Patent Owner’s Demonstratives
`
`Microsoft Corp.,
`v.
`Uniloc 2017 LLC
`
`IPR2020-00023
`U.S. Patent No. 6,467,088
`
`Before Sally C. Medley, Miriam L. Quinn, and
`Scott Raevsky, Administrative Patent Judges.
`
`Oral Hearing
`January 15, 2021
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`
`
`Microsoft Corp.,
`v.
`Uniloc 2017 LLC
`
`IPR2020-00023
`U.S. Patent No. 6,467,088
`
`Before Sally C. Medley, Miriam L. Quinn, and
`Scott Raevsky, Administrative Patent Judges.
`
`Oral Hearing
`January 15, 2021
`
`DEMONSTRATIVE EXHIBIT - NOT EVIDENCE
`
`
`
`Overview of the ’088 patent
`
`In a preferred embodiment, the ’088 patent solves certain computer-related
`problems ofits time (over two decades ago) through use of a novel
`reconfiguration manager 10, which 1s described in part with reference to
`Figure 1, reproduced below:
`
`auimeui KNOWN BAD CONFIG.
`
`RECONFIGURATION MANAGER
`
`KNOWN CONFIGURATIONS
`
`REPOSITORY
`FSW
`COMPONENTS
`
`KNOWN GOOD CONFIG,
`
`REQUEST
`
`WANT UPGRADE TO A V2.0
`
`20
`
`12
`
`DEVICEX
`
`RESPONSE
`
`Gi)
`
`
`
`Challenged Claims
`
`The Petition purports to challenge claims 1-4,
`6-14, and 16-21 of 6,467,088.
`
`Three of the challenged claims are written in
`independent form—i.e., claims 1, 11 and 21.
`
`Thetext of the three independentclaims are
`reproducedin theslides that follow.
`
`
`
`Petitioner challenges claims 1-4, 6-14, and 16-21
`
`1. A processor-implemented method for controlling the
`reconfiguration of an electronic device, the method
`comprisingthestepsof:
`
`receiving information representative of a reconfiguration
`request relating to the electronic device;
`
`determiningat least one device component required to
`implementthe reconfiguration request;
`
`comparing the determined component and information
`specifying at least one additional componentcurrently
`implementedin the electronic device with at least one
`of a list of known acceptable configurationsfor the
`electronic device anda list of known unacceptable
`configurationsfor the electronic device; and
`
`generating information indicative of an approval ora
`denial of the reconfiguration request basedatleast in
`part on the result of the comparingstep.
`
`
`
`Petitioner challenges claims 1-4, 6-14, and 16-21
`
`21. An article of manufacture comprising a machine-
`readable medium containing one or more software
`programswhich when executed implementthe stepsof:
`
`receiving information representative of a reconfiguration
`request relating to an electronic device;
`
`determiningat least one device component required to
`implementthe reconfiguration request;
`
`comparing the determined component and information
`specifying at least one additional componentcurrently
`implementedin the electronic device with at least one
`of a list of known acceptable configurationsfor the
`electronic device anda list of known unacceptable
`configurationsfor the electronic device; and
`
`generating information indicative of an approval ora
`denial of the reconfiguration request basedatleast in
`part on the result of the comparingstep.
`
`
`
`Petitioner challenges claims 1-4, 6-14, and 16-21
`
`11. Anapparatusfor controlling the reconfiguration of an
`electronic device, the apparatus comprising:
`a memory for storing at least one ofa list of known acceptable
`configurations for the electronic device and a list of known
`unacceptable configurations for the electronic device; and
`a processor coupled to the memory and operative
`(i)
`to receive information representative ofa
`reconfiguration requestrelating to the electronic device;
`(ii) to determineat least one device component required to
`implementthe reconfiguration request;
`(iii)to compare the determined componentandinformation
`specifying at least one additional component currently
`implementedin the electronic device with at least one of
`the list of knownacceptable configurations for the
`electronic device andthelist of known unacceptable
`configurationsfor the electronic device; and
`(iv) to generate information indicative of an approval ora
`denialof the reconfiguration request basedatleast in
`part on the comparisonoperation.
`
`
`
`Petitioner misapplies the undisputed construction of “known”
`
`1) The Board previously determined, in denyinginstitution in
`IPR2019-00056 of an IPR challenging the same ’088 patent,
`that the “known”claimtermmeans“previously
`
`2) Underthat construction, the Board explained certain
`patentable distinctions overthe art as follows:
`
`“Although the code updatesat this point match some
`criteria of the client device, they are not ‘known’to be
`acceptable configurations, but merely ‘potentially
`appropriate.’ Theindecisivelanguage‘potentially’isnot
`therequireddecisivelanguageof‘known’—adifference
`
`that Petitioner does not explain persuasively,if at all.”
`
`See Apple Inc. v. Uniloc 2017 LLC, IPR2019-00056, Decision Denying Institution (Paper
`
`7) at 11-12 (PTABApril 29, 2019); see also Uniloc 2017 LLC v. AppleInc., 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‘previouslydetermined”).
`
`
`
`Apfel’s equivocating “should result” statement
`
`Both parties focus on the following statement in Apfel in
`addressing the disputed issue of inherency:
`
`
`
`“[T|he database server 80a maintains a database of
`upgrade packages and corresponding configurations
`which should result in their download.”
`
`Apfel, 9:38-42.
`
`A literal reading of Apfel’s “should result” statement is
`that even whenan upgradeis determinedto available,it
`is not necessarily Known whetheran upgrade attempt
`will prove successful, much less in terms of “Known
`acceptable configurations” as claimed. POSR3.
`
`
`
`Apfel’s equivocating “should result” statement
`
`Petitioner’s primary argumentis that Apfel’s “should
`result” statementis an implicit reference to disclosure
`elsewherein Apfel that a user may be given a choice
`whetherto attempt to proceed with an available upgrade.
`
`POSR 3-4 (citing Reply 6, which cites Villasenor Supp. 9] 12-14).
`
`Y Petitioner cannot escapethefact that, in Apfel, the word
`“should” modifies the word “result” in the context in
`question—i.e., Apfel’s use of the word “should” expressly
`conveysthat the “result”itself is indecisive. Id.
`
`Y Petitioner also overlooks the repeated acknowledgmentin
`Apfel that its upgrade process may“fail’—independent of user
`choice. Id. (citing Apfel, 9:14, 11:56, 11:63).
`
`v Apfel’s indecisiveness reveals that, even when an upgradeis
`determinedto be available (in step 427), it is not necessarily
`known whetheran attempted upgradewill result in
`acceptable configurations.
`
`
`
` Apfel distinguishes “available” from “compatible”
`
`Accordingto Petitioner, Apfel inherently discloses that a
`“Known compatible upgrade’is identified “upon a ‘yes’ output
`from box 427 in Figure 4A.”
`
`But Apfel explicitly states that a “yes” output from step 427 in Figure
`4A merely reflects a determination “that a new upgradeis available.’
`
`Apfel, 10:7-9 (“[I]f at decision step 427 it is determined that a
`new upgradeis available, then the method proceedsto step 433
`(FIG. 4B).”); see also id. at 9:40-42 (“If, at decision step 427,itis
`determined that an upgradeis not available, then the method
`proceedsto step 430.”’).
`
`
`
`(Apfel, Fig. 4A)
`TO STEP 433 (FIG 48)
`
`
`
`
`Apfel distinguishes “available” from “compatible”
`
`Apfel further explains that even if an upgrade is deemedavailable, it
`maystill ultimately prove to be incompatible with a given computer.
`POSR, 6 (citing Apfel, 7:16-19).
`
`
`
`“For example, even if an upgradeis available,it
`(Apfel, 7:16-19)
`should not be downloadedifthe computer 20
`already has the upgradeoriftheupgradeis
`somehow
`
`It follows that Apfel’s availability determination in step 427 cannot be
`conflated with Apfel’s expressly-distinct concept of compatibility,
`muchless with the claimed comparisons involving “known acceptable
`
`incompatiblewithcomputer20.’
`configurations” and “knownunacceptable configurations.”
`
`
`
`TO STEP 433 (FIG. 4B)
`
`(Apfel, Fig. 4A)
`
`
`
`Board’s prior reasoning in IPR2019-00056 also applies here
`
`Y In IPR2019-00056,the Board foundthatthepetition failed to
`meet the threshold burden, in part, because the cumulative art
`required “an additional step” to determine whethera “potentially
`appropriate”(e.g., available) update should actually proceed.
`POSR6-7 (citing Apple, IPR2019-00056, Paper7 at 12-13).
`
`v Apfel similarly acknowledges that even when an upgradeis
`determinedto be available, it is not necessarily known it will
`ultimately be acceptable with a given computer. Id. (citing Apfel,
`7:16-19; 9:14, 11:56, 11:63). To borrow from the Board’s prior
`reasoning, an “additional step” or more would be required to
`addressthe indecisiveness of whetheran available upgrade that
`only should result in a successful operation(i.e., is only
`“potentially appropriate”) will necessarily result in success.
`
`v Theindecisive languageat issue here is even more dispositive
`than it was in IPR2019-00056 because(1) the inherency theory
`here requires a more exacting standard than what was
`considered in Apple; and (2) the burden of proof applicable at the
`trial stage here is a preponderanceof the evidence.
`
`
`
`Petitioner misstates the law regarding declaration testimony
`
`Y Petitioner falsely asserts that Dr. Villasenor’s opinion
`must be accepted as correct ostensibly because Patent
`Ownerrelies exclusively on attorney argument.
`POSR8 (citing Reply 1).
`
`Y Itis well established, however, that a declarant’s
`opinion “must” be disregarded whereit “is plainly
`inconsistent with the record, or based on an incorrect
`understandingof the claim[s].’
`
`
`
`Id. (citing 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) (secondalteration in original)).
`
`
`
`Petitioner relies on testimony that “must” be disregarded
`
`The record expressly refutes Dr. Villasenor’s opinion that Apfel
`“inherently teaches” that an upgradeis necessarily “known”to
`be compatible “upon a ‘yes’ output from box 427 in Figure 4A.”
`POSR 9 (citing Ex. 1016 J 24 and Reply 13).
`
`As explained in Patent Owner'sbriefing, Apfel itself
`explicitly differentiatesavailabilityfrom compatibility.
`Apfel’s description of its step 427 repeatedly states the
`outcome merely concernsavailability; and Apfel
`acknowledgesthat ultimate compatibility and successis
`uncertain, notwithstanding the executionof its step 427.
`See generally POSR (discussing, e.g., Apfel, 10:7-9; 9:40-42).
`
`Contrary to whatDr. Villseanor argues,it is immaterial to the
`“Known”requirement whetherApfel discloses executing step
`427 (determining whetheran upgradeis available) before step
`442 (determining whetherthe userselected to proceed with
`upgrade attempt). POSR 8 (citing Ex. 1016 J 14).
`
`
`
`Petitioner relies on testimony that “must” be disregarded
`(Ex. 1016) J 24.
`
`“As noted earlier, the key disclosure at issue in Apfel 1s the
`decisive and unambiguous identification (upon a ‘yes’ output
`from box 427 in Figure 4A) of a known compatible upgrade.”
`
`Supp. Villasenor Dec.
`
`
`
`“In the exemplary embodiment, the database server 80a
`uses the information received in the HTTP query at step
`415 to determineifanupgradepackageisavailable,
`such as by a database lookup.... If, at decision step 427,it
`is determined that anupgradeisnotavailable, then the
`method proceeds to step 430.”
`
`“However, if at decision step 427 it is determinedthat a
`new upgradeisavailable, then the method proceedsto
`step 433 (FIG. 4B).”
`
`(Apfel, 9:31-51)
`
`(Apfel, 10:6—11)
`
`
`
` (Apfel, 7:16-19)
`
`‘For example, even if an upgradeisavailable, it should
`not be downloaded if the computer 20 already has the
`upgrade or if the upgrade is somehow incompatible with
`computer20.”
`
`
`
`Example errorin Petitioner's assertion ofLillich
`
`Patent Owner’s briefing identifies legal and factual error
`in Petitioner’s reliance on Lillich, including the following
`summarypoints:
`
`1. The Board shouldgive effect to the “with” term chosen by the
`patentee and should deny Petitioner’s attempt to advance
`the belated (and hence waived) claimed construction
`argumentthat the “with” term should be rewritten as “using”
`instead. POSR 10-12.
`
`2. The Board shouldalso reject Petitioner’s belated (and
`hence waived) claim construction argumentthat “[t]he step
`of determining compatible or incompatible version numbers
`by comparing them to a list is agnostic as to whether those
`componentsare currently installed or not(or, if installed,
`whetherthey are “executing locally” or not).”
`Id. 13-14 (quoting Reply 17).
`
`3. Petitioner fails to defend its proposed combination as not
`changingthe basic principles under which Apfel operates.
`Id. 15-16.
`
`
`
`Example error in Petitioner's assertion ofLillich
`
`1. The Board should give effect to the “with” term chosen by the
`patentee and should deny Petitioner’s attempt to advance the
`belated (and hence waived) claimed construction argument that
`the “with” term should be rewritten as “using”instead.
`POSR 10-12.
`
`VY As recitedin claim 1, the “comparing”step recites “comparing the
`determined componentand informationspecifying at least one
`additional componentcurrently implemented in the electronic
`device with at least oneofa list of known acceptable
`configurationsfor the electronic device and a list of known
`unacceptable configurationsfor the electronic device.”
`
`Y Rather than acceptthat the “with” term means whatit says,
`Petitioner argues “[t|here is no determinationof interoperability
`with thelist(s). Rather, componentinteroperability is determined
`using thelist(s).” Reply 15 (original emphasis byPetitioner).
`
`v Petitioner’s briefing identifies no lexicographyin the specification
`or disclaimerin the prosecutionhistory.
`
`17
`
`
`
`
`
`Example error in Petitioner's assertion ofLillich
`
`The ’088 patent specification repeatedly describes comparing
`components “with”list(s). Patent Owner’s briefing (e.g., POSR 12)
`identified the following non-exhaustive examples:
`
`v Abstract (“The reconfiguration manager then compares the needed
`and currently implemented components with previously-stored
`lists of known acceptable and unacceptable configurationsfor the
`electronic device.”).
`
`Y 2:37-41 (same).
`
`v 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.
`
`Y The’088patent further teaches that comparison with a givenlist of
`knownacceptable or unacceptable configurations at times must
`consider “other parameters associated with the device” (4:21-22)
`and “additional componentsthat are prerequisites for the
`requested upgrade” (5:35-36).
`
`18
`
`
`
`Example errorin Petitioner's assertion ofLillich
`
`2. The Board should also reject Petitioner’s belated (and hence
`waived) claim construction argumentthat “[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,
`whetherthey are “executing locally” or not).”
`POSR 13-14 (quoting Reply 17).
`
`Y Contrary to whatPetitioner newly arguesin its Reply, the claim
`languageis explicit, and not agnostic, as to whether a component
`must be “currently implementedin theelectronic device.’ As
`Patent Ownerexplainedin its Response,the claim languagerecites
`the “one additional component’as being “currently implemented
`in the electronic device.” By contrast, the claim recites “the
`determined component” as something needed to implement a
`requested reconfiguration of an electronic device.
`POSR 13-14 (discussing POR 14-15).
`
`vY The ‘088patentsimilarly differentiates a “needed” componentnot
`currently implementedin a device from onethatis “currently
`implemented”in the device.Id. (citing ’088 patent, 2:34-52).
`
`19
`
`
`
`Example errorin Petitioner's assertion ofLillich
`
`3. Petitioner fails to defend its proposed combination as not
`changing the basic principles under which Apfel operates.
`POSR 15-16.
`
`Y Petitioner and its declarant overlook that Apfel’s process focuses
`on determining whethersoftware stored at a remoteserveris
`available for download overtheInternet.
`Id. 15 (citing Apfel, 9:30-42).
`
`Y 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 executinglocally in
`memory of the same computersystem.”Id. (citing POR 24).
`
`Y Petitioner andits declarantfail to explain why it would have been
`obvious to modify Apfel’s process for determining availability for
`download,with,instead,Lillich’s verification of programsthat are
`already locally present and implemented(and hence need not
`be downloaded). Id.
`
`20
`
`
`
`Example errorin Petitioner's assertion of Todd
`
`Patent Owner’s briefing identifies legal and factual error
`in Petitioner’s reliance on Todd, including the following
`summarypoints:
`
`1. Petitioner and its declarant overlook indecisive languagein
`Todd’s description of its conflict analysis. POSR 16-17.
`
`2. Petitioner does not dispute in its Reply that the Petition fails
`to identify in Todd any cognizable “list” of configurations,
`which must be knownto be either acceptable or
`unacceptable, and with which the claimed comparisonis
`made. Id. 17-18.
`
`3. The Board should reject Petitioner’s belated claim
`construction argumentthat impermissibly attempts to read
`out limitations.Id. 18.
`
`4. The Board should reject Petitioner’s belated attempt to
`offer a new claim construction argumentfor the “list” term.
`Id. 18-19.
`
`21
`
`
`
`Example error in Petitioner's assertion of Todd
`
`1. Petitioner andits declarant overlook indecisive language in
`Todd’s description of its conflict analysis. POSR 16-17.
`
`Y Todd describesits analysis as involving “identifying conflicts (in
`step 245) that may [(and hence may nof)| cause trouble for the
`user in the future.” Todd, 14:16-18 (emphasis added).
`
`v This is precisely the sort of indecisive language that the Board
`founddistinguishable from the claims in IPR2019-00056.
`
`See Apple, 1PR2019-00056, Paper7 at 11-13 (“Although the code
`updatesat this point match somecriteria of the client device, they
`are not ‘known’to be acceptable configurations, but merely
`‘potentiallyappropriate’ The indccisive language‘potentially’ is
`not the required decisive language of ‘known’—adifference that
`Petitioner does not explain persuasively, if at all.”).
`
`22
`
`
`
`Example errorin Petitioner's assertion of Todd
`
`2. Petitioner does not dispute in its Reply that the Petition fails to identify
`in Todd any cognizable “list” of configurations, which must be Knownto
`be either acceptable or unacceptable, and with which the claimed
`comparison is made. POSR 18.
`
`Y Because Petitioner’s new (and hence waived) claim construction position
`for the “with” term merely copies verbatim from the portionof its Reply
`addressingLillich, Petitioner taints its alternative reliance on Todd with
`the same erroneousclaim construction.Id.
`
`Y The claim language in question clearly cannot be reduced,or essentially
`rewritten, to merely require using a database in an unspecific way.
`Rather, the claims require comparison “with” at least one of two lists—a
`list of known acceptable configurations and a list of known unacceptable
`configurations.Id. (citing POR 13-14).
`
`Y To borrowfrom the reasoning expressed in the Board’s Decision to Deny
`Institution in IPR2019-00056,“[t]he Petition does not explain, nor do we
`find, how [Todd] discloses, teaches, or suggests,a ‘list of known acceptable
`configurations’ or a ‘list of known unacceptable configurations’ by alluding
`to ‘information about known compatible or incompatible configurations.
`Id. (citing IPR2019- 00056, Paper7 at 16).
`
`23
`
`
`
`Example errorin Petitioner's assertion of Todd
`
`3. The Board should reject Petitioner's belated claim
`construction argumentthat impermissibly attempts to read
`outlimitations. POSR 18.
`
`Y Petitioner does not disputein its Reply that the Petition fails to
`identify in Todd any cognizable“list” of configurations, which
`must be knownto be either acceptable or unacceptable, and with
`which the claimed comparison is made.
`
`v Thisis not surprising, given Petitioner concedesin its Reply that
`the Petition is keyed to an erroneous construction which overtly
`attempts to read out these explicit requirements.Id. (citing
`Reply 19 (“There is no determination of interoperability with
`the list(s).”) (original emphasis by Petitioner).
`
`v Petitioner’s belated and erroneousattemptto read out explicit
`claim limitations provides an independentbasis for denial of the
`alternative theory based on Todd
`
`24
`
`
`
`Example errorin Petitioner's assertion of Todd
`
`4. The Board should reject Petitioner’s belated attemptto
`offer a new claim construction argumentforthe “list” term.
`POSR 18-19.
`
`Y The Board should reject Petitioner’s belated attemptto introduce, for
`the first time in its Reply, an entirely new and unsupported claim
`construction argumentforthe“list” terms. Id.
`
`Y Petitioner purports to justify its belated claim construction argument
`as being responsiveto the undisputed observationthat the Petition
`makes no mentionof the “list” term in its reliance on Todd.
`Id. (citing Reply 21).
`
`Y But Patent Ownerhadnotoffered a constructionfor the “list” terms
`to which Petitioner may nowjustifiably respond. See 37 C.F.R.
`§ 42.23(b) (“... A reply may only respondto argumentsraisedin the
`corresponding opposition, patent ownerpreliminary response, or
`patent ownerresponse.’). Rather, Patent Owner had simply observed
`that Petitioner’s assertion of Toddfailed to directly address, or even
`mention, certain terms(suchas “list”) that provide essential meaning
`within the context in which theyare recited.Id. (citing POR 26).
`
`25
`
`
`
`Example errorin Petitioner's assertion of Todd
`
`4. The Board should reject Petitioner’s belated attemptto offer a new
`claim construction argumentforthe “list” term. POSR 18-19.
`Y Petitioner appears to argue(in its Reply only) that “list” means “any
`... suitable format for representing information on compatibility.”
`Reply 22 (internal quotations omitted).
`v Evenif the Board wereinclined to consider Petitioner’s new and hence
`waived claim construction argument, Petitionerfails to defend its new
`constructionfor the “list” terms within the Reply itself (much less within
`the Petition).
`v Petitioner’s new and undefendeddefinition is inconsistent with the
`088 patent. Petitioner overlooks, for example, that the ’088 patentstates
`“t]he term ‘list’ as used herein is therefore intendedto include any stored
`representation of information indicative of component compatibility.”
`088 patent, 4:6-8. Atleast this “component”aspectofthis disclosureis
`absent from Petitioner’s belated and undefended construction.
`
`Y Moreover, Petitioner’s new construction is admittedly untethered to the
`context of comparing information “with” at least one of two lists—alist
`of knownacceptable configurations anda list of known unacceptable
`configurations.
`
`26
`
`
`
`Additional example deficiencies
`
`Patent Owner’s briefing addresses additional example
`deficiencies of the Petition, such as those listed below:
`
`1. The Petition fails to prove sufficient motivation to
`modify Apfel based on eitherLillich or Todd in the manner
`proposed. POSR 20-21 (discussing
`unrebutted arguments raised in POR).
`
`2. Petitioner fails to show wherethe Petition maps a
`three-reference combinationof Apfel, Lillich, and
`Todd to any claim language. For example, Petitioner
`fails to dispute, or even mention, the demonstrable
`observationthat “[a]t most, the Petition proposes one
`modification to Apfel ostensibly based on Lillich alone (Pet.
`44); and it proposesa distinct modification to
`Apfel ostensibly based on Toddalone(id., 48).”
`Id. 20—21 (quoting POR 27).
`
`27
`
`
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