UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`MICROSOFT CORPORATION
`Petitioner
`
`v.
`
`UNILOC 2017 LLC
`Patent Owner
`
`
`
`
`IPR2020-00023
`U.S. PATENT NO. 6,467,088
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S OPENING BRIEF ON REMAND
`
`
`
`
`
`
`
`
`
`1
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`MICROSOFT CORPORATION
`Petitioner
`
`v.
`
`UNILOC 2017 LLC
`Patent Owner
`
`
`
`
`IPR2020-00023
`U.S. PATENT NO. 6,467,088
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER’S OPENING BRIEF ON REMAND
`
`
`
`
`
`
`
`
`
`1
`
`
`
`IPR2020-00023
`U.S. Patent No. 6,467,088
`
`Table of Contents
`
`
`
`
`
`
`V.
`
`
`INTRODUCTION ........................................................................................... 1
`I.
`PROCEDURAL BACKGROUND ................................................................. 1
`II.
`STANDARD OF REVIEW ............................................................................. 2
`III.
`IV. The Court’s Determination that Apfel Requires a Comparing Step
`Does not Require that the Comparing Step Include “information
`specifying at least one additional component” as recited in Claims 1,
`11 and 21. ......................................................................................................... 2
`The Court’s Claim Construction Determination Is Moot as Petitioner
`Has Failed to Show that Apfel Discloses the Comparing Step as
`Recited ............................................................................................................. 9
`VI. CONCLUSION ................................................................................................ 9
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`ii
`
`
`
`
`
`IPR2020-00023
`U.S. Patent No. 6,467,088
`
`TABLE OF AUTHORITIES
`
`Cases
`35 U.S.C. §316(e)....................................................................................................... 2
`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016) ................ 2
`In re Morsa, 713 F.3d 104, 110 (Fed. Cir. 2013) ...................................................... 8
`
`
`
`
`
`iii
`
`
`
`IPR2020-00023
`U.S. Patent No. 6,467,088
`
`
`I.
`
`INTRODUCTION
`Uniloc 2017 LLC (“Uniloc” or “Patent Owner”) submits this Opening Brief
`on Remand in connection with the Petition for Inter Partes Review (“Pet.” or
`“Petition”) of United States Patent No. 6,467,088 (“the ‘088 patent” or “Ex. 1001”)
`filed by Microsoft Corporation (“Petitioner”) in IPR2020-00023.
`In view of the reasons presented herein, the Board is respectfully requested
`to, consistent with the decision of the Court of Appeals for the Federal Circuit in
`Microsoft Corp. v. Uniloc 2017 LLC, No. 2021-2039 (Fed. Cir. Oct. 20, 2022)
`(hereinafter “Opinion”), deny the Petition in its entirety, as, after review of the
`Court’s decision, Petitioner still fails to meet its burden of showing that any
`challenged claim is unpatentable. 35 U.S.C. §316(e).
`PROCEDURAL BACKGROUND
`II.
`Petitioner filed the Petition on October 11, 2019, seeking Inter Partes Review
`of claims 1-4, 6-14 and 16-21 of the ‘088 Patent. The Board instituted Inter Partes
`Review dated April 14, 2020 (Paper 7). The Board issued a Final Written Decision
`on April 6, 2021 (Paper 20) (“Final Written Decision”), determining that no
`challenged claims were unpatentable. Petitioner appealed to the Court of Appeals
`for the Federal Circuit, which issued the Opinion vacating and remanding the
`Board’s Final Written Decision on October 20, 2022. The Board’s Order on Conduct
`of the Proceedings requires the parties to submit briefs on remand by February 1,
`2023, and the present Brief is timely filed.
`
`
`
`
`1
`
`
`
`IPR2020-00023
`U.S. Patent No. 6,467,088
`
`
`III. STANDARD OF REVIEW
`“In an [inter partes review], the petitioner has the burden from the onset to
`show with particularity why the patent it challenges is unpatentable.” Harmonic Inc.
`v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016). As demonstrated herein,
`when considering the Court’s ruling, Petitioner has failed to meet its burden of
`proving any proposition of invalidity, as to any claim, by a preponderance of the
`evidence. 35 U.S.C. §316(e).
`
`IV. The Court’s Determination that Apfel Requires a Comparing Step Does
`not Require that the Comparing Step Include “information specifying
`at least one additional component” as recited in Claims 1, 11 and 21.
`The Court determined that the Board’s conclusion that U.S. Patent No.
`5,974,454 (“Apfel” or “Ex. 1004”) lack of disclosure of a comparing step was not
`supported by substantial evidence. Opinion, 3.
`The Court’s analysis of whether Apfel discloses the required comparing step
`rests on two passages of Apfel, one of which includes the sole use of the term
`“incompatible” in Apfel. As demonstrated below, a proper reading of Apfel shows
`that the first passage, at col. 7, lines 13-19, provides a high-level overview of a two-
`assessment process. The first assessment is the determination of whether an upgrade
`is available. The second assessment may involve an assessment of compatibility of
`the determined upgrade. The second passage, at col. 9, lines 30-40, provides a
`detailed explanation of the first assessment of identifying an upgrade. The second
`assessment of col. 7, lines 13-19, makes clear that a compatibility determination is
`distinct from determining an upgrade, thus demonstrating that the second passage
`
`
`
`
`2
`
`
`
`IPR2020-00023
`U.S. Patent No. 6,467,088
`
`
`does not include a compatibility determination. Neither the first passage nor any
`other portion of Apfel provides any indication of the information or determination
`involved in the compatibility determination, demonstrating that Apfel utterly fails to
`disclose the comparing recitations of the independent claims.
`The Court first look to the following passage of Apfel:
`
`The servers are responsible for assessing whether an upgrade is
`available and whether it should be downloaded based on the
`information sent by computer 20. For example, even if an upgrade is
`available, it should not be downloaded if the computer 20 already has
`the upgrade or if the upgrade is somehow incompatible with computer
`20.
`Opinion, 4, quoting Apfel at col. 7, lines 13-19 (emphasis in Opinion). The
`Court then states that:
`
`[T]he Board failed to explain why this passage from Apfel did not
`disclose the required compatibility check.
`Id.
`Parsing the passage of Apfel at col. 7, lines 13-19, the first sentence of the
`passage identifies a two assessment process, for which the servers are responsible.
`The two assessments are: (1) a first assessment of “whether an upgrade is available”
`and (2) a second assessment of “whether [the upgrade assessed to be available in the
`first assessment] should be downloaded based on information sent by computer 20.”
`The second assessment is necessarily performed after the first assessment, as the
`portion of the first sentence of the passage describing the second assessment states
`“whether it should be downloaded,” (col. 7, line 14). The word “it” clearly refers to
`
`
`
`
`3
`
`
`
`IPR2020-00023
`U.S. Patent No. 6,467,088
`
`
`“an upgrade” in the first phrase of the first sentence, as “an upgrade” is the only
`singular noun in that phrase of the first sentence. Unless the first assessment has
`been performed to assess whether an upgrade is available, no upgrade exists to
`determine in the second assessment whether the upgrade should be downloaded. The
`first sentence also makes clear that the second assessment of whether an upgrade,
`assessed to be available, should be downloaded is made based on information sent
`by the computer.
`The phrase “even if an upgrade is available” in the second sentence elaborates
`on the second assessment and emphasizes its relationship to the first assessment,
`which determines whether or not an upgrade is even available. The second sentence
`provides two exemplary reasons why the result of the second assessment, based on
`the information sent by computer 20, would be that an upgrade, determined in the
`first assessment to be available, should not be downloaded. The first example of why
`the second assessment is that the available upgrade should not be downloaded is that
`the computer already has the upgrade. Apfel provides a more detailed embodiment
`of this first example:
`
`In still another embodiment, the present invention may include a new
`menu command. Selection of this menu command will initiate the
`HTTP query to check for a later version. If it fails, a dialog is displayed
`with the failure. If the version available on the server is older than or
`the same as the user's version, a dialog would be displayed informing
`the user, "You already have the latest version of Microsoft Word's
`Internet Publishing package".
`
`
`
`
`4
`
`
`
`
`
`IPR2020-00023
`U.S. Patent No. 6,467,088
`
`Apfel, 11:60-67. This passage clearly shows that the first assessment has
`identified a version of an upgrade, and that the second assessment has determined
`that the computer already has the upgrade, consistent with the first example of the
`second assessment. Thus, review of this example, demonstrates that the
`identification of an upgrade and a determination of whether the upgrade should be
`downloaded based on information stored on the computer, are separate steps.
`The second example of the second assessment is that the available upgrade
`should not be downloaded, because the upgrade is “somehow incompatible with
`computer 20.” (col. 5, lines 18-19). As this second example is a second assessment
`that must follow and thus be separate from the first assessment, it is clear that Apfel
`contemplates any compatibility determination to be distinct from the identification
`of an upgrade.
`In contrast to the first example of the second assessment, where Apfel
`provides a more detailed of a computer already having the upgrade, Apfel utterly
`lacks a more detailed example of the second example of the second assessment.
`Indeed, the second example of the second assessment is the sole occurrence of either
`the terms “compatible” or “incompatible.” There is no identification in Apfel of what
`information sent by computer 20 would be employed in an assessment of
`incompatibility or an exemplary algorithm or text description of a standard to be
`applied to such unidentified information sent by the computer in a assessment of
`incompatibility. In short, Apfel makes clear that its compatibility assessment is
`
`
`
`
`5
`
`
`
`IPR2020-00023
`U.S. Patent No. 6,467,088
`
`
`distinct from identification of the upgrade, but fails to provide any indication of the
`nature of the compatibility assessment.
` Moreover, Apfel’s use of the term “somehow” to modify “incompatible” is
`illuminating. The use of “somehow” to modify “incompatible” communicates that
`the way in which the upgrade might be incompatible with the computer system was
`unknown, as the term “somehow” refers to an unknown or not fully understood
`reason. Indeed, Apfel provides no disclosure of how incompatibility might occur or
`be identified. Apfel’s use of “somehow” communicates that no incompatibilities are
`currently known, but that, if such incompatibilities become known, a determination
`could be performed as the second assessment.
`The complete absence of any identification of what information from the
`computer would be used for the compatibility determination, or how that information
`would be assessed, demonstrates that Apfel fails to disclose, in the recited
`“comparing” step, either “information specifying at least one additional component
`currently implemented in the electronic device” or “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.” For at least this reason, the passage of
`Apfel at col. 7, lines 13-19, fails to remedy the failure of Apfel’s teachings to support
`Petitioner’s contentions regarding the comparing step. See Final Written Decision,
`15.
`
`Further, the striking absence of a detailed example of the second example of
`the second assessment, in contrast to the detailed example of the first example, and
`
`
`
`
`6
`
`
`
`IPR2020-00023
`U.S. Patent No. 6,467,088
`
`
`the use of the phrase “somehow incompatible,” given the meaning of “somehow” as
`suggesting an unknown, demonstrates that, to the extent that col. 7, lines 18-19
`purports to disclose an embodiment of Apfel involving a compatibility check, that
`embodiment is not operable. No hint is given as to how this second example of the
`second assessment might be carried out. “When a reference appears to not be
`enabling on its face, a challenge may be lodged without resort to expert
`assistance. ” In re Morsa, 713 F.3d 104, 110 (Fed. Cir. 2013). This inoperable
`embodiment cannot serve as the basis for disclosure of the “comparing” claim
`recitation.
`Thus, the deficiencies of Apfel’s second example of the second assessment in
`col. 7, lines 18-19, of assessing that the upgrade is somehow incompatible, provide
`the explanation required by the Court, at page 4 of the Opinion of “why this passage
`from Apfel did not disclose the required compatibility check.”
`With the understanding that col. 7, lines 13-19 of Apfel describes two separate
`assessments, it will be understood that the second passage emphasized by the Court
`represents a detailed example of the first assessment of the first passage quoted by
`the Court, and thus does not involve the compatibility check of the second
`assessment.
`The second passage states:
`
`At decision step 427, it is determined whether there is an upgrade
`package for the Web Authoring Components program module. In the
`exemplary embodiment, the database server 80a uses the information
`received in the HTTP query at step 415 to determine if an upgrade
`package is available, such as by a database lookup. Different update
`
`7
`
`
`
`
`
`IPR2020-00023
`U.S. Patent No. 6,467,088
`
`
`
`packages may be provided for different version combinations, different
`operating systems, and different languages. Thus, the database server
`80a maintains a database of upgrade packages and corresponding
`configurations which should result in their download.
`Apfel, col. 9, lines 30-40. The Court stated that the passage at col. 9, lines 30-
`40, “suggests a form of compatibility assessment to find the correct upgrade package
`and, combined with the other passage cited further above that specifically
`references incompatibility, renders the Board’s conclusion that Apfel does not
`disclose a compatibility check lacking in substantial evidence.” Opinion, 5
`(emphasis added).
`However, with the above clarification that Apfel discloses a first assessment
`to determine whether there is an upgrade, and a second assessment that may include
`an unspecified compatibility determination, it is clear that the passage at col. 9, lines
`30-42 does not represent a form of compatibility assessment as referenced in Apfel,
`col. 7, lines 18-19. Rather, the process at col. 9, lines 30-42 represents a more
`detailed explanation of the first assessment of col. 7, lines 13-14, as to whether an
`upgrade is available. As the Court noted, it is when col. 9, lines 30-40 of Apfel is
`“combined with the other passage cited further above,” i.e., col. 7, lines 13-19, that
`renders the Board’s conclusion that Apfel does not disclose a compatibility check
`lacking in substantial evidence. Opinion, 5. When the two passages are considered
`in combination, with the clarification that Apfel explicitly contemplates a
`compatibility check only after a determination of the upgrade, it is clear that col. 9,
`lines 30-40 does not disclose a compatibility check.
`
`
`
`
`8
`
`
`
`
`
`IPR2020-00023
`U.S. Patent No. 6,467,088
`
`Accordingly, denial of the Petition is respectfully requested on the grounds
`that, after further consideration in light of the Court’s Opinion, the Petitioner has
`failed to show that Apfel discloses the recited comparing step.
`
`V. The Court’s Claim Construction Determination Is Moot as Petitioner
`Has Failed to Show that Apfel Discloses the Comparing Step as Recited
`The Court determined that the “Board also erred when it concluded that Apfel
`did not disclose the comparing step because it did not perform the determining and
`comparing steps in a certain order required by the disputed claims.” Opinion, 5. As
`discussed above, Apfel fails to disclose the recited comparing step. Accordingly, the
`Court’s claim construction that the determining and comparing steps need not be
`performed in a certain order does not alter the conclusion that Petitioner has failed
`to demonstrate that Apfel discloses the comparing step.
`
`VI. CONCLUSION
`For at least the reasons set forth above, Uniloc respectfully requests that the
`Board deny all challenges in the instant Petition.
`
`Date: February 1, 2023
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`By: /Ryan A. Loveless/
`Ryan Loveless
`Attorney for Patent Owner
`Reg. No. 51,970
`
`
`
`
`9
`
`
`
`
`
`IPR2020-00023
`U.S. Patent No. 6,467,088
`
`CERTIFICATE OF SERVICE
`
`
`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that an electronic
`copy of the foregoing PATENT OWNER’S OPENING BRIEF ON REMAND was
`served via the Patent Review Processing System (PRPS) and email to Petitioner’s
`counsel of record at the addresses identified in the Petition’s consent to electronic
`service.
`
`Date: February 1, 2023
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /Ryan Loveless/
`Ryan Loveless
`Attorney for Patent Owner
`Reg. No. 51,970
`
`
`
`
`
`10
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
