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`should be denied in