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’S REPLY BRIEF ON REMAND
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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’S REPLY BRIEF ON REMAND
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`Table of Contents
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`IPR2020-00023
`U.S. Patent No. 6,467,088
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`INTRODUCTION ........................................................................................... 1
`I.
`The Petitioner’s Remand Brief Mischaracterizes the Court’s Opinion........... 1
`II.
`III. The Petitioner’s Brief on Remand Disregards the Outstanding Issues
`in this Proceeding as to Whether the Petition Provides Sufficient
`Motivation to Combine Apfel with Lillich and Todd ..................................... 3
`IV. CONCLUSION ................................................................................................ 5
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`IPR2020-00023
`U.S. Patent No. 6,467,088
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`TABLE OF AUTHORITIES
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`Statutes
`35 U.S.C. §316(e) ...................................................................................................... 1
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`ii
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`I.
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`INTRODUCTION
`Uniloc 2017 LLC (“Uniloc” or “Patent Owner”) submits this Reply Brief on
`Remand in response to the Remand Brief of Petitioner Microsoft Corporation, filed
`February 1, 2023 (“Petitioner’s Remand Brief”) (Paper 32) 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 and in Patent Owner’s Opening Brief
`on Remand (Paper 29), 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).
`II. The Petitioner’s Remand Brief Mischaracterizes the Court’s Opinion
`The Petitioner’s Remand Brief mischaracterizes the Court’s Opinion by
`alleging that the Court found that the Apfel reference (EX1004) discloses the
`recited “comparing” step of claim 1 of the ‘088 Patent. (Pet. Brief 1, 3). The
`Petitioner’s Remand Brief takes certain wording of the Court’s opinion out of
`context, and disregards that the Court’s opinion specifically stated that the Board’s
`Final Written Decision, referring to Apfel, col. 7, lines 13-19, “failed to explain
`why this passage from Apfel did not disclose the required compatibility check.”
`Opinion, p. 4 (emphasis added). Patent Owner’s Opening Brief on Remand (Paper
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`IPR2020-00023
`U.S. Patent No. 6,467,088
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`29) provides the explanation, which the Court stated was absent from the Final
`Written Decision, as to why col. 7, lines 13-19 of Apfel fails to disclose the
`required compatibility check. Patent Owner’s Opening Brief on Remand, 2-8.
`Petitioner’s Remand Brief fails to provide any alternative explanation.
`The Petitioner’s Remand Brief tellingly takes only selective quotes from
`Court’s discussion of Col. 7, lines 13-19 and col. 9, lines 30-40, of Apfel, so as to
`gloss over the Court’s complete reasoning. Petitioner’s Remand Brief, 3. The
`Petitioner picks out the Court’s statement that col. 9, lines 30-40 passage “suggests
`a form of compatibility assessment” and follows that statement with a snippet from
`the Court’s opinion to the effect that Apfel at col. 7, lines 13-19 “specifically
`references incompatibility.” Petitioner’s Remand Brief, 3. The Petitioner then adds
`the term “thus,” which does not appear in the opinion, followed by a quotation of
`the Court’s statement “renders the Board’s conclusion that Apfel does not disclose
`a compatibility check lacking in substantial evidence.” Id. In fact, when viewed in
`context, the Court’s comments reveal that the Court appreciated that the passages
`at col. 9, lines 30-40 and the passage at col. 7, lines 13-19, must be considered
`together. The Court states that the passage at col. 9, lines 30-40:
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`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.
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`2
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`U.S. Patent No. 6,467,088
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`Opinion, 5 (emphasis added). The Petitioner disregards the Court’s reasoning that
`it is only when the passage at col. 9, lines 30-40 is combined with the passage at
`col. 7, lines 13-19, that remand is required.
`Moreover, the selective quotations provided by Petitioner completely
`disregard the Court’s statement that “the Board failed to explain why [the passage
`at col. 7, lines 13-19 of Apfel] did not disclose the required compatibility check.”
`Opinion, 4. This statement, together with the Court’s statement that it is the
`combination of the cited passages from Apfel that renders remand proper, makes
`clear that the deficiency in the Final Written Decision that prompted remand is the
`absence of this explanation. The Petitioner provides no alternative interpretation of
`the Court’s statement that the Final Written Decision lacks an explanation of why
`the cited passage does not disclose the compatibility check.
`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.
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`III. The Petitioner’s Brief on Remand Disregards the Outstanding Issues in
`this Proceeding as to Whether the Petition Provides Sufficient
`Motivation to Combine Apfel with Lillich and Todd
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`The Petitioner’s Brief on Remand incorrectly states that “[a]fter institution,
`Uniloc disputed only whether the prior art satisfies the “comparing’ / ‘compare’
`limitations” of the independent claims. Petitioner’s Remand Brief, 2. In fact,
`Patent Owner demonstrated in the Patent Owner Response to Petition that the
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`IPR2020-00023
`U.S. Patent No. 6,467,088
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`Petition failed to provide sufficient motivation to modify Apfel based on either
`Lillich or Todd, or to modify Apfel based on a combination of Lillich and Todd.
`Patent Owner Response (Paper 10), 26-27. Patent Owner pointed out, in its Sur-
`Reply, defects in the Petitioner’s Reply relating to these deficiencies in the
`Petition. Patent Owner Sur-Reply (Paper 13), 20-21. The Final Written Decision of
`the Board did not reach these arguments, as the Board determined that the failure
`of Petitioner to show that the Apfel teaches the comparing step recited in the
`challenged independent claims was dispositive. Final Written Decision (Paper 20),
`15. Petitioner agrees that the “Final Written Decision turned on the “comparing”
`element,” Petitioner’s Remand Brief, 3, and thus must agree that the Board did not
`reach Patent Owner’s arguments as to motivation to combine. Accordingly,
`contrary to Petitioner, Patent Owner’s arguments that the Petition failed to provide
`sufficient motivation to modify Apfel based on either Lillich or Todd, or to modify
`Apfel based on a combination of Lillich and Todd remain to be decided.
`Accordingly, for the reasons set forth in the Patent Owner Response to
`Petition and in the Patent Owner Sur-Reply, denial of the Petition is respectfully
`requested on the grounds that the Petitioner has failed to provide sufficient
`motivation to modify Apfel based on either Lillich or Todd, or to modify Apfel
`based on a combination of Lillich and Todd.
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`IPR2020-00023
`U.S. Patent No. 6,467,088
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`IV. CONCLUSION
`For at least the reasons set forth above, Uniloc respectfully requests that the
`Board deny all challenges in the instant Petition.
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`Date: February 15, 2023
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`Respectfully submitted,
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`By: /Ryan A. Loveless/
`Ryan Loveless
`Attorney for Patent Owner
`Reg. No. 51,970
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`IPR2020-00023
`U.S. Patent No. 6,467,088
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that an
`electronic copy of the foregoing PATENT OWNER’S REPLY 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.
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`Date: February 15, 2023
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`Respectfully submitted,
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`By: /Ryan Loveless/
`Ryan Loveless
`Attorney for Patent Owner
`Reg. No. 51,970
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