UNITED STATES PATENT AND TRADEMARK OFFICE
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`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_________________
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`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`IPR2020-00023
`Patent 6,467,088
`
`
`_________________
`
`
`REMAND BRIEF OF
`PETITIONER MICROSOFT CORPORATION
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`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`IPR2020-00023
`Patent 6,467,088
`
`
`_________________
`
`
`REMAND BRIEF OF
`PETITIONER MICROSOFT CORPORATION
`
`
`
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`
`
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`
`
`TABLE OF CONTENTS
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`IPR2020-00023
`Patent 6,467,088
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`Page(s)
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`B.
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`INTRODUCTION ........................................................................................... 1
`I.
`II. ARGUMENT ................................................................................................... 1
`A.
`In The Original IPR Proceedings, The Only Dispute Was
`Whether The Prior Art Satisfied The Claimed “Comparing” Step ....... 1
`The Federal Circuit Found That Apfel Satisfies The
`“Comparing” Step; Thus All Challenged Claims Are Unpatentable .... 3
`III. CONCLUSION ................................................................................................ 4
`CERTIFICATE OF SERVICE .................................................................................. 6
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`Petitioner’s Remand Brief
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`Page i
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`
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`TABLE OF AUTHORITIES
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`IPR2020-00023
`Patent 6,467,088
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`Page(s)
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`Cases
`Broadcom Corp. v. Int’l Trade Comm’n,
`28 F.4th 240 (Fed. Cir. 2022) ................................................................................. 4
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`Petitioner’s Remand Brief
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`Page ii
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`IPR2020-00023
`Patent 6,467,088
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`I.
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`INTRODUCTION
`Petitioner Microsoft has shown by a preponderance of the evidence that the
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`challenged claims are unpatentable, and the Board should issue a new Final Written
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`Decision accordingly. The Federal Circuit found that prior art Apfel (EX1004)
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`discloses the claimed “comparing” step, which is the only step that Patent Owner
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`had argued was lacking in the prior art. The undisputed evidence in the Petition
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`shows how the prior art meets all other features of the challenged claims, thus
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`rendering each claim unpatentable.
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`II. ARGUMENT
`In The Original IPR Proceedings, The Only Dispute Was
`A.
`Whether The Prior Art Satisfied The Claimed “Comparing” Step
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`The Institution Decision found that “Petitioner has demonstrated a reasonable
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`likelihood of prevailing on its assertion that [independent] claims 1, 11, and 21
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`would have been obvious over Apfel alone or the combination of Apfel, Todd, and
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`Lillich.” Paper 7, 23. In doing so, the Board determined that the “reasons to combine
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`Apfel with both Lillich and Todd … appear reasonable at this stage” and rejected
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`Patent Owner’s preliminary arguments against the combination. Id., 19–23. The
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`Institution Decision also determined preliminarily that Apfel and Pedrizetti
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`(EX1007) render obvious dependent claims 9 and 19. Id., 25–26. Thus, the Board
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`instituted IPR on the following grounds:
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`Petitioner’s Remand Brief
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`Page 1
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`IPR2020-00023
`Patent 6,467,088
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`
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`Paper 7, 30.
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`After institution, Uniloc disputed only whether the prior art satisfies the
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`“‘comparing’ / ‘compare’ limitations” of the independent claims. The only
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`substantive arguments in the Patent Owner Response were within a section titled
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`“The Petition fails to prove obviousness, under any one of the redundant grounds, of
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`the ‘comparing’ / ‘compare’ limitations recited in each challenged claim.” POR
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`(Paper 10), 13–27. The remainder of the Patent Owner Response merely pointed
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`back to these “comparing” arguments, asserting that they “apply equally” to other
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`claims and grounds. Id., 28–29; see also PO Sur-Reply (Paper 13), 2–10 (arguing
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`that Apfel does not disclose the “‘known’ requirement recited in the comparison
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`limitations”); id., 10–16 (arguing that Lillich does not cure the deficiencies of Apfel
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`regarding that “known” requirement of the “comparing” step); id., 16–20 (arguing
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`that Todd does not cure “the deficiencies of Apfel and Lillich regarding the
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`‘comparing’ and ‘compare’ limitations”).
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`Petitioner’s Remand Brief
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`Page 2
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`IPR2020-00023
`Patent 6,467,088
`Uniloc did not dispute the Petition’s showing that the prior art satisfied all
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`other aspects of the independent claims and all aspects of the dependent claims.
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`The Final Written Decision turned on the “comparing” element, finding that
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`Apfel—alone or in combination with Lillich—did not teach this element.
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`Paper 20, 15. The Final Written Decision did not address the other claim elements.
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`B.
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`The Federal Circuit Found That Apfel Satisfies The “Comparing”
`Step; Thus All Challenged Claims Are Unpatentable
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`On appeal, the Federal Circuit found that “the Board erred in concluding that
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`Apfel does not perform the claimed ‘comparing’ step.” Microsoft Corp. v. Uniloc
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`2017 LLC, No. 2021–2039, 2022 WL 11531235, at *3 (Fed. Cir. Oct. 20, 2022)
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`(entered in the record as Paper 29); see also id., *1 (“The Board found that Apfel did
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`not disclose the comparing step. That conclusion lacks substantial evidence.”); id.,
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`*2 (finding that Apfel 9:30–40 “suggests a form of compatibility assessment” and
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`that Apfel 7:13–19 “specifically references incompatibility,” thus “render[ing] the
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`Board’s conclusion that Apfel does not disclose a compatibility check lacking in
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`substantial evidence”).
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`The Court separately held that the claimed determining (Element 1.3) and
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`comparing (Element 1.4) need not be “performed by two separate acts in a certain
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`order.” Id., *3. The Court explained that the claim “allows for the determining and
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`comparing steps [to] be part of a single process.” Id.
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`Petitioner’s Remand Brief
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`Page 3
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`IPR2020-00023
`Patent 6,467,088
`Given the Federal Circuit’s finding that Apfel discloses the claimed
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`“comparing,” the only issue on remand is whether the prior art satisfies the other
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`claim elements.
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`As explained above, however, Uniloc presented no arguments challenging the
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`Petition’s showing that those other elements are in the prior art. Supra, 2–3.
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`Accordingly, Uniloc waived any argument that those elements are not satisfied and
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`the Board should find each element satisfied by the prior art, as laid out in
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`Microsoft’s Petition and consistent with the Board’s findings in its Institution
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`Decision, thus rendering the claims obvious. Petition (Paper 2) at 32–72; Institution
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`Decision (Paper 7), 17–23, 25–27; see, e.g., Broadcom Corp. v. Int’l Trade Comm’n,
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`28 F.4th 240, 252 (Fed. Cir. 2022) (“[T]he Board relies on parties to identify
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`disputed issues and treats other issues as undisputed.”); see also Scheduling Order
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`(Paper 8), 8 (cautioning that “arguments for patentability not raised in the [patent
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`owner] response may be deemed waived”).
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`III. CONCLUSION
`Because the Federal Circuit determined that Apfel performs the claimed
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`“comparing” step—thus resolving the only disputed issue in Microsoft’s favor—
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`Microsoft respectfully requests that the Board issue a Final Written Decision finding
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`all challenged claims unpatentable.
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`
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`Petitioner’s Remand Brief
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`Page 4
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`
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`Dated: February 1, 2023
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`IPR2020-00023
`Patent 6,467,088
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`
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`
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`Respectfully submitted,
`
`By: /Derrick W. Toddy /
`Derrick W. Toddy (Reg. No. 74,591)
`derrick.toddy@klarquist.com
`Andrew M. Mason (Reg. No. 64,034)
`andrew.mason@klarquist.com
`Todd M. Siegel (Reg. No. 73,232)
`todd.siegel@klarquist.com
`Sarah E. Jelsema (Reg. No. 70,804)
`sarah.jelsema@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
`
`Counsel for Petitioner
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`Petitioner’s Remand Brief
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`Page 5
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`
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`IPR2020-00023
`Patent 6,467,088
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`CERTIFICATE OF SERVICE
`I certify that on February 1, 2023, a complete copy of REMAND BRIEF OF
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`PETITIONER MICROSOFT CORPORATION was served on Patent Owner’s
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`counsel of record via electronic mail as follows:
`
`Ryan Loveless
`James Etheridge
`Jeffrey Huang
`Etheridge Law Group
`2600 E. Southlake Blvd., Ste. 120-324
`Southlake, TX 76092
`Email: ryan@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`
`
`
`By: /Derrick W. Toddy /
`Derrick W. Toddy (Reg. No. 74,591)
`derrick.toddy@klarquist.com
`Andrew M. Mason (Reg. No. 64,034)
`andrew.mason@klarquist.com
`Todd M. Siegel (Reg. No. 73,232)
`todd.siegel@klarquist.com
`Sarah E. Jelsema (Reg. No. 70,804)
`sarah.jelsema@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
`
`Counsel for Petitioner
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`CERTIFICATE OF SERVICE
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`Page 6
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