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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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`IPR2020-00023
`U.S. PATENT NO. 6,467,088
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`PATENT OWNER SUR-REPLY
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`IPR2020-00023
`U.S. Patent No. 6,467,088
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`Table of Contents
`
`INTRODUCTION .............................................................................................. 1
`I.
`II. THE REPLY UNDERSCORES DEFICIENCIES OF THE
`PETITION .......................................................................................................... 1
`A. Petitioner misapplies the undisputed construction of “known” .................... 1
`B. Petitioner failed to prove Apfel inherently discloses the decisive
`“known” requirement recited in the comparison limitations recited
`in each challenged claim. .............................................................................. 2
`1. Apfel’s equivocating “should result” statement supports Patent
`Owner and is fatal to the Petition. ............................................................. 3
`2. Petitioner misunderstands why the Board’s prior reasoning
`defeats the cumulative argument Petitioner raises here. ........................... 6
`3. Petitioner’s declarant misses the point and offers opinions that
`contradict the record. ................................................................................. 8
`C. Petitioner fails to prove Lillich cures the deficiencies of Apfel
`regarding the decisive “known” requirement.............................................. 10
`1. The Board should reject Petitioner’s belated attempt to rewrite
`the claims. ................................................................................................ 10
`2. The Board should reject Petitioner’s belated attempt to read
`out limitations expressly differentiating claimed components. .............. 13
`3. Petitioner fails to defend its proposed combination as not
`changing the basic principles under which Apfel operates. .................... 15
`D. Petitioner fails to prove Todd cures the deficiencies of Apfel
`regarding the decisive “known” requirement.............................................. 16
`1. Petitioner overlooks indecisive language in Todd’s description
`of its conflict analysis. ............................................................................. 16
`2. The Board should reject Petitioner’s belated claim construction
`argument that impermissibly attempts to rewrite “with” as
`“using” instead. ....................................................................................... 17
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`U.S. Patent No. 6,467,088
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`3. The Board should reject Petitioner’s belated claim construction
`argument that impermissibly attempts to read out limitations. ............... 18
`4. The Board should reject Petitioner’s belated attempt to offer a
`new claim construction argument for the “list” term. ............................. 18
`E. The Petition fails to prove sufficient motivation to modify Apfel
`based on either Lillich or Todd in the manner proposed. ........................... 20
`Petitioner fails to show where the Petition maps a three-reference
`combination of Apfel, Lillich, and Todd to any claim language. ............... 21
`G. Patent Owner defers to its Response for remaining issues. ........................ 21
`III. CONCLUSION ................................................................................................ 22
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`F.
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`iii
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`I.
`
`INTRODUCTION
`Uniloc 2017 LLC (the “Patent Owner” or “Uniloc”) submits this Sur-Reply
`to the Petition for Inter Partes Review (“Petition”) of United States Patent No.
`6,467,088 (“the ’088 patent”) filed by Microsoft Corporation (“Petitioner”) in
`IPR2020-00023. For the reasons given in Patent Owner’s Response (Paper 10,
`“POR”) and herein, Petitioner fails to carry its burden of proving invalidity of the
`challenged claims of the ’088 patent.
`
`II. THE REPLY UNDERSCORES DEFICIENCIES OF THE PETITION
`A.
`Petitioner misapplies the undisputed construction of “known”
`As explained in Patent Owner’s Response, the Board (indeed this same Panel)
`previously offered informative claim construction findings in its decision denying
`institution of another petition challenging the same ’088 patent. See Apple Inc. v.
`Uniloc 2017 LLC, IPR2019-00056, Decision Denying Institution (Paper 7) at 7‒8
`(PTAB April 29, 2019). There, the Board adopted Patent Owner’s construction that
`“known” means “previously determined.” Id.1 The Board also found that, in art
`asserted there, “neither the client nor the server anticipates that the selected code
`
`
`1 A district court in parallel litigation involving the same patent adopted the same
`construction. See Uniloc 2017 LLC v. Apple Inc., Case No. 6:19-cv-532-ADA, Dkt.
`69, Claim Construction Order, (W.D.T.X. June 8, 2020) (construing “known
`[acceptable/unacceptable] configurations for the electronic device” as “[p]lain-and-
`ordinary meaning, wherein ‘known’ means ‘previously determined’”; and ordering
`“plain-and-ordinary meaning” for “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”).
`1
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`updates at this point are actually a ‘known acceptable configuration for the electronic
`device.’” Id., 11. The Board clarified its finding, in part, as follows:
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`U.S. Patent No. 6,467,088
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`Although the code updates at this point match some criteria of the
`client device, they are not “known” to be acceptable configurations,
`but merely “potentially appropriate.” The indecisive language
`“potentially” is not the required decisive language of “known”—a
`difference that Petitioner does not explain persuasively, if at all.
`
`Id., 11‒12.
`
`While Petitioner here purports to apply this same understanding of the
`“known” claim terms, Petitioner confirms in its Reply that its invalidity theory,
`instead, attempts to impermissibly expand claim scope to encompass what the Board
`previously found to be excluded.
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`B.
`
`Petitioner failed to prove Apfel inherently discloses the decisive
`“known” requirement recited in the comparison limitations
`recited in each challenged claim.
`
`It remains undisputed that Apfel does not expressly disclose at least the
`comparison limitations recited in each challenged claim. As recited in claim 1, for
`example, Apfel does not expressly disclose “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
`and a list of known unacceptable configurations for the electronic device.”
`Petitioner’s resort to a theory of inherency is woefully deficient of the exacting
`standard. See POR 16 (collecting cases).
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`IPR2020-00023
`U.S. Patent No. 6,467,088
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`1.
`
`Apfel’s equivocating “should result” statement supports
`Patent Owner and is fatal to the Petition.
`
`Both parties focus on the following statement in Apfel in addressing the
`disputed issue of inherency: “the database server 80a maintains a database of
`upgrade packages and corresponding configurations which should result in their
`download.” Apfel, 9:38−42 (emphasis added). As explained in Patent Owner’s
`Response, it is fatal to Petitioner’s inherency theory that Apfel uses indecisive
`“should result” language. POR 17−21. A literal reading of Apfel’s “should result”
`statement is that even when an upgrade is determined to available, it is not
`necessarily known whether an upgrade attempt will prove successful, much less in
`terms of “known acceptable configurations” as claimed.
`Despite that, according to Petitioner, “in order to identify upgrade packages
`and corresponding configurations which ‘should’ result in their download, Apfel’s
`system must necessarily have information on which proposed downloads are known
`to work with which existing configurations.” Reply 4 (emphasis added). Apfel itself
`refutes Petitioner’s speculation as to what the indecisive “should result” language
`allegedly “must necessarily” convey. Petitioner’s inherency theory reads critical
`disclosure out of Apfel and pretends that the reference actually says the opposite.
`That approach does not meet the exacting legal standard necessary to prove
`inherency by a preponderance of the evidence. See POR 16 (collecting cases).
`Petitioner’s primary argument is that Apfel’s “should result” statement is an
`implicit reference to disclosure elsewhere in Apfel that a user may be given a choice
`whether to attempt to proceed with an available upgrade. Reply 6 (citing Villasenor
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`Supp. ¶¶ 12–14). But Petitioner and its declarant fail to explain how “should result”
`necessarily refers to what a user either should or should not choose to do.
`Petitioner’s attempt to rewrite “should result” as reflecting user choice—and not an
`underlying aspect of the system—is inconsistent with the context of Apfel’s step 427
`(addressing system operation only) and the remainder of the disclosure.
`Petitioner cannot escape the fact that, in Apfel, the word “should” modifies
`the word “result” in the context in question. In other words, Apfel’s use of the word
`“should” expressly conveys that the “result” itself is indecisive. This only confirms
`that, even if a user chooses to proceed with a download attempt, it is not necessarily
`known whether the result will prove successful. When understood in its proper
`context, therefore, this indecisive language cannot reasonably be interpreted as
`necessarily referring only to the disclosure elsewhere in Apfel that a user may be
`given the option to choose to proceed with a download attempt, which is not itself
`the result of the operation. Cf. Reply 6 (disputing that Apfel “express[es]
`equivocation as to whether the result will occur”) (quoting POR 17, original
`emphasis by Patent Owner); see also Apfel, 10:30−33 (addressing user choice).
` Petitioner also overlooks the repeated acknowledgment in Apfel that its
`upgrade process may “fail”—independent of user choice. See, e.g., Apfel, 9:14,
`11:56, 11:63. That an upgrade operation might “fail” underscores the explicit
`indecisiveness of the “should result” statement. Id. This further undermines
`Petitioner’s interpretation that the “should result” statement must necessarily refer
`to an unstated expectation that a user will choose to proceed with an upgrade attempt.
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`Petitioner attempts to inoculate Apfel’s “should result” indecisiveness by
`arguing that the challenged claims of the ’088 patent “do not require any actual
`download necessarily must occur.” Reply 8. Petitioner misunderstands the relevant
`point of distinction here. Patent Owner has not argued that the challenged
`independent claims require an actual download.2 Rather, Apfel’s indecisiveness
`reveals that, even when an upgrade is determined to be available (in step 427), it is
`not necessarily known whether an attempted upgrade will result in acceptable
`configurations. The indecisiveness in Apfel is plainly distinguishable from the
`“known” requirement set forth in all challenged claims.
`Petitioner confirms in its Reply that its inherency theory fails to appreciate
`that Apfel explicitly differentiates availability from compatibility. According to
`Petitioner, Apfel inherently discloses that a “known compatible upgrade” is
`identified “upon a ‘yes’ output from box 427 in Figure 4A.” Reply 14 (citing Ex.
`1016 ¶ 24). But Apfel explicitly states that a “yes” output from step 427 in Figure
`4A merely reflects a determination “that a new upgrade is available.” Apfel, 10:7−9
`(“[I]f at decision step 427 it is determined that a new upgrade is available, then the
`method proceeds to step 433 (FIG. 4B).”); see also id. at 9:40−42 (“If, at decision
`step 427, it is determined that an upgrade is not available, then the method proceeds
`
`
`2 Petitioner acknowledges that certain challenged dependent claims do indeed
`require “download[ing] the determined component to the electronic device if the
`determined component and the additional component are consistent with a given one
`of the known acceptable configurations[.]” Reply 8 n.1 (quoting similar limitations
`recited in claims 3 and 13).
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`to step 430.”). Apfel further explains that even if an upgrade is deemed available,
`it may still ultimately prove to be incompatible with a given computer. Apfel,
`7:16−19. It follows that Apfel’s availability determination in step 427 cannot be
`conflated with Apfel’s expressly-distinct concept of compatibility, much less with
`the claimed comparisons involving “known acceptable configurations” and “known
`unacceptable configurations.”
`For a multitude of reasons, therefore, Petitioner has failed to meet the exacting
`standard necessary to prove inherency, particular in view of the indecisive nature of
`Apfel’s disclosure. See POR 16 (citing authority addressing the exacting standard
`for proving obviousness through inherency).
`
`2.
`
`Petitioner misunderstands why the Board’s prior reasoning
`defeats the cumulative argument Petitioner raises here.
`
`Petitioner claims the Board’s Institution Decision here “implicitly found”
`inapplicable the Decision Denying Institution in Apple Inc. v. Uniloc 2017 LLC,
`IPR2019-00056, (Paper 7) (PTAB April 29, 2019) (“Apple”). Reply 10. That is
`incorrect. The Institution Decision from this case does not address or distinguish the
`Apple decision, which issued nearly a year earlier. If the Board here had already
`found the reasoning in Apple to be inapplicable, surely it would have said so.
`The findings from Apple equally apply to this case. As explained in the
`Response, Apple found that “[t]he indecisive language ‘potentially’ is not the
`required decisive language of ‘known’—a difference that Petitioner does not explain
`persuasively, if at all.” See, e.g., POR 10−11, 18−21 (quoting Apple, IPR2019-
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`00056, Paper 7 at 11−13). In Apple, the Board found that the petition failed to meet
`the threshold burden, in part, because the cumulative art required “an additional
`step” to determine whether a “potentially appropriate” (e.g., available) update should
`actually proceed. Apple, IPR2019-00056, Paper 7 at 12‒13.
`Petitioner attempts to distinguish Apple because the reference at issue there
`“left open the possibility that the Cole code updates were not appropriate, and
`therefore not ‘known’ to be acceptable configurations.” Reply 10 (internal
`quotations and citations omitted). As explained above, however, Apfel similarly
`acknowledges that even when an upgrade is determined to be available, it is not
`necessarily known it will ultimately be acceptable with a given computer. See, e.g.,
`Apfel, 7:16−19; 9:14, 11:56, 11:63. To borrow from the Board’s reasoning in Apple,
`an “additional step” or more would be required to address the indecisiveness of
`whether an available upgrade that only should result in a successful operation (i.e.,
`is only “potentially appropriate”) will necessarily result in success. Apple,
`IPR2019-00056, Paper 7 at 12‒13. Petitioner’s attempt to distinguish Apple only
`underscores the applicability of the same reasoning here. Given Apfel’s
`acknowledged uncertainty, it is not surprising that Apfel uses indecisive “should
`result” language in describing step 427.
`In view of a more developed record, the Board should adopt analogous
`reasoning here as it did in Apple. The indecisive language at issue here is even more
`dispositive than it was in Apple because (1) the inherency theory here requires a
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`more exacting standard than what was considered in Apple; and (2) the burden of
`proof applicable at the trial stage here is a preponderance of the evidence.
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`3.
`
`Petitioner’s declarant misses the point and offers opinions
`that contradict the record.
`
`Petitioner falsely asserts that Dr. Villasenor’s opinion must be accepted as
`correct ostensibly because Patent Owner relies exclusively on attorney argument.
`Reply 1. Petitioner misrepresents both the law and the record here. It is well
`established, for example, that a declarant’s opinion “must” be disregarded where it
`“is plainly inconsistent with the record, or based on an incorrect understanding of
`the claim[s].” See Ericsson Inc. v. Intellectual Ventures I LLC, 890 F.3d 1336, 1346
`(Fed. Cir. 2018) (quoting Homeland Housewares, LLC v. Whirlpool Corp., 865 F.3d
`1372, 1378 (Fed. Cir. 2017) (citations and internal quotation marks omitted) (second
`alteration in original)).
`Dr. Villasenor newly argues in his supplemental declaration that the
`indecisive “should result” language in Apfel concerns only “whether the user
`chooses to actually download the recommended upgrade.” Ex. 1016 ¶ 14. His
`conclusory statement is accompanied only with an equally conclusory (and
`irrelevant) statement that “[t]he result in question is not determining that a given
`configuration is compatible or ‘comparing to a known list of acceptable
`configurations’” ostensibly because “at the point that this choice is presented to the
`user, the compatibility determination for the proposed downloads that ‘should result
`in their download’ has already been performed.” Id.
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`IPR2020-00023
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`Dr. Villasenor misses the point; and his supplemental characterization of
`Apfel makes no mention of the “known” requirement recited in the comparison
`limitations. Petitioner cannot save its inherency theory merely by asserting that
`Apfel discloses executing step 427 (determining whether an upgrade is available)
`before step 442 (determining whether the user selected to proceed with upgrade
`attempt). Regardless of the sequence of steps, Petitioner and its declarant simply
`fail to prove its theory that Apfel inherently discloses it is necessarily known that an
`upgrade merely determined to be available will result in an acceptable configuration.
`Petitioner could not do so because Apfel states that, at best, the operation only
`“should result” in success (and hence admittedly may not work). Apfel, 9:38−40.
`Simply put, Apfel itself expressly acknowledges that ultimate compatibility and
`success is uncertain, notwithstanding the execution of its step 427. Id. This falls far
`short of the “known” requirement set forth in the claims. Dr. Villasenor fails to
`defend the inherency theory of the Petition against this fatal deficiency.
`Dr. Villasenor also incorrectly argues Apfel “inherently teaches” that an
`upgrade is known to be compatible “upon a ‘yes’ output from box 427 in Figure
`4A.” Ex. 1016 ¶ 24; see also Reply 13 (citing the same). As explained above, Apfel
`itself explicitly differentiates availability from compatibility; and its description of
`step 427 repeatedly states the outcome is merely a determination of availability.
`Apfel, 10:7−9; 9:40−42. Dr. Villesnor’s unsupported opinion should be disregarded
`as attempting, without any explanation or rational underpinning, to conflate into one
`what Apfel itself expressly distinguishes.
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`For the foregoing reasons, Dr. Villasenor’s original and supplemental
`declarations offer only conclusory opinion that “must” be disregarded as “plainly
`inconsistent with the record, or based on an incorrect understanding of the claim[s].”
`See Ericsson, 890 F.3d at 1336; Homeland, 865 F.3d at 1378.
`C.
`Petitioner fails to prove Lillich cures the deficiencies of Apfel
`regarding the decisive “known” requirement.
`
`Petitioner fails to prove Lillich cures the deficiencies of Apfel. Petitioner’s
`Reply fails to point to a disclosure in Lillich that would allegedly supply the
`“known” decisiveness entirely missing from Apfel. Petitioner compounds its error
`by repeatedly attempting in its Reply to raise new (and hence waived) claim
`constructions. This only confirms that the Petition is tacitly keyed to incorrect
`constructions, which are not defended or even identified within the Petition itself.
`Petitioner and its declarant also fail to address why it would have been obvious to
`modify Apfel’s process directed to determining download availability from a server
`with Lillich’s distinct verification directed to programs that are already locally
`present (and hence need not be downloaded). Petitioner also fails to prove its
`modification would not change the basic principles under which Apfel operates.
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`1.
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`The Board should reject Petitioner’s belated attempt to
`rewrite the claims.
`
`Petitioner’s first belated and erroneous claim construction argument is
`essentially that the claim language does not mean what it says. As recited in claim
`1, the “comparing” step recites “comparing the determined component and
`information specifying at least one additional component currently implemented in
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`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.”
`Petitioner chides Patent Owner for identifying example deficiencies under a
`plain-and-ordinary understanding that “with” simply means what it says. Reply 15
`(“There is no determination of interoperability with the list(s).”) (original emphasis
`by Petitioner). Petitioner doth protest too much. Rather than accept that “with”
`simply means what it says, Petitioner newly argues, for the first time in its Reply,
`that this term should be rewritten as “using” instead. Id. (“Rather, component
`interoperability is determined using the list(s).”) (original emphasis by Petitioner).
`Petitioner fails to explain how rewriting “with” as “using” in this context is
`consistent with the term’s plain-and-ordinary meaning and the specification. See,
`e.g., K-2 Corp. v. Salomon S.A., 191 F.3d 1356, 1364 (Fed. Cir. 1999) (“Courts do
`not rewrite claims; instead, we give effect to the terms chosen by the patentee.”);
`Tex. Instruments, Inc. v. U.S. Int’l Trade Comm’n, 988 F.2d 1165, 1171 2008-1027
`7 2008-1027 8 (Fed. Cir. 1993) (“[C]ourts can neither broaden nor narrow claims to
`give the patentee something different than what he has set forth.”) (internal quotes
`omitted); see also Mentor Graphics Corp., v. Synopsys, Inc., IPR2014-00287, 2015
`WL 3637569, (Paper 31) at *11 (P.T.A.B. June 11, 2015), aff’d sub nom. Synopsys,
`Inc. v. Mentor Graphics Corp., 669 Fed. Appx. 569 (Fed. Cir. 2016) (denying
`petition as tainted by reliance on an incorrect claim construction); Vivint, Inc. v.
`Alarm.com Inc., 754 F. App’x 999, 1005 (Fed. Cir. 2018) (vacating and remanding,
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`in part, because Board had adopted and applied certain incorrect claim
`constructions); IBM v. Iancu, 759 F. App’x 1002, 1005–06 (Fed. Cir. 2019) (finding
`revisable error where the Board’s interpretation of key claim limitations was
`incorrect) (unpub.).
`The ’088 patent specification repeatedly describes comparing components
`“with” lists. See, e.g., Abstract (“The reconfiguration manager then compares the
`needed and currently implemented components with previously-stored lists of
`known acceptable and unacceptable configurations for the electronic device.”);
`2:37−41 (same). With reference to Figure 2, for example, the ’088 patent teaches
`that certain configurations are compared with lists of known good and bad
`configurations. Id., 4:62−5:49. A given comparison with the lists may return an
`“empty” or “not empty” result, for example. Id. The ’088 patent further teaches that
`comparison with a given list of known acceptable or unacceptable configurations at
`times must consider “other parameters associated with the device” (4:21−22) and
`“additional components that are prerequisites for the requested upgrade” (5:35−36).
`Accordingly, there is no merit to Petitioner’s new argument that the
`challenged claims recite “no determination of interoperability with the list(s).”
`Reply 15 (original emphasis by Petitioner). The Board should give effect to the
`“with” term chosen by the patentee and should deny Petitioner’s invalidity theory as
`being admittedly keyed to a construction that is untethered to the claim language.
`Petitioner’s belated and erroneous attempt to rewrite the claims provides an
`independent basis for denial here.
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`2.
`
`The Board should reject Petitioner’s belated attempt to read
`out limitations expressly differentiating claimed components.
`
`Petitioner’s second and belated claim construction argument, again raised for
`the first time in its Reply, is that “[t]he step of determining compatible or
`incompatible version numbers by comparing them to a list is agnostic as to whether
`those components are currently installed or not (or, if installed, whether they are
`“executing locally” or not).” Reply 17. Petitioner overlooks claim language which
`expressly differentiates—in terms of implementation—the two components. See
`POR 13−15, 22−24.
`A relevant portion of Patent Owner’s Response is reproduced below:
`
`The “comparing” / “compare” limitations also expressly
`differentiate “the determined component” from the “information
`specifying at
`least one additional component currently
`implemented in the electronic device” at least in that only the
`latter element is identified as being “currently implemented in
`the electronic device.” This differentiation of the elements used
`in the “comparing” is further underscored by the antecedent basis
`referenced by use of the article “the” in the term “the determined
`component.” This construct makes explicit antecedent reference
`to the step “determining at least one device component required
`to implement the reconfiguration request;” and the reference to
`“the reconfiguration request” in the “determining” step derives
`its antecedent basis from the reconfiguration request introduced
`in the “receiving” step.
`Under a plain reading of the claim language, therefore, the
`term “the determined component” recited in the “comparing”
`step must be a component that had been determined to be
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`required to implement a received reconfiguration request relating
`to the electronic device. Under this informative context, the term
`“the determined component” does not refer to a component
`currently implemented in the electronic device, but rather it is a
`new
`component
`required
`to
`implement
`a
`requested
`reconfiguration of that device.
`POR 14−15. As Patent Owner explained in its Response, the claim language recites
`the “one additional component” as being “currently implemented in the electronic
`device.” Id. By contrast, the claim recites “the determined component” as
`something needed to implement a requested reconfiguration of an electronic device.
`This explicit differentiation between a component “currently implemented in
`an electronic device” from one that is not reflects corresponding teachings of the
`’088 patent. The Summary of the Invention, for example, differentiates a “needed”
`component not currently implemented in a device from one that is “currently
`implemented” in the device. See, e.g., ’088 patent, 2:34−52.
`Contrary to what Petitioner newly argues in its Reply, the claim language is
`explicit, and not agnostic, as to whether a component must be “currently
`implemented in the electronic device.” It is only Petitioner’s belated and untethered
`claim construction that remains admittedly agnostic to this explicit requirement.
`Petitioner’s new claim construction does not save the Petition from the undisputed
`fact that Lillich’s “verification technique applies to the clearly distinguishable
`context of a client program and a provider program that are both currently installed
`and executing locally in memory of the same computer system.” POR 24.
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`3.
`
`Petitioner fails to defend its proposed combination as not
`changing the basic principles under which Apfel operates.
`
`Petitioner ignores the record in arguing that modifying Apfel based on Lillich
`would not change the basic principles under which Apfel operates and that the
`disclosures are compatible. Reply 18. At a minimum, Petitioner and its declarant
`overlook that Apfel’s process focuses on determining whether software stored at a
`remote server is available for download over the Internet. Apfel, 9:30−42. By
`contrast, Lillich’s “verification technique applies to the clearly distinguishable
`context of a client program and a provider program that are both currently installed
`and executing locally in memory of the same computer system.” POR 24. Petitioner
`and its declarant fail to explain why it would have been obvious to modify Apfel’s
`process for determining availability for download, with, instead, Lillich’s
`verification of programs that are already locally present and implemented (and
`hence need not be downloaded).
`Rather than directly address this incompatibility of the references, Petitioner
`argues that “Apfel . . . is agnostic as to whether the components themselves are
`currently on the system or not.” Reply 18. This of course ignores the entire context
`of Apfel’s focus on determining whether upgrades are available to download from a
`remote server. Indeed, it remains undisputed that Apfel’s download process and
`corresponding determinations require a remote server. See id.
`Dr. Villasenor undermines his own credibility by simply repeating, without
`explanation, Petitioner’s “agnostic” characterization of Apfel, which is plainly
`inconsistent with the disclosure. Ex. 1016 ¶ 35. Wholly absent from his
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`supplemental declaration is any rational explanation as to why it would have been
`obvious to modify a process specific to determining whether upgrades are available
`to download from a remote server with instead, a verification process reliant upon
`programs being already present on the device. Dr. Villasenor errs in attempting to
`dismiss this point of incompatibility as irrelevant, which he bases on his plainly false
`understanding that the claim language is “agnostic” as to implementation location.
`
`D.
`
`Petitioner fails to prove Todd cures the deficiencies of Apfel
`regarding the decisive “known” requirement.
`
`Petitioner fails to prove Todd cures the deficiencies of Apfel and Lillich
`regarding the “comparing” / “compare” limitations. Petitioner reliance on Todd
`simply doubles-down on the same error arising from Petitioner’s flawed assertion of
`Lillich. The Board should reject Petitioner’s alternative assertion of Todd for at least
`analogous reasons to those presented above in addressing Lillich.
`
`1.
`
`Petitioner overlooks indecisive language in Todd’s
`description of its conflict analysis.
`First, Petitioner is silent in its Reply as to whether and how Todd cures the
`deficiency of Apfel arising from the decisive “known” requirement. Petitioner and
`its declarant overlook that Todd itself expressly concedes the indecisive nature of its
`“conflicts” analysis. For example, Todd describes its analysis as involving
`“identifying conflicts (in step 245) that may [(and hence may not)] cause trouble for
`the user in the future.” Todd, 14:16−18 (emphasis added). This is precisely the sort
`of indecisive language that the Board found distinguishable from the claims in
`Apple. See Apple, IPR2019-00056, Paper 7 at 11‒13 (“Although the code updates
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`at this point match some criteria of the client device, they are not ‘known’ to be
`acceptable configurations, but merely ‘potentially appropriate.’ The indecisive
`language ‘potentially’ is not the required decisive language of ‘known’—a
`difference that Petitioner does not explain persuasively, if at all.”).
`
`2.
`
`The Board should reject Petitioner’s belated claim
`construction argument that impermissibly attempts to
`rewrite “with” as “using” instead.
`Second, Petitioner confirms its assertion of Todd fails to give effect to the
`“with” term chosen by