UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`MICROSOFT CORPORATION
`
`Petitioner
`
`v.
`
`UNILOC 2017 LLC
`
`Patent Owner
`
`
`
`
`
`IPR2019-01471
`PATENT 6,836,654
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`
`PURSUANT TO 37 C.F.R. §42.107(a)
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`
`
`MICROSOFT CORPORATION
`
`Petitioner
`
`v.
`
`UNILOC 2017 LLC
`
`Patent Owner
`
`
`
`
`
`IPR2019-01471
`PATENT 6,836,654
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`
`PURSUANT TO 37 C.F.R. §42.107(a)
`
`
`
`
`
`
`
`IPR2019-01471
`U.S. Patent 6,836,654
`
`
`Table of Contents
`
`
`
`I.
`
`II.
`
`INTRODUCTION .................................................................................... 1
`
`THE ’654 PATENT .................................................................................. 1
`
`III.
`
`RELATED PROCEEDINGS .................................................................... 3
`
`IV.
`
`V.
`
`THE BOARD SHOULD EXERCISE DISCRETION TO
`DENY INSTITUTION ON THIS CUMULATIVE PETITION .............. 3
`
`THE PETITION SHOULD BE DENIED FOR FAILING TO
`JUSTIFY FILING MULTIPLE, CONCURRENT PETITIONS
`ON THE ’654 PATENT ........................................................................... 9
`
`VI.
`
`CONCLUSION ....................................................................................... 11
`
`
`
`
`
`
`ii
`
`
`
`IPR2019-01471
`U.S. Patent 6,836,654
`
`
`I.
`
`INTRODUCTION
`
`Uniloc 2017 LLC (“Uniloc” or “Patent Owner”) submits this Preliminary
`
`Response to Petition IPR2019-01471 for Inter Partes Review (“Pet.” or “Petition”)
`
`of United States Patent No. 6,836,654 (“the ’654 patent” or “EX1001”) filed by
`
`Microsoft Corporation (“Petitioner”). The instant Petition is defective for at least
`
`the reasons set forth herein.
`
`II. THE ’654 PATENT
`
`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.
`
`Figure 3 of the ’654 patent, reproduced below, is a flow chart depicting an
`
`example embodiment.
`
`1
`
`
`
`IPR2019-01471
`U.S. Patent 6,836,654
`
`
`
`The text accompanying Figure 3 describes operation from box K1 at the top
`
`of the figure, in which the device is in a state of availability, through various blocking
`
`states (K5, K11, K30) and decisional nodes related to these blocking states. See
`
`2
`
`
`
`IPR2019-01471
`U.S. Patent 6,836,654
`
`
`EX1001, 2:61–4:6.
`
`III. RELATED PROCEEDINGS
`
`The following proceedings are currently pending cases concerning U.S. Pat.
`
`No. 6,836,654 (EX1001).
`
`Case Name
`Uniloc 2017 LLC et al v. Google
`LLC
`Uniloc 2017 LLC v. Samsung
`Electronics America, Inc. et al
`Uniloc 2017 LLC v. Motorola
`Mobility, LLC
`Uniloc 2017 LLC v. HTC America,
`Inc.
`Uniloc USA, Inc. et al v. Apple Inc.
`Uniloc 2017 LLC v. Microsoft
`Corporation
`Samsung Electronics America, Inc.
`v. Uniloc 2017 LLC
`Samsung Electronics America, Inc.
`v. Uniloc 2017 LLC
`Microsoft Corporation v. Uniloc
`2017 LLC
`Microsoft Corporation v. Uniloc
`2017 LLC
`
`
`Case Number
`2-18-cv-00493
`
`Court
`TXED
`
`Filing Date
`11/17/2018
`
`2-18-cv-00508
`
`TXED
`
`11/17/2018
`
`1-18-cv-01844
`
`DED
`
`11/20/2018
`
`2-18-cv-01732 WAWD
`
`11/30/2018
`
`3-19-cv-01697
`8-19-cv-00781
`(stayed)
`IPR2019-01218
`
`CAND
`CACD
`
`4/2/2019
`4/29/2019
`
`PTAB
`
`6/19/2019
`
`IPR2019-01219
`
`PTAB
`
`6/19/2019
`
`IPR2019-01470
`
`PTAB
`
`8/9/2019
`
`IPR2019-01471
`
`PTAB
`
`8/9/2019
`
`IV. THE BOARD SHOULD EXERCISE DISCRETION TO DENY
`INSTITUTION ON THIS CUMULATIVE PETITION
`
`Petitions challenging claims 1–9 (IPR2019-01218) and claims 10–20
`
`(IPR2019-01219) of the ’654 patent were filed by Samsung Electronics America,
`
`Inc. on June 19, 2019. Whether or not the Board institutes review in IPR2019-01219
`
`3
`
`
`
`IPR2019-01471
`U.S. Patent 6,836,654
`
`(“Samsung IPR”), which challenges the same claims as the instant Petition, the
`
`Petition in this case should be denied as cumulative of the Samsung IPR under 35
`
`U.S.C. § 325(d).
`
`The Board may exercise its discretion “to deny a petition when ‘the same or
`
`substantially the same prior art or arguments previously were presented to the
`
`Office.’” NHK Spring Co., Ltd., v Intri-Plex Techs., Inc., IPR2018-00752, slip op.
`
`at 11 (PTAB Sept. 12, 2018) (Paper 8) (precedential). The Board considers several
`
`non-exclusive factors in deciding whether to deny a petition under § 325(d),
`
`including: (a) the similarities and material differences between the currently and
`
`previously asserted art; (b) the cumulative nature of the currently asserted art with
`
`respect to the previously asserted art; (c) the extent to which the asserted art was
`
`previously considered; (d) the overlap between the currently and previously
`
`presented patentability challenges; (e) whether Petitioner has pointed out any error
`
`in the previously presented patentability challenges; and (f) the extent to which
`
`additional evidence and facts presented in the Petition warrant reconsideration of the
`
`previously asserted art or patentability challenges. Id. at 11–12 (citing Becton,
`
`Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, slip op. at 17–18
`
`(Paper 8) (PTAB Dec. 15, 2017) (informative, precedential as to § III.C.5)).
`
`Despite an opportunity to do so in its Petition, Petitioner has not sufficiently
`
`addressed the NHK Spring / Becton, Dickinson factors, which weigh in favor of
`
`4
`
`
`
`IPR2019-01471
`U.S. Patent 6,836,654
`
`
`denial of institution here.
`
`Factors (a) and (b) pertain to the similarities and differences between the prior
`
`art relied upon in the Samsung IPR and this proceeding filed by Microsoft. Petitioner
`
`acknowledges that it relies on the Nokia manual that was relied on in the Samsung
`
`IPR, and states only that “it presents that art in a different light and combines it with
`
`other art not cited in the Samsung Petition.” Pet. 5. Petitioner also states that it
`
`“presents a ground based on Barvesten and Schultz, neither of which were even cited
`
`in the Samsung petitions.” Id. The Petition does not, however, provide any specific
`
`reasoning to support the argument. Petitioner’s bare contentions are insufficient to
`
`show that any of the additional references present non-cumulative challenges to
`
`claims 10–20 of the ’654 patent. See Medtronic, Inc. v. NuVasive, Inc., Case
`
`IPR2014-00487, slip op. at 6 (Paper 8) (Sept. 11, 2014) (informative) (denying
`
`institution, explaining in part that “[w]hile Petitioner argues that the grounds are not
`
`redundant to those instituted on in the ’506 Proceeding, Petitioner does not provide
`
`any specific reasoning to support that argument, other than to state that the grounds
`
`are based on different prior art references.”); Intelligent Bio-Sys., Inc. v. Illumina
`
`Cambridge Ltd., Case IPR2013-00324, slip op. at 6 (Paper 19) (Nov. 21, 2013)
`
`(informative) (“IBS does not distinguish any teaching present in Odedra that is
`
`lacking from Ju, Tsien, or any of the other references cited in the 128 Petition.”).
`
`Factors (c) and (d) pertain to the similarities and differences in the arguments
`
`5
`
`
`
`IPR2019-01471
`U.S. Patent 6,836,654
`
`raised in the Samsung IPR and this case, and factors (e) and (f) pertain to whether
`
`Microsoft’s Petition adds any additional evidence, corrects any errors, or better
`
`explains any of the grounds raised in the Samsung IPR. As with factors (a) and (b),
`
`Petitioner provides no more explanation than that additional art is relied upon.
`
`Petitioner does not identify any shortcoming of the references in the Samsung IPR
`
`that the additional references are relied upon to overcome. Petitioner also does not
`
`point out any error in the previously presented patentability challenge.
`
`The Petition’s alleged grounds of unpatentability closely follow those raised
`
`in the Samsung IPR. The Petition raises the following obviousness challenges under
`
`35 U.S.C. § 103:
`
`Ground
`
`Claims
`
`Reference(s)
`
`1
`
`2
`
`10–20
`
`10–20
`
`Nokia1 and Barvesten2
`
`Barvesten and Schultz3
`
`
`Similar to Ground 1 in this Petition (Nokia/Barvesten), the Samsung IPR
`
`
`
` 1
`
` EX1003, Owner’s Manual for the Nokia 9000i Communicator.
`
`2 EX1006, U.S. Pat. No. 5,940,773.
`
`3 EX1008, “Communication Device Inactivity Password Lock.”
`
`6
`
`
`
`IPR2019-01471
`U.S. Patent 6,836,654
`
`alleges that claims 10–20 are obvious over the same Nokia reference and Alos.4
`
`Samsung IPR, Paper 1, 3. Samsung’s Petition argues that “[t]o the extent Patent
`
`Owner argues that ‘linked’ in claim 10 requires storing the same data in the
`
`identification module and mobile radiotelephony device . . . , such a link would have
`
`been obvious in view of Alos.” Id. at 10. In the present Petition, Microsoft
`
`substitutes Barvesten in for Alos, arguing that “[t]o the extent Patent Owner argues
`
`that ‘linked’ in claim 10 narrowly requires storing the same data in the identification
`
`module and mobile device for comparison purposes . . . , such a link would have
`
`been obvious to a PHOSITA” because Barvesten is alleged to teach such a link. Pet.
`
`21. As noted, Microsoft does not attempt to distinguish its Nokia/Barvesten ground
`
`from the Samsung IPR’s Nokia/Alos ground, except to note that Barvesten does not
`
`have the same name as Alos and to vaguely assert that Nokia is presented “in a
`
`different light.” Pet. 5.
`
`As argued by Microsoft, in Barvesten “the SIM-card includes an access-unit-
`
`identification code (IMSI-code) that is stored in EEPROM-storage in the mobile
`
`telephone,” and “[e]ach time the phone is activated, the phone and whatever SIM-
`
`card is present in the phone communicate with each other, and the IMSI-code stored
`
`
`
` 4
`
` U.S. Pat. Pub. 2002/0147028, Samsung IPR, EX1004.
`
`7
`
`
`
`IPR2019-01471
`U.S. Patent 6,836,654
`
`
`in EEPROM is compared with whatever IMSI-code is on the presently inserted SIM-
`
`card to confirm that it is indeed a linked identification module.” Pet. 21–22.
`
`Samsung previously alleged that “Alos describes a mobile terminal that is only
`
`activated if the mounted SIM card stores data that matches the corresponding data
`
`stored on the terminal.” Samsung IPR, Paper 1, 10. Any potential distinction
`
`between Alos and Barvesten had no effect on the arguments presented in Microsoft’s
`
`Petition as compared to Samsung’s.
`
`Similar to Ground 2 in this Petition, which relies on Schulz for an inactivity
`
`lock and Barvesten for verifying a link, see Pet. 45–55, Samsung relies on Matsukida
`
`for an inactivity lock and Alos for verifying a link, see Samsung IPR, Paper 1, 50–
`
`59. Microsoft fails to explain any material distinction between its Barvesten/Schulz
`
`ground and (1) the Nokia/Alos ground in the Samsung IPR, (2) the Matsukida/Alos
`
`ground in the Samsung IPR, or even (3) the Nokia/Barvesten ground in this Petition.
`
`Again, Microsoft hangs its hat on the mere difference in the names of the references.
`
`This is insufficient. See Medtronic, IPR2014-00487, slip op. at 6 (denying
`
`institution, explaining in part that “[w]hile Petitioner argues that the grounds are not
`
`redundant to those instituted on in the ’506 Proceeding, Petitioner does not provide
`
`any specific reasoning to support that argument, other than to state that the grounds
`
`are based on different prior art references.”); Intelligent Bio-Sys., IPR2013-00324,
`
`slip op. at 6 (“IBS does not distinguish any teaching present in Odedra that is lacking
`
`8
`
`
`
`IPR2019-01471
`U.S. Patent 6,836,654
`
`
`from Ju, Tsien, or any of the other references cited in the 128 Petition.”).
`
`As argued by Microsoft, “Schulz expressly discloses a mobile telephone that
`
`becomes locked; i.e., preventing normal operation, upon expiration of a predefined
`
`period of inactivity.” Pet. 53 (citing EX1008, EX1010, ¶ 215). In the Samsung IPR,
`
`Samsung contends Matsukida teaches “automatically engaging the dial lock state in
`
`response to inactivity by the user (i.e., no outgoing calls) during one of two
`
`predefined periods of time.” Samsung IPR, Paper 1, 53. As with Ground 1, any
`
`potential distinction between Alos and Barvesten, or between Matsukida and Schulz,
`
`had no apparent effect, and certainly no material effect, on the arguments presented
`
`in Microsoft’s Petition as compared to Samsung’s.
`
`In sum, for the reasons stated above, NHK Spring / Becton, Dickinson factors
`
`(a) through (f) and Petitioner’s lack of explanation on these factors favors denial of
`
`Microsoft’s petition, which relies on substantially the same prior art and raises
`
`substantially the same arguments raised in the Samsung IPR. Accordingly, the
`
`Board should exercise its discretion under 35 U.S.C. § 325(d) to deny the Petition.
`
`V. THE PETITION SHOULD BE DENIED FOR FAILING TO JUSTIFY
`FILING MULTIPLE, CONCURRENT PETITIONS ON THE ’654
`PATENT
`
`An additional factor weighing in favor of denying the Petition is Petitioner’s
`
`filing of two petitions on the ’654 patent at the same time, which places a substantial
`
`and unnecessary burden on the Board and the Patent Owner, and raises fairness,
`
`9
`
`
`
`IPR2019-01471
`U.S. Patent 6,836,654
`
`timing, and efficiency concerns. On the same day, Petitioner filed petitions on the
`
`’654 patent asserting unpatentability of (1) claims 1–9 based on various grounds
`
`including Nokia, Barvesten, Schultz, and Martino, in IPR2019-01470, and
`
`(2) claims 10–20 based on similar grounds including Nokia, Barvesten, and Schultz,
`
`in IPR2019-01471. As the Board recognized in the July 2019 Trial Practice Guide
`
`Update:
`
`Based on the Board’s prior experience, one petition should be
`
`sufficient to challenge the claims of a patent in most situations. Two or
`
`more petitions filed against the same patent at or about the same time
`
`(e.g., before the first preliminary response by the patent owner) may
`
`place a substantial and unnecessary burden on the Board and the patent
`
`owner and could raise fairness, timing, and efficiency concerns. See 35
`
`U.S.C. § 316(b). In addition, multiple petitions by a petitioner are not
`
`necessary in the vast majority of cases. To date, a substantial majority
`
`of patents have been challenged with a single petition.
`
`Trial Practice Guide Update, 26 (July 2019).
`
`This is not a “rare” case in which “more than one petition may be necessary,
`
`including, for example, when the patent owner has asserted a large number of claims
`
`in litigation or when there is a dispute about priority date requiring arguments under
`
`multiple prior art references.” Id. Petitioner argues that its multiple, concurrent
`
`petitions challenge different claims, and that this is not a case in which Petitioner
`
`“filed six separate petitions challenging claims 1-28 of the same patent.” Pet. 6.
`
`10
`
`
`
`IPR2019-01471
`U.S. Patent 6,836,654
`
`Neither excuse justifies Petitioner’s actions in this case. As to the first argument,
`
`the Trial Practice Guide Update provides no indication that merely dividing claims
`
`between two petitions justifies filing multiple petitions. As to the second argument,
`
`the Trial Practice Guide Update counsels that “one petition should be sufficient to
`
`challenge the claims of a patent in most situations” and recognizes that two or more
`
`may be a burden. Just because the two petitions here are not as extreme as six does
`
`not justify Petitioner’s filing of multiple, concurrent petitions on the ’654 patent. At
`
`least one of the petitions should be denied on at least this basis.
`
`VI. CONCLUSION
`
`For at least the reasons set forth above, Uniloc respectfully requests that the
`
`Board deny all challenges in the instant Petition.5
`
`Date: December 11, 2019
`
`
`
`
`
`Respectfully submitted,
`
`By: /Ryan S. Loveless/
`Ryan S. Loveless
`Reg. No. 51,970
`Attorney for Patent Owner
`
`
`
`
`
` Patent Owner does not concede, and specifically denies, that there is any legitimacy
`
`
`
` 5
`
`to any arguments in the instant Petition that are not specifically addressed herein.
`
`11
`
`
`
`IPR2019-01471
`U.S. Patent 6,836,654
`
`
`
`
`CERTIFICATE OF COMPLIANCE
`
`Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies that the foregoing
`
`Preliminary Response to Petition complies with the type-volume limitation of 37
`
`C.F.R. § 42.24(b)(1) because it contains fewer than the limit of 14,000 words, as
`
`determined by the word-processing program used to prepare the brief, excluding the
`
`parts of the brief exempted by 37 C.F.R. § 42.24(a)(1).
`
`Date: December 11, 2019
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`By: /Ryan S. Loveless/
`Ryan S. Loveless
`Reg. No. 51,970
`Attorney for Patent Owner
`
`i
`
`
`
`IPR2019-01471
`U.S. Patent 6,836,654
`
`
`CERTIFICATE OF SERVICE
`
`
`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that an
`
`electronic copy of the foregoing Patent Owner Preliminary Response was served,
`
`along with any accompanying exhibits that were filed with the paper via the
`
`PTAB E2E system, via email to Petitioner’s counsel at the following addresses
`
`identified in the Petition’s consent to electronic service:
`
`Todd M. Siegel, Reg. No. 73,232
`todd.siegel@klarquist.com
`Andrew M. Mason, Reg. No. 64,034
`andrew.mason@klarquist.com
`John M. Lunsford, Reg. No. 67,185
`john.lunsford@klarquist.com
`Joseph T. Jakubek, Reg. No. 34,190
`joseph.jakubek@klarquist.com
`
`
`Date: December 11, 2019
`
`
`
`Respectfully submitted,
`
`By: /Ryan S. Loveless/
`Ryan S. Loveless
`Reg. No. 51,970
`Attorney for Patent Owner
`
`
`ii
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
