Petitioner Microsoft Corporation
`
`IPR2020-00023 – U.S. Patent No. 6,467,088
`(Claims 1-4, 6-14, 16-21)
`
`Before SALLY C. MEDLEY, MIRIAM L. QUINN, and
`SCOTT RAEVSKY, Administrative Patent Judges.
`
`Derrick W. Toddy
`January 15, 2021
`11 AM ET
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`IPR2020-00023 – U.S. Patent No. 6,467,088
`(Claims 1-4, 6-14, 16-21)
`
`Before SALLY C. MEDLEY, MIRIAM L. QUINN, and
`SCOTT RAEVSKY, Administrative Patent Judges.
`
`Derrick W. Toddy
`January 15, 2021
`11 AM ET
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
`
`
`
`Petitioner Microsoft Corporation
`
`IPR2020-00023 – U.S. Patent No. 6,467,088
`(Claims 1-4, 6-14, 16-21)
`
`Before SALLY C. MEDLEY, MIRIAM L. QUINN, and
`SCOTT RAEVSKY, Administrative Patent Judges.
`
`Derrick W. Toddy
`January 15, 2021
`11 AM ET
`
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`
`
`Introduction
`
`Introduction
`
`Klarquist
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`
`
`Introduction – 088 Patent Summary
`
`Ex. 1001 (“088 Patent”), 1.
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`Introduction – 088 Patent Summary
`
`088 Patent, Abstract, cited in Petition, 1
`(highlighting throughout presentation is added,
`unless otherwise noted).
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`
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`Introduction – 088 Patent Summary
`
`088 Patent, FIG. 1,
`cited in Ex. 1003 (“Villasenor”), ¶¶ 23-24;
`Petition (Paper 2), 12.
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`Introduction – 088 Patent Summary
`
`[1.1] 1. A processor-implemented method for
`controlling the reconfiguration of an electronic
`device, the method comprising the steps of:
`[1.2] receiving information representative of a
`reconfiguration request relating to the electronic
`device;
`[1.3] determining at least one device component
`required to implement the reconfiguration request;
`
`[1.4] comparing the determined component and information
`specifying at least one additional component currently
`implemented in the electronic device with at least one of a list
`of known acceptable configurations for the electronic device
`and a list of known unacceptable configurations for the
`electronic device; and
`[1.5] generating information indicative of an approval or a
`denial of the reconfiguration request based at least in part on
`the result of the comparing step.
`
`Petition, 15-16 (highlighting and Petition element numbers added).
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`
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`Disputed Issues
`Disputed Issues
`
`Klarquist
`
`
`
`Disputed Issues
`
` Apfel inherently teaches “comparing.”
` Lillich teaches list of “known acceptable configurations.”
` Todd teaches list of “known unacceptable configurations.”
` The Petition sets forth motivations to integrate the teachings of both Todd and Lillich into Apfel’s system.
`
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`Unpatentability Grounds
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`
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`Unpatentability Grounds
`
` Patent Owner does not separately dispute Ground 2, or claims 2-4, 6-14, 16-21 of Ground 1.
` Grounds 3 and 4, as noted, are alternate grounds.
`
`Petition, 3.
`
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`Prior Art References Teaching Compatibility Determination
`
`Ex. 1004 (“Apfel”), 1.
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`
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`Prior Art References Teaching Compatibility Determination
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`12
`DEMONSTRATIVE EXHIBIT – NOT EVIDENCE
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`Ex. 1005 (“Lillich”), 1.
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`
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`Prior Art References Teaching Compatibility Determination
`
`Ex. 1006 (“Todd”), 1.
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`Undisputed Issues
`Undisputed Issues
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`
`
`Klarquist
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`
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`Undisputed Issues – Grounds and Claims
`
` Patent Owner does not separately argue Ground 2, which adds Pedrizetti to address additional elements of
`claims 9 and 19.
`
` Patent Owner does not separately argue for the patentability of claims 11 (an apparatus) and 21 (an article of
`manufacture) independent of its arguments for claim 1 (a method).
`
` Patent Owner does not separately argue for patentability of dependent claims 2-4, 6-10, 12-14, 16-20 of Ground 1.
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`Undisputed Issues – Claim Construction
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` Patent Owner does not dispute the following claim constructions, adopted by the Board:
`
`Petition, 18-19.
`
`Petition, 19-23.
`
`Petition, 23-25.
`
`Petition, 18-25; Institution Decision, 8.
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`
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`Disputed Issue #1 –
`Apfel inherently teaches “comparing”
`
`
`
`Apfel indisputably teaches “determining at least one device
`component required to implement the reconfiguration request”
`
`Apfel, 6:49-53, 9:30-38,
`cited in Villasenor, ¶¶ 79-80; Petition, 37-38.
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`Apfel also teaches identifying “additional component(s) currently
`implemented in the electronic device”
`
`Apfel, 8:53-66, cited in Villasenor, ¶ 82;
`Petition, 40.
`
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`Apfel teaches “known acceptable configurations” determining
`a “required” upgrade package that “should” be downloaded
`
`Apfel, 8:39-46, 53-55; 9:30-40; 6:63-67,
`cited in Villasenor, ¶¶ 82-84; Petition, 40-42.
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`Apfel inherently describes performing a comparison
`with a list of “known acceptable configurations”
`
`Villasenor, ¶ 85, cited in Petition, 42.
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`Apfel teaches that servers determine both upgrade packages that
`“should be downloaded” and that “should not be downloaded”
`
`Apfel, 7:13-19, cited in Villasenor, ¶ 90;
`Petition, 45.
`
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`In view of Apfel’s disclosure, it would have been obvious to
`compare to a list of “known unacceptable configurations”
`
`Villasenor, ¶ 91, cited in Petition, 45-46.
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`Disputed Issue #2 –
`Lillich teaches list of
`“known acceptable configurations”
`
`
`
`Lillich expressly discloses verifying compatibility using
`list of “known acceptable configurations”
`
`Lillich, 3:66-4:16, cited in Villasenor, ¶¶ 86-87;
`Petition, 42-44.
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`Dr. Villasenor explains that it would have been
`obvious to modify Apfel with Lillich
`
`Villasenor, ¶ 89, cited in Petition, 44-45.
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`Disputed Issue #3 –
`Todd teaches list of
`“known unacceptable configurations”
`
`
`
`Todd expressly discloses identifying conflicts, revision selection
`using list of “known unacceptable configurations”
`
`Todd, 3:15-32, 5:8-13, cited in Villasenor, ¶¶ 92-93;
`Petition, 46-47.
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`Todd expressly discloses
`list of “known unacceptable configurations”
`
`Todd, 3:15-32, 3:55-59, 5:8-13,
`cited in Villasenor, ¶¶ 92-93; Petition, 46-47.
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`Todd inherently describes
`comparing to a list of “known unacceptable configurations”
`
`Villasenor, ¶ 92, citing Todd, 3:15-32, 5:8-13,
`cited in Petition, 46-47.
`
`Todd, 3:43-50, cited in Villasenor, ¶ 94;
`Petition, 47-48.
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`Dr. Villasenor explains that it would have been
`obvious to modify Apfel with Todd
`
`Villasenor, ¶ 95, cited in Petition, 48.
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`Disputed Issue #4 –
`The Petition sets forth motivations to integrate the
`teachings of both Todd and Lillich into Apfel’s system.
`
`
`
`Like Apfel, Lillich is directed to verifying
`component compatibility in the context of an upgrade
`
`Lillich, 1:30-36, cited in Villasenor, ¶59;
`Petition, 26-27.
`
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`Dr. Villasenor explains the motivation to implement Lillich’s
`list of “known good configurations” in Apfel’s system
`
`Villasenor, ¶¶ 59, 61, cited in Petition, 26-28.
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`Dr. Villasenor explains how Lillich’s “known good configuration”
`list would be implemented in Apfel’s system
`
`Villasenor, ¶ 89, cited in Petition, 44-45.
`
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`Life Apfel, Todd is directed to determining compatibility and
`avoiding conflicts between and among system components
`
`Todd, 3:1-8, cited in Villasenor, ¶ 65;
`Petition, 29.
`
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`Dr. Villasenor explains the motivation to implement Todd’s
`list of “known bad configurations” in Apfel’s system
`
`Villasenor, ¶ 66, cited in Petition, 29-30.
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`Dr. Villasenor further explains how Todd’s “known bad
`configuration” list would be implemented in Apfel’s system
`
`Villasenor, ¶ 95, cited in Petition, 48.
`
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`Apfel describes that servers assess whether available upgrades
`“should” or “should not be downloaded”
`
` Apfel teaches that “required” upgrades
`“should” be downloaded:
`
` Apfel contrasts these with “incompatible” upgrades
`that “should not be downloaded”:
`
`Apfel, 8:53-55; 9:36-40, cited in Villasenor, ¶¶ 82, 83;
`Petition, 40, 41.
`
`Apfel, 7:13-19, cited in Villasenor, ¶ 90;
`Petition, 45.
`
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`Dr. Villasenor further explains how Todd’s and Lillich’s
`complementary teachings would benefit Apfel’s system
`
`Villasenor, ¶ 68, cited in Petition, 30.
`
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`Additional Issues
`
`Additional Issues
`
`Klarquist
`
`
`
`Claim 1 does not require that
`“a given upgrade necessarily will download”
`
`POR, 17.
`
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`Claim 1 does not require determining
`“interoperability … with a list”
`
`POR, 24.
`
`POR, 4.
`
`POR, 7 (claim 1).
`
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`Claim 1 does not require determining
`“interoperability … with a list”
`
`Villasenor Supp., ¶ 31, citing ‘088 3:52-58, FIG. 1,
`cited in Reply, 15-16.
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`Claim 1 does not require determining
`“interoperability … with a list”
`
`‘088, FIG. 1 (annotated), 3:52-58,
`cited in Villasenor Supp., ¶ 31; Reply, 16.
`
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`Claim 1 does not require determining
`“interoperability … with a list”
`
`‘088, FIG. 1 (annotated), 3:58-63,
`cited in Villasenor Supp., ¶ 37; Reply, 20.
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`“Should [not] be downloaded” language reflects a definitive
`determination of acceptable/unacceptable configuration
`
`Villasenor, ¶ 90, cited in Petition, 45.
`
`Ex. 1016 (“Villasenor Supp.”), ¶ 21, cited in Reply, 12;
`see also Villasenor Supp., ¶¶ 19-26, 27, 29,
`citing Villasenor, ¶¶ 83-85.
`
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`“Should [not] be downloaded” language reflects a definitive
`determination of acceptable/unacceptable configuration
`
`Villasenor, ¶ 83, citing Apfel, 9:30-42,
`cited in Petition, 41.
`
`48
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`
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`“Should [not] be downloaded” language reflects a definitive
`determination of acceptable/unacceptable configuration
`
`Villasenor Supp., ¶ 21, cited in Reply, 12;
`see also Villasenor Supp., ¶¶ 19-26,
`citing Villasenor, ¶¶ 83-85.
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`Apfel’s upgrade query includes multiple components
`
`Villasenor Supp. ¶ 44, cited in Reply, 24,
`quoting Villasenor, ¶ 78.
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`Late sur-reply argument that Apfel servers
`do not determine compatibility is incorrect
`
`PO Sur-reply, 9.
`
`Villasenor, ¶ 90, cited in Petition, 45.
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`Late sur-reply argument that an Apfel query may “fail”
`is not responsive to Petition’s showing of obviousness
`
`Apfel, 9:11-15, 11:49-67
`(portions cited in PO Sur-reply, 4).
`
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`Thank You
`
`Derrick W. Toddy
`January 15, 2021
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned certifies that on January 12, 2021, a true and correct copy of
`
`PETITIONER’S DEMONSTRATIVE EXHIBIT was served on counsel for Uniloc 2017 LLC
`
`via electronic mail as follows:
`
`Brett Mangrum – Lead Counsel
`brett@etheridgelaw.com
`Jeffrey A. Stephens – First Back-up Counsel
`jstephens@etheridgelaw.com
`Ryan Loveless – Back-up Counsel
`ryan@etheridgelaw.com
`James Etheridge – Back-up Counsel
`jim@etheridgelaw.com
`Jeffrey Huang – Back-up Counsel
`jeff@etheridgelaw.com
`Etheridge Law Group
`2600 E. Southlake Blvd., Ste. 120-324
`Southlake, TX 76092
`
`
`By: /Derrick W. Toddy/
`Derrick W. Toddy, Reg. No. 74,591
`derrick.toddy@klarquist.com
`KLARQUIST SPARKMAN, LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Tel: 503-595-5300
`Fax: 503-595-5301
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Page 1
`
`
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