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
`
`_________________
`
`
`
`PETITIONER’S REPLY TO
`PATENT OWNER’S RESPONSE TO THE PETITION
`
`
`
`
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`IPR2019-01471
`Patent 6,836,654
`
`_________________
`
`
`
`PETITIONER’S REPLY TO
`PATENT OWNER’S RESPONSE TO THE PETITION
`
`
`
`
`
`TABLE OF CONTENTS
`
`IPR2019-01471
`Patent 6,836,654
`
`Page(s)
`
`EXHIBIT LIST ........................................................................................................ iii
`
`I.
`
`INTRODUCTION ........................................................................................... 1
`
`II.
`
`CLAIM CONSTRUCTION ............................................................................ 1
`
`A.
`
`B.
`
`Patent Owner’s Interpretation Of The
`“Verifying” Limitation Lacks Any Evidentiary Support ...................... 2
`
`Patent Owner’s Interpretation
`Is Inconsistent With Its Construction In District Court ........................ 4
`
`III. THE CHALLENGED CLAIMS ARE
`UNPATENTABLE OVER NOKIA COMBINED WITH BARVESTEN ..... 5
`
`A. Nokia Satisfies The “Verifying” Claim Limitation .............................. 6
`
`B. Nokia In View Of Barvesten Renders
`Obvious The Challenged Claims Under Patent
`Owner’s Interpretation Or The District Courts’ Constructions ............ 9
`
`1.
`
`2.
`
`Barvesten Discloses Storing The SIM Card’s
`IMSI Code To Link The Card To The Device.......................... 10
`
`A PHOSITA Would Understand The Prior Art To Include
`Having A Single SIM Card Being Linked To The Device ....... 13
`
`C.
`
`Combining Nokia With Barvesten ...................................................... 16
`
`IV. THE CHALLENGED
`CLAIMS ARE UNPATENTABLE
`OVER BARVESTEN COMBINED WITH SCHULTZ ............................... 18
`
`V. APJS ARE PROPERLY APPOINTED AND CONSTITUTIONAL ........... 20
`
`VI. CONCLUSION .............................................................................................. 21
`
`CERTIFICATE OF COMPLIANCE ....................................................................... 22
`
`
`
`
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`Petitioner’s Reply to Patent Owner’s Response to Petition
`
`Page i
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`
`
`TABLE OF AUTHORITIES
`
`IPR2019-01471
`Patent 6,836,654
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`Page(s)
`
`Cases
`
`ABT Systems, LLC v. Emerson Elec. Co.,
`797 F.3d 1350 (Fed. Cir. 2015) ............................................................................17
`
`Amgen Inc. v. Hoechst Marion Roussel, Inc.,
`314 F.3d 1313 (Fed. Cir. 2003) .............................................................................. 9
`
`Arthrex, Inc. v. Smith & Nephew, Inc.,
`953 F.3d 760 (Fed. Cir. March 23, 2020) .............................................................20
`
`Bradium Technologies LLC v. Iancu,
`923 F.3d 1032 (Fed. Cir. 2019) .............................................................................. 8
`
`Elbit Sys. of Am., LLC v. Thales Visionix, Inc.,
`881 F.3d 1354 (Fed. Cir. 2018) .............................................................................. 8
`
`Icon Health & Fitness, Inc. v. Strava, Inc.,
`849 F.3d 1034 (Fed. Cir. 2017) .............................................................................. 8
`
`Iron Grip Barbell Co., Inc. v. USA Sports, Inc.,
`392 F.3d 1317 (Fed. Cir. 2004) ............................................................................16
`
`Kennametal, Inc. v. Ingersoll Cutting Tool Co.,
`780 F.3d 1376 (Fed. Cir. 2015) ............................................................................16
`
`Symbol Tech., Inc. v. Opticon, Inc.,
`935 F.2d 1569 (Fed. Cir.1991) ............................................................................... 9
`
`Titanium Metals Corp. of America v. Banner,
`778 F.2d 775 (Fed. Cir. 1985) ..............................................................................16
`
`Statutes
`
`35 U.S.C. § 103 ........................................................................................................21
`
`
`
`
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`Petitioner’s Reply to Patent Owner’s Response to Petition
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`Page ii
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`Patent 6,836,654
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`EXHIBIT LIST
`
`LIST OF NEWLY-FILED EXHIBITS
`
`Exhibits concurrently filed with Petitioner’s Reply to Patent Owner’s
`
`Response to Petition:
`
`No.
`
`Description
`
`1016
`
`1017
`
`1018
`
`1019
`
` Uniloc 2017 LLC v. HTC America, Inc., Case 2:18-cv-01732
`(WDWA), Plaintiff’s Opening Brief and Evidence in Support of
`Claim Construction, Dkt. 46, Filed March 27, 2020
`
` Uniloc 2017 LLC v. HTC America, Inc., Case 2:18-cv-01732
`(WDWA), Plaintiff’s Responsive Brief and Evidence in Support
`of Claim Construction, Dkt. 49, Filed April 10, 2020
`
` Uniloc 2017 LLC v. Motorola Mobility, LLC, Case 1:18-cv-
`01841 (DEL), Joint Claim Construction Brief, Dkt. 67, Filed
`December 23, 2019
`
` Uniloc 2017 LLC v. Google LLC, Case 2:18-cv-00493 (EDTX),
`Plaintiff’s Opening Claim Construction Brief, Dkt. 143, Filed
`December 2, 2019
`
`1020
`
` Second Declaration of Henry Houh dated July 23, 2020
`
`
`
`LIST OF PREVIOUSLY FILED EXHIBITS
`
`No.
`
`Description
`
`1001
`
`1002
`
`1003
`
`1004
`
` U.S. Patent No. 6,836,654 (“the ’654 patent”)
`
` File History of U.S. Patent No. 6,836,654
`
` Nokia 9000i Owner’s Manual (“Nokia Manual”)
`
` Business Week names Nokia 9000i Communicator a “Best New
`Product” of 1997, Nokia Press Release, Published January 14,
`1998,
`
`Petitioner’s Reply to Patent Owner’s Response to Petition
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`Page iii
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`
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`IPR2019-01471
`Patent 6,836,654
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`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
` Nokia introduces the new Nokia 9000i Communicator for GSM
`Markets, Nokia Press Release, November 5, 1997
`
` U.S. Patent 5,940,773 (“Barvesten”)
`
` Declaration of Steven Harris (with Exhibits A-B), dated June 13,
`2019
`
` Communication Device Inactivity Password Lock, Charles P.
`Schultz, November 1, 1996 (“Schultz”)
`
` French Application No. 9916136
`
` Declaration of Henry Houh, dated August 8, 2019 (“Houh
`Decl.”)
`
`1011
`
` U.S. Patent No. 5,913,175 (“Pinault”)
`
`1012
`
` Intentionally left blank
`
`1013
`
`1014
`
`1015
`
` Luca Benini et al., Policy Optimization for Dynamic Power
`Management, IEEE Transactions on Computer-Aided Design of
`Integrated Circuits and Systems, Vol. 18, No. 6, June 1999
`
` Declaration of Timo Henttonen, dated July 11, 2019
`
` Docket Navigator List of Cases involving U.S. Patent 6,836,654
`
`
`
`
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`Petitioner’s Reply to Patent Owner’s Response to Petition
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`Page iv
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`IPR2019-01471
`Patent 6,836,654
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`I.
`
`INTRODUCTION
`
`Patent Owner’s Response (Paper 9 (“POR”)) presents no new evidence to
`
`undermine the Board’s Institution Decision (Paper 7 (“Decision”)) finding a
`
`reasonable likelihood that claims 10-20 of U.S. Patent No. 6,836,654 (the
`
`“Challenged Claims”) are unpatentable. The Board should reject Patent Owner’s
`
`unsupported construction of the claimed “verifying” step and find all Challenged
`
`Claims unpatentable under both Ground 1 and Ground 2.
`
`II. CLAIM CONSTRUCTION
`
`The Board noted in its Decision that, at the Institution stage, no express claim
`
`constructions were needed. Decision, 16. Indeed, the claim language and prior art
`
`disclosures are sufficiently clear that no express constructions are needed. Patent
`
`Owner has submitted “that all claim terms be given their plain and ordinary
`
`meaning,” subject to certain arguments it makes about claim scope. POR, 6. Thus,
`
`this section addresses the claim scope issues expressly identified by the Patent
`
`Owner Response.
`
`With its Response, Patent Owner filed as exhibits various claim construction
`
`orders from various district courts in which the ’654 patent has been asserted. Exs.
`
`2001-2006. The POR does not specifically address or cite any of these decisions.
`
`Where constructions from these decisions are pertinent to the issues in this IPR,
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`Petitioner’s Reply to Patent Owner’s Response to Petition
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`Page 1
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`Petitioner addresses them either as part of this section or in discussing the Grounds
`
`to which they relate in Sections III-IV below.
`
`A.
`
`Patent Owner’s Interpretation Of The
`“Verifying” Limitation Lacks Any Evidentiary Support
`
`Patent Owner’s Response is based on a faulty interpretation of the scope of
`
`the following limitation required by each Challenged Claim: “ver[i]fying a user
`
`identification module mounted inside the mobile radiotelephony device is linked to
`
`the mobile radiotelephony device.” Patent Owner argues that “the ‘verifying’ step,
`
`when taken in the context of the ’654 Patent includes not only ‘confirming that a
`
`user identification module mounted inside the mobile radiotelephony device permits
`
`normal operation of the mobile radiotelephony device,’ but also limiting the use of
`
`the user identification module only to the device that it is linked with.” POR, 8
`
`(emphasis added). The underlined portion of Patent Owner’s claim interpretation is
`
`not found either in the claims, or the specification.
`
`Patent Owner argues that the “verifying” step requires “ensuring that the user
`
`identification module cannot be used with any other device” in addition to
`
`“authorizing the user identification module to permit the normal operation of the
`
`device.” POR, 8. In an attempt to restrict the claim language in this way, Patent
`
`Owner cites the ’654 patent, Fig. 3 and 2:56-3:6 for the patent’s disclosure
`
`discussing how the identification module is linked to the device: “The device is
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`Petitioner’s Reply to Patent Owner’s Response to Petition
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`Page 2
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`automatically linked by reading data from the identification module (e.g., the
`
`international identification number (IMSI)) and stores it in the random-access
`
`memory of the device.” POR, 8.
`
`Patent Owner then concludes—without support—that such disclosure means
`
`“the identification module is linked with the device in that the user identification
`
`module will only function with the device.” Id. However, nothing in that passage
`
`says anything about restricting the user identification module. For example, there is
`
`nothing in the specification that would prevent the module from being removed and
`
`installed in a different device that reads and stores its IMSI code. Nor is there
`
`anything in the specification that would prevent the user from removing the module
`
`and unlocking the device, and then locking the device with a different module
`
`inserted to link that module to the device. See, Ex. 1001, 2:61-3:5.
`
`Instead, the specification describes the Fig. 3 embodiment as depicting the
`
`process of either blocking or allowing operation of a device depending on whether
`
`the identification module has been linked to the device, and assuming the user has
`
`chosen to lock the device. Ex. 1001, 2:61-3:63. The district court in Uniloc 2017
`
`LLC v. Google LLC cited the discussion of the Fig. 3 embodiment in support of its
`
`construction of “linked user identification module” as “a user identification module
`
`that is the only one that permits normal operation of the device.” Ex. 2005, 9-13.
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`Petitioner’s Reply to Patent Owner’s Response to Petition
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`Page 3
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`Nevertheless, nothing in the specification passage requires that the identification
`
`module be restricted only to that device.
`
`Patent Owner goes on to contend that at 4:23-30, the ’654 patent “teaches that,
`
`should the user identification module be placed within another device, normal
`
`operation of the device is not permitted.” POR, 8. The ’654 patent teaches no such
`
`thing. The cited passage does not say that the user identification module will not
`
`work with any other device. Instead, it describes an embodiment in which the device
`
`can receive incoming calls even if the identification module is not linked to the
`
`device. Ex. 1001, 4:26-30 (“[I]t is possible for receiving incoming calls intended for
`
`the identification module that is inside the device, even when this identification
`
`module placed inside the device is not linked to the device.”). There is nothing about
`
`this embodiment that would limit the claimed “linked user identification module,”
`
`nor the “verifying” step as suggested by Patent Owner. Thus, notwithstanding Patent
`
`Owner’s conclusory, unsupported remarks, there is nothing in the patent that
`
`requires that the verification step perform such a test.
`
`B.
`
`Patent Owner’s Interpretation
`Is Inconsistent With Its Construction In District Court
`
`In addition to being inconsistent with the intrinsic evidence of the ’654 patent,
`
`Patent Owner’s interpretation here is also inconsistent with Patent Owner’s claim
`
`construction proposals made in district court proceedings involving the same patent,
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`Petitioner’s Reply to Patent Owner’s Response to Petition
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`Page 4
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`and inconsistent with each of the three district courts that have entered claim
`
`construction orders on the ’654 patent.1 Cf. Ex. 1016, 5-6, 20; Ex. 1017, 4; Ex. 1018,
`
`9-11; Ex. 1019, 1.
`
`Specifically, in its claim construction brief in the Google district court case,
`
`Patent Owner argued regarding the “verifying” step, “[t]he term is sufficiently clear
`
`on its face and in view of the surrounding claim language and the rest of the intrinsic
`
`evidence, such that no construction is necessary. To the extent the term requires
`
`construction, it means ‘confirming that a user identification module mounted
`
`inside the mobile radiotelephony device permits normal operation of the
`
`device.’” Ex. 1019, 1 (emphasis in original). Petitioner agrees that the “verifying”
`
`limitation “is sufficiently clear [], such that no construction is necessary” to properly
`
`compare the prior art to the claims. See Petition, 11, 19-25, 49-53.
`
`III. THE CHALLENGED CLAIMS ARE
`UNPATENTABLE OVER NOKIA COMBINED WITH BARVESTEN
`
`The only limitation that Patent Owner argues is not satisfied by the
`
`combination of the Nokia Manual with Barvesten is the “verifying” step, which
`
`claim 10 recites as “verifying a user identification module mounted inside the mobile
`
`radiotelephony device is linked to the mobile radiotelephony device.” Ex. 1001,
`
`
`1 Submitted herewith are claim construction briefs filed by Patent Owner in its
`district court litigations with Motorola Mobility LLC (Ex. 1018), Google LLC (Ex.
`1019), and HTC America, Inc. (Ex. 1016, Ex. 1017).
`
`Petitioner’s Reply to Patent Owner’s Response to Petition
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`Page 5
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`5:30-32. Specifically, Patent Owner argues that “the combination of references does
`
`not teach any user identification module that is linked to a device such that it can
`
`only function with that device.” POR, 7. As discussed in Section II above, the
`
`Challenged Claims are not so limited. Indeed, there is no discussion about other
`
`devices. Put simply, the ’654 patent is about securing the device; not securing the
`
`user identification module.
`
`A. Nokia Satisfies The “Verifying” Claim Limitation
`
`The Nokia Manual satisfies the “verifying” claim limitation under either a
`
`plain and ordinary meaning or under Patent Owner’s fallback proposed construction
`
`in the district court of “confirming that a user identification module mounted inside
`
`the mobile radiotelephony device permits normal operation of the device.” POR, 8.
`
`The Nokia Manual describes how the communicator mobile device requires a
`
`SIM card for network operation and how each time the mobile device turns on it
`
`checks whether a proper SIM card is inserted. The SIM card “contains all the
`
`information the GSM1900 network needs to identify the network user and also
`
`performs specific functions required by the network.” Ex. 1003, 11/131. The SIM
`
`“provides enhanced security features.” Id. “If an unacceptable SIM card is inserted,
`
`the message INVALID SIM CARD will be displayed.” Id. The Nokia Manual
`
`further discloses verifying the user identification module is linked to the mobile
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`Petitioner’s Reply to Patent Owner’s Response to Petition
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`Page 6
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`
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`phone every time the device is switched on (assuming the device’s “SIM change
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`security” feature is activated):
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`SIM change security – On / Off (default)
`
`When active, this security option checks whether the SIM
`
`card in the communicator has been changed. The check is
`
`made every time the phone interface is switched on. The
`
`SIM change security option can also be activated in the
`
`phone interface Security options menu (Menu 5 2).
`
`Id., 82/131. These disclosures teach to a PHOSITA that the Nokia device confirms
`
`that the inserted SIM card is linked to the device, permitting normal operation of the
`
`device. Petition, 19-20; Ex. 1010, ¶¶ 124-127.
`
`Patent Owner argues again—without evidentiary support—that the Nokia
`
`Manual does not teach that the SIM card is linked to the device, “but rather to the
`
`network,” and further, that “[t]he security option could be performed anywhere in
`
`the network of the network operator.” POR, 9-10. Patent Owner goes on to argue
`
`that the Nokia Manual “is silent as to exactly where the security option performs this
`
`checking operation,” and further, that “[t]here exists no teaching or suggestion
`
`within the entirety of Nokia that the phone checks whether the SIM card in the
`
`communicator has changed.” Id.
`
`Patent Owner’s arguments are unfounded. The Nokia disclosure above is
`
`clear, stating that the device’s “security option checks whether the SIM card in the
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`Petitioner’s Reply to Patent Owner’s Response to Petition
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`Page 7
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`communicator has been changed.” Ex. 1003, 82/131; see also Ex. 1010, ¶ 127. The
`
`most logical reading of this disclosure is that it is the device performing the check,
`
`therefore satisfying the “verifying” limitation. Presenting only unsupported attorney
`
`argument, Patent Owner does nothing to rebut the clear teachings of Nokia and Dr.
`
`Houh’s unrebutted testimony that the Nokia Manual discloses the verifying step. See
`
`Elbit Sys. of Am., LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1359 (Fed. Cir. 2018)
`
`(“‘Attorney argument is not evidence’ and cannot rebut other admitted evidence.”)
`
`(quoting Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir.
`
`2017)).
`
`In short, the record evidence makes clear that the Nokia Manual teaches a link
`
`between the SIM card and the communicator device (linked user identification
`
`module) and that each time the device is turned on, the device confirms (verifies)
`
`that the SIM card permits normal operation of the device. See Bradium Technologies
`
`LLC v. Iancu, 923 F.3d 1032, 1049 (Fed. Cir. 2019) (“[A] reference must be
`
`considered not only for what it expressly teaches, but also for what it fairly
`
`suggests.”) (quoting another source). Moreover, the Petition recognized that Patent
`
`Owner may argue that Nokia does not provide enough details with respect to the
`
`linking limitation. Petition, 21-25. As discussed below in Section III.B., Barvesten
`
`provides additional details regarding linking that make clear that Nokia combined
`
`with Barvesten satisfies this limitation.
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`Petitioner’s Reply to Patent Owner’s Response to Petition
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`Page 8
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`Patent Owner also argues—without evidence—that the teachings of the Nokia
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`Manual are not enabling. POR, 9. This argument is unavailing. Indeed, an
`
`obviousness analysis does not require that a prior art reference be enabling. Amgen
`
`Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1357 (Fed. Cir. 2003) (“Under
`
`section 103, however, a reference need not be enabled; it qualifies as a prior art,
`
`regardless, for whatever is disclosed therein.”). “A non-enabling reference may
`
`qualify as prior art for the purpose of determining obviousness under [section] 103.”
`
`Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578 (Fed. Cir.1991). Further,
`
`Patent Owner’s argument about Nokia cites no expert testimony and presents no
`
`evidence to undermine Dr. Houh’s testimony explaining why the Nokia Manual
`
`satisfies the “verifying” limitation of the Challenged Claims.
`
`B. Nokia In View Of Barvesten Renders
`Obvious The Challenged Claims Under Patent
`Owner’s Interpretation Or The District Courts’ Constructions
`
`As discussed above, the Board noted in its Decision that no express claim
`
`constructions were needed. Decision, 16. To the extent the Board now determines
`
`an express construction is needed and adopts a claim construction similar to what
`
`was adopted in the Motorola, Google, and/or Samsung litigations, it would,
`
`nonetheless, be satisfied by the Nokia Manual in view of Barvesten.
`
`The Petition acknowledged that Patent Owner may assert some special
`
`meaning of “linked user identification module.” Petition, 21-25. In the Motorola
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`Petitioner’s Reply to Patent Owner’s Response to Petition
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`Page 9
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`litigation, the district court construed “linked user identification module” to mean
`
`“an authorized user identification module that permits the normal operation of the
`
`device.” Ex. 2001, 3; see Ex. 1001, 3:21-37 (describing the device being in the
`
`available state if the inserted user identification module has been linked to the
`
`device). The district court in the Google litigation construed “linked user
`
`identification module” to mean “a user identification module that is the only one that
`
`permits normal operation of the device.” Ex. 2005, 13.
`
`In the Google litigation, the court construed the “verifying” step to mean
`
`“confirming that a user identification module mounted inside the mobile
`
`radiotelephony device permits normal operation of the mobile radiotelephony
`
`device.” Ex. 2005, 14. As discussed below, even under a narrower reading of this
`
`limitation, the Challenged Claims are nonetheless unpatentable as obvious over
`
`Nokia combined with Barvesten.
`
`1.
`
`Barvesten Discloses Storing The SIM Card’s
`IMSI Code To Link The Card To The Device
`
`Patent Owner argues that Nokia “does not [] teach that the SIM card is ‘linked’
`
`to the mobile phone within the meaning and intent of the ’654 Patent.” POR, 7. As
`
`shown above in Section III.A., the Nokia device confirms that the inserted SIM card
`
`is linked to the device, permitting normal operation of the device. Petition, 19-20;
`
`Ex. 1010, ¶¶ 124-127. Nonetheless, the Petition addressed the fact that Patent Owner
`
`Petitioner’s Reply to Patent Owner’s Response to Petition
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`Page 10
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`may argue for an interpretation of “linked” that was not expressly disclosed by the
`
`Nokia Manual by combining it with Barvesten. Petition, 21.
`
`Barvesten discloses the same “linking” disclosed by the ’654 patent. The ’654
`
`patent discloses “linking” the identification module to the device as follows: “the
`
`identification module that is inside the device is automatically linked to the device”
`
`when “the device starts reading a data D1 in the identification module (for example,
`
`the international identification number IMSI) and he [sic] stores it in the random-
`
`access memory 24.” Ex. 1001, 3:1-6. This information is later used at K4 to
`
`determine whether the identification module is indeed linked to the device.
`
`Ex. 1001, Fig. 3 (excerpt).
`
`
`
`Barvesten discloses essentially the same process. Ex. 1010, ¶¶ 128-129.
`
`Specifically, upon starting or activating a device with a SIM card installed,
`
`Barvesten discloses storing the SIM card’s IMSI-code in memory so that it may later
`
`be compared to confirm that the same SIM card has previously been linked with the
`
`same device.
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`Petitioner’s Reply to Patent Owner’s Response to Petition
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`Page 11
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`Upon starting up or activation of the telephone 1, the
`
`telephone 1 and the SIM-card 2 communicate with each
`
`other. The IMSI-code for the SIM-card(-s) 2 is (are) to be
`
`stored in a memory in the phone, e.g. in an EEPROM-
`
`storage.
`
`Ex. 1006, 4:24-28.
`
`Barvesten goes on to explain the comparing step to confirm that the SIM card
`
`has been linked to the device so as to permit normal operation.
`
`Upon activation of the telephone, wherein either a card
`
`already is present in the telephone 1 or a new one has been
`
`introduced, the actual IMSIc -code is sent to the telephone
`
`1 (according to the GSM-recommendation) via the
`
`microprocessor 4, as stated above, where it is compared to
`
`in the telephone 1 stored IMSIs,i-code(-s). If IMSIc
`
`corresponds to any IMSIs-code being stored in the
`
`telephone 1, the telephone is started up without requiring
`
`any further measure to be taken or without asking for any
`
`further code. If on
`
`the other hand
`
`there
`
`is no
`
`correspondence between the codes, the telephone 1
`
`demands a PINt-code for the terminal unit or the telephone
`
`1.
`
`Thus, on every occasion of activation of the telephone 1,
`
`in the storage 3 stored code(-s) (IMSIs,i) are compared with
`
`received code (IMSIc) of the actual SIM-card.
`
`Id., 4:45-59 (emphasis added); Ex. 1010, ¶ 128.
`
`Petitioner’s Reply to Patent Owner’s Response to Petition
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`Page 12
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`
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`IPR2019-01471
`Patent 6,836,654
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`Patent Owner argues that “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.” POR, 11. As discussed above,
`
`Patent Owner’s claim interpretation is unfounded. Restricting a user identification
`
`module to only the device it is initially linked with is not required by the claims, nor
`
`the specification of the ’654 patent. In any event, Barvesten supplies the technical
`
`detail for linking a SIM card, such as that disclosed by Nokia, with the device. It
`
`does so in the same way disclosed by the ’654 patent by storing in the device the
`
`identification module’s IMSI data for subsequent comparison and verification. Thus,
`
`Nokia combined with Barvesten satisfies the “verifying” limitation.
`
`2.
`
`A PHOSITA Would Understand The Prior Art To Include
`Having A Single SIM Card Being Linked To The Device
`
`As noted above, the district court in the Google litigation construed “linked
`
`user identification module” to mean “a user identification module that is the only
`
`one that permits normal operation of the device.” Ex. 2005, 13. In its Response,
`
`Patent Owner argued that Nokia and Barvesten do not satisfy this limitation by
`
`arguing about whether a particular SIM card can be used with only one device as
`
`opposed to what’s suggested by the Google construction that a device be restricted
`
`to only one SIM card. POR, 8-9. Nonetheless, a PHOSITA would understand the
`
`Petitioner’s Reply to Patent Owner’s Response to Petition
`
`Page 13
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`
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`IPR2019-01471
`Patent 6,836,654
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`combination of the Nokia Manual with Barvesten to include a device being linked
`
`to only one SIM card.
`
`For example, as noted by Patent Owner in its Response, the Nokia Manual
`
`provides “that the communicator mobile phone recognizes up to five different SIM
`
`cards. Ex. 1003, 82/131.” POR, 8. The full passage follows:
`
`If the SIM card has been changed and the new SIM card
`
`has not previously been used with your communicator, the
`
`communicator locks itself until the lock code, supplied
`
`with the communicator sales package, is correctly entered.
`
`The communi-cator recognizes five different SIM cards as
`
`the owner’s cards.
`
`Ex. 1003, 82/131.
`
`Nothing about this disclosure suggests that five different SIM cards are linked
`
`to the same device. Nor does it say that two different SIM cards are linked to the
`
`same device. Instead, Nokia is merely teaching that if the owner of the device wants
`
`to use the same device for multiple purposes (e.g., business vs. personal), the owner
`
`can swap out different SIM cards for each purpose. Indeed, the plain reading of the
`
`passage recognizes that perhaps the SIM card has not been changed and that only a
`
`single SIM card as previously been used – and linked – with the device.
`
`Furthermore, a PHOSITA would understand that notwithstanding the
`
`Manual’s statement about five SIM cards, in many cases, the owner of the device
`
`Petitioner’s Reply to Patent Owner’s Response to Petition
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`Page 14
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`
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`IPR2019-01471
`Patent 6,836,654
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`will use only one SIM card with the device. Second Decl. of Henry Houh, Ex. 1020,
`
`¶ 6. For example, a PHOSITA would understand that a device with no linked SIM
`
`cards would not be able to make subscriber calls. Id. On the other hand, if one SIM
`
`card was linked, then the device would be able to be used for its intended purpose of
`
`making calls. A PHOSITA would also understand that in many cases, the owner of
`
`the device would have no need to link or otherwise use a second SIM card, and that
`
`multiple linked SIM cards merely allow the ability to access different phone
`
`accounts. Id.
`
`Additionally, a PHOSITA would understand Barvesten to disclose the
`
`scenario where only one SIM card is linked with a particular device. Specifically,
`
`Barvesten discloses in its Summary Of The Invention section that the invention
`
`stores an IMSI code “for a given number (n) of access units (SIM) …” Ex. 1006,
`
`2:29-30. This disclosure certainly suggests that the “n” could be one, such that there
`
`would be only one SIM card associated with the device. Ex. 1020, ¶ 11. In its
`
`Detailed Description Of The Invention section, Barvesten goes on to explain that “it
`
`is possible to, apart from storing of the identity of the own [sic] SIM-card, i.e. its
`
`IMSI-code, also store the IMSI-codes of a number of other SIM-cards which should
`
`have a simplified or prioritized access to the terminal unit or the telephone 1.” Id.,
`
`4:33-38. There is nothing about this disclosure that would require multiple SIM
`
`cards or multiple IMSI-codes to be used in connection with Barvesten. Instead, a
`
`Petitioner’s Reply to Patent Owner’s Response to Petition
`
`Page 15
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`
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`IPR2019-01471
`Patent 6,836,654
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`PHOSITA would readily understand that Barvesten discloses the scenario of only
`
`one SIM card being linked to a single device. Ex. 1020, ¶ 12.
`
`Moreover, the law of obviousness makes clear that a claim requiring only one
`
`“linked user identification module” can nonetheless be rendered obvious by prior art
`
`where the protected mobile radiotelephony device may operate with multiple “linked
`
`user identification modules.” See, e.g., Kennametal, Inc. v. Ingersoll Cutting Tool
`
`Co., 780 F.3d 1376, 1385 (Fed. Cir. 2015) (prior art reference rendering claim
`
`obvious where PHOSITA reading the prior art would readily envisage the
`
`combination); Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d 1317, 1319-
`
`22 (Fed. Cir. 2004) (prior art disclosing 1, 2, or 4 elongated openings rendered
`
`obvious claim having three elongated openings); cf. Titanium Metals Corp. of
`
`America v. Banner, 778 F.2d 775, 782 (Fed. Cir. 1985) (“It is also an elementary
`
`principle of patent law that when, as by a recitation of ranges or otherwise, a claim
`
`covers several compositions, the claim is ‘anticipated’ if one of them is in the prior
`
`art.”).
`
`C. Combining Nokia With Barvesten
`
`Without evidence, Patent Owner argues “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.” POR, 12. Patent Owner goes
`
`Petitioner’s Reply to Patent Owner’s Response to Petition
`
`Page 16
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`
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`IPR2019-01471
`Patent 6,836,654
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`on to argue that Barvesten “teaches away from a SIM card checking technique used
`
`by Barvesten because such a system would not allow a network operator to control
`
`when and how its subsidized phones are used.” Id. In making this conclusory
`
`attorney argument, Patent Owner ignores the unrebutted testimony of Dr. Houh who
`
`testified as to why a PHOSITA would have been motivated to combine the
`
`references and would have had a reasonable expectation of success in doing so. Ex.
`
`1010, ¶¶ 55-58.
`
`Moreover, Patent Owner’s arguments are unfounded. Combining the
`
`teachings of Barvesten with the Nokia Manual would not impact a network
`
`operator’s ability to “prevent the use of the communicator with any other but the
`
`operator’s own SIM cards.” Ex. 1003, 11/131. Instead, combining Barvesten’s
`
`teachings with the Nokia Manual supplies the details for linking an operator-
`
`provided SIM card to the device. Moreover, even if there was some incompatibility
`
`with the references—which there are not—that would not undermine the
`
`obviousness of the challenged clams. See ABT Systems, LLC v.
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