UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`IPR2020-00023
`Patent 6,467,088
`
`
`_________________
`
`
`PETITIONER’S RESPONSE TO
`PATENT OWNER’S OPENING REMAND BRIEF
`
`
`
`
`
`
`
`
`
`
`
`
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`IPR2020-00023
`Patent 6,467,088
`
`
`_________________
`
`
`PETITIONER’S RESPONSE TO
`PATENT OWNER’S OPENING REMAND BRIEF
`
`
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`IPR2020-00023
`Patent 6,467,088
`
`Page
`
`INTRODUCTION ........................................................................................... 1
`I.
`II. ARGUMENT ................................................................................................... 1
`The Mandate Rule Precludes Reconsideration
`A.
`Of Whether Apfel Discloses The “Comparing” Step ........................... 2
`The Federal Circuit Decided That
`1.
`Apfel Discloses The “Comparing” Step ..................................... 2
`The Board May Not Reconsider The Court’s Finding ............... 3
`2.
`No Exceptions To The Mandate Rule Apply Here ..................... 5
`3.
`Even Absent The Mandate Rule, Patent Owner’s Arguments Fail ...... 5
`B.
`III. CONCLUSION ................................................................................................ 8
`CERTIFICATE OF SERVICE ................................................................................10
`
`
`
`
`
`
`
`
`
`
`Petitioner’s Response Brief On Remand
`
`Page i
`
`
`
`TABLE OF AUTHORITIES
`
`IPR2020-00023
`Patent 6,467,088
`
`Page(s)
`
`Cases
`Amado v. Microsoft Corp.,
`517 F.3d 1353 (Fed. Cir. 2008) .............................................................................. 2
`Amneal Pharms. LLC v. Almirall, LLC,
`960 F.3d 1368 (Fed. Cir. 2020) .............................................................................. 4
`Banks v. United States,
`741 F.3d 1268 (Fed. Cir. 2014) ..................................................................... 2, 5, 8
`MyMail, Ltd. v. ooVoo, LLC,
`934 F.3d 1373 (Fed. Cir. 2019) .............................................................................. 1
`Sibbald v. United States,
`37 U.S. 488 (1838) ................................................................................................. 4
`Sprague v. Ticonic Nat. Bank,
`307 U.S. 161 (1939) ............................................................................................... 2
`United States. v. Semon Bache & Co.,
`27 C.C.P.A. 89 (1939) ............................................................................................ 4
`United States v. J.H. Cottman & Co.,
`23 C.C.P.A. 378 (1936) .......................................................................................... 4
`Board Decisions
`Zodiac Pool Sys., Inc. v. Aqua Prod., Inc.,
`No. IPR2013-00159 (P.T.A.B. Feb. 11, 2019) ....................................................... 2
`Statutes
`35 U.S.C. § 144 .......................................................................................................... 2
`
`
`Petitioner’s Response Brief On Remand
`
`Page ii
`
`
`
`IPR2020-00023
`Patent 6,467,088
`
`I.
`
`INTRODUCTION
`Implicitly acknowledging that it is the only way its patent could survive,
`
`Patent Owner invites the Board to overturn the Federal Circuit’s determination that
`
`the Apfel prior art reference teaches the claimed “comparing” step. However, the
`
`mandate rule precludes revisiting this issue that the Court already decided.
`
`The Final Written Decision (Paper 20) addressed only the “comparing” step.
`
`Thus, that step was the focus of the briefing and opinion on appeal. See Paper 29
`
`(the “Opinion”). After finding Apfel teaches this step, the Court properly remanded
`
`for the Board to address in the first instance whether the prior art satisfied the other
`
`claim elements. MyMail, Ltd. v. ooVoo, LLC, 934 F.3d 1373, 1380 (Fed. Cir. 2019)
`
`(“It is improper for us to determine factual issues in the first instance on appeal.”).
`
`The Court did not remand for the Board to overturn the Court’s determination
`
`that Apfel teaches the “comparing” step. Yet Patent Owner’s remand brief disputes
`
`only that issue. Because the Federal Circuit already resolved that issue in Petitioner’s
`
`favor, and for the reasons set forth in Microsoft’s Petition—which otherwise remain
`
`unrebutted—the Board should find all claims unpatentable.
`
`II. ARGUMENT
`The mandate rule bars Patent Owner’s argument that “Petitioner has failed to
`
`show that Apfel discloses the recited comparing step.” E.g., Paper 31, 9. That
`
`argument also fails on the merits and as waived for not being previously presented.
`
`Petitioner’s Response Brief On Remand
`
`Page 1
`
`
`
`IPR2020-00023
`Patent 6,467,088
`
`A. The Mandate Rule Precludes Reconsideration
`Of Whether Apfel Discloses The “Comparing” Step
`
`“[T]he mandate rule forecloses reconsideration of issues implicitly or
`
`explicitly decided on appeal.” Amado v. Microsoft Corp., 517 F.3d 1353, 1364 (Fed.
`
`Cir. 2008). “The mandate rule, encompassed by the broader law-of-the-case
`
`doctrine, dictates that ‘an inferior court has no power or authority to deviate from
`
`the mandate issued by an appellate court.’” Banks v. United States, 741 F.3d 1268,
`
`1276 (Fed. Cir. 2014) (citation omitted). Thus, the Board is “bound by the mandate
`
`on matters the mandate addressed.” Zodiac Pool Sys., Inc. v. Aqua Prod., Inc.,
`
`No. IPR2013-00159 (P.T.A.B. Feb. 11, 2019); see also, e.g., 35 U.S.C. § 144 (a
`
`Federal Circuit “mandate and opinion ... shall govern the further proceedings” in a
`
`case before the Board); Sprague v. Ticonic Nat. Bank, 307 U.S. 161, 167–69 (1939).
`
`1.
`
`The Federal Circuit Decided That
`Apfel Discloses The “Comparing” Step
`
`
`
`The Federal Circuit decided that Apfel discloses the “comparing” step. See,
`
`e.g., Paper 29, 3 (“[T]he Board erred in concluding that Apfel does not perform the
`
`claimed ‘comparing’ step.”).
`
`Patent Owner agrees that the Court determined that “Apfel requires a
`
`comparing step.” Paper 31, 2 (Section IV header). Despite this admission, Patent
`
`Owner argues that the Court—in making this determination—was not evaluating
`
`Apfel in relation to the ’088 patent’s claimed comparing step. Id., 2–8 (arguing that
`
`Petitioner’s Response Brief On Remand
`
`Page 2
`
`
`
`IPR2020-00023
`Patent 6,467,088
`Apfel’s comparing step does not meet the claims). This argument makes no sense as
`
`the Court expressly framed “[t]he dispositive issue” as whether Apfel “performs the
`
`claimed ‘comparing’ step.” Paper 29, 3 (emphasis added) (further quoting aspects of
`
`the claimed comparison, including “information specifying at least one additional
`
`component”). And the Court expressly found it was error to “conclude[e] that Apfel
`
`does not perform the claimed ‘comparing’ step.” Id. (emphasis added).
`
`Patent Owner’s remand brief ignores the determination of the Court, rehashes
`
`the same Apfel passages already carefully considered by the Court, and seeks a
`
`different outcome. In trying to create an issue where none exists, Patent Owner leans
`
`on an out-of-context quote from the Opinion, namely that “‘the Board failed to
`
`explain why [Apfel 7:13–19] did not disclose the required compatibility check.’”
`
`Paper 31, 3 (quoting Paper 29, 2). But, in context, that statement is not an instruction
`
`for the Board to revisit the issue. Instead, the Opinion explains how that passage and
`
`others in Apfel teach a compatibility check and thus it was error to “conclude[e] that
`
`Apfel does not perform the ‘comparing’ step.” Paper 29, 7.
`
`2.
`
`The Board May Not Reconsider The Court’s Finding
`
`The Court’s determination that Apfel teaches the “comparing” step is the type
`
`of determination that the Board may not reconsider on remand. For example, in
`
`United States v. Semon Bache & Co., the Court of Customs and Patent Appeals
`
`(“CCPA”) found that no substantial evidence supported a customs court’s
`
`Petitioner’s Response Brief On Remand
`
`Page 3
`
`
`
`IPR2020-00023
`Patent 6,467,088
`determination that certain sales were not “sales in wholesale quantities in the
`
`ordinary course of trade, which was a vital question in the case,” and thus reversed
`
`the customs court’s decision and remanded the case. 27 C.C.P.A. 89, 90–91 (1939).1
`
`On remand, the customs court did not follow the CCPA’s mandate and instead
`
`revisited the same issue, reaching the same determination that the CCPA had already
`
`found lacked substantial evidence support. Id.
`
`Upon a second appeal, the CCPA explained that the customs court’s decision
`
`to disregard the Court’s mandate was improper under CCPA and Supreme Court
`
`precedent. Id. at 92–93. That precedent explained the duty of a reviewed court or
`
`similar entity to follow the opinions of its reviewing courts. United States v. J.H.
`
`Cottman & Co., 23 C.C.P.A. 378, 380 (1936) (“‘Whatever … was before the court,
`
`and is disposed of, is considered as finally settled.’”) (quoting Sibbald v. United
`
`States, 37 U.S. 488, 492 (1838)).
`
`Just as the customs court violated the mandate rule in Semon Bache, the Board
`
`would violate the mandate rule if it remade the same “comparing” step finding that
`
`the Federal Circuit already determined to lack substantial evidence.
`
`
`1 As a predecessor court to the Federal Circuit, the CCPA’s decisions are binding.
`
`E.g., Amneal Pharms. LLC v. Almirall, LLC, 960 F.3d 1368, 1371 (Fed. Cir. 2020).
`
`Petitioner’s Response Brief On Remand
`
`Page 4
`
`
`
`IPR2020-00023
`Patent 6,467,088
`No Exceptions To The Mandate Rule Apply Here
`
`3.
`
`“Under the mandate rule, a court below must adhere to a matter decided in a
`
`prior appeal unless one of three ‘exceptional circumstances’ exist: (1) subsequent
`
`evidence presented at trial was substantially different from the original evidence;
`
`(2) controlling authority has since made a contrary and applicable decision of the
`
`law; or (3) the decision was clearly erroneous ‘and would work a manifest
`
`injustice.’” Banks, 741 F.3d at 1276 (citation omitted). No exception applies here.
`
`No new evidence has been presented after the Federal Circuit decided that Apfel
`
`teaches the “comparing” step. And Patent Owner does not argue that the Opinion
`
`was clearly erroneous or that a change in applicable precedent has occurred.
`
`B.
`
`Even Absent The Mandate Rule, Patent Owner’s Arguments Fail
`
`Even if the mandate rule did not apply, Patent Owner’s arguments fail as both
`
`waived and on the merits. After admitting that Apfel performs a comparison (Paper
`
`31, 2), Patent Owner appears to argue that Apfel discloses a two-step process that is
`
`allegedly somehow “inoperable,” separately determines and compares, and thus
`
`does not satisfy the claims. See, e.g., Paper 31, 6–7 (arguing that “Apfel fails to
`
`provide any indication of the nature of the compatibility assessment” and thus must
`
`be “inoperable”); id., 3 (arguing Apfel does not “provide[] any indication of the
`
`information or determination involved in the compatibility determination”).
`
`Petitioner’s Response Brief On Remand
`
`Page 5
`
`
`
`IPR2020-00023
`Patent 6,467,088
`Patent Owner’s arguments are waived because it never previously argued that
`
`Apfel is inoperable or lacks information on configurations, instead arguing that
`
`Apfel simply did not perform a comparison. E.g., POR (Paper 10), 16–20 (arguing
`
`that purportedly “indecisive language in Apfel” created uncertainty over whether
`
`Apfel performs a comparison); id., 20–21 (arguing that Apfel lacks the claimed
`
`comparison because it only determines if an upgrade is available, not whether it is
`
`compatible). Moreover, Patent Owner’s remand brief does not address the Petition’s
`
`explanation of how Apfel’s comparing satisfies the claimed comparing.
`
`The Petition, supported by expert testimony, explained how the Apfel system
`
`“contains information specifying as many as five different components that make up
`
`the configuration.” Petition (Paper 2), 39–40. This information includes, e.g., the
`
`“version of the Web Authoring Components program module,” the “version of a
`
`HTML converter,” the “version of the word processor program module,” language,
`
`and the “type of operating system.” Id. (quoting Apfel 8:39–46 & 8:53–66).
`
`The Petition further explained how Apfel used “a database of ‘upgrade
`
`packages and corresponding configurations’” to identify an “appropriate upgrade
`
`package.” Paper 2, 41–42 (quoting Apfel 9:30–42); see also id., 39–41. Petitioner
`
`and its expert also explained how Apfel identifies upgrades that are incompatible
`
`and how it would have been obvious to do this using Apfel’s “received information
`
`about requested upgrades and additional information specifying other components
`
`Petitioner’s Response Brief On Remand
`
`Page 6
`
`
`
`IPR2020-00023
`Patent 6,467,088
`and system configuration.” Paper 2, 45–46 (quoting Apfel, 7:13–19). The Federal
`
`Circuit considered these two Apfel passages in determining that Apfel teaches the
`
`claimed “comparing” step, never questioning Apfel’s operability. Paper, 29. Thus,
`
`Apfel teaches a “comparing” that involves the claimed configuration information.
`
`Even if Apfel were somehow lacking in detail—it is not—the Petition
`
`explained how the challenged claims are further obvious over secondary references
`
`Todd and Lillich. Paper 2, 39–49. Those references provide even greater detail on
`
`how a POSITA would have implemented Apfel’s comparison that used both a list of
`
`known acceptable configurations (Paper 2, 42–45) and a list of known unacceptable
`
`configurations (id., 46–48). That combination—which Patent Owner does not
`
`address—further renders each challenged claim unpatentable.
`
`Patent Owner’s arguments also contradict the Federal Circuit’s claim
`
`construction determination to the extent they rely on some alleged ordering of steps
`
`in Apfel. Paper 31, 3–4 (arguing alleged deficiencies due to ordering of Apfel
`
`comparing and determining steps, including that “a compatibility determination is
`
`distinct from determining an upgrade”); id. at 5 (arguing “a second assessment []
`
`must follow and thus be separate from the first assessment” in Apfel). These
`
`arguments about Apfel’s order of steps fail because the Court explained that “[a]ny
`
`construction that would narrow the determining and comparing steps to a certain
`
`order is not supported by either the claim language or the specification.” Paper, 29,
`
`Petitioner’s Response Brief On Remand
`
`Page 7
`
`
`
`IPR2020-00023
`Patent 6,467,088
`7; see also id. (“[T]he claim cannot require that the steps be performed in the order
`
`written.”).
`
`In sum, Patent Owner’s new arguments fail as waived and on the merits.
`
`Patent Owner fails to explain why Apfel’s server, which “maintains a database of
`
`upgrade packages and corresponding configurations which should result in their
`
`download” (Apfel, 9:30–40, cited by Paper 29, 4–5), somehow would be unable to
`
`“assess[] whether an upgrade is available and whether … the upgrade is somehow
`
`incompatible with computer 20” (Apfel, 7:13–19 (cited by Paper 29, 4). And in any
`
`event, Patent Owner’s arguments do nothing to save the claims from the combination
`
`of Apfel, Todd, and Lillich, which separately renders each challenged claim obvious.
`
`III. CONCLUSION
`The law of the case doctrine, of which the mandate rule is a part, promotes
`
`“finality and efficiency in the judicial process by preventing relitigation of already-
`
`settled issues.” Banks, 741 F.3d at 1276. Patent Owner’s opening remand brief
`
`revisits the same Apfel passages the Federal Circuit already analyzed in deciding
`
`that Apfel discloses the “comparing” step. This inefficient attempt to relitigate
`
`already-decided issues is an excellent example of why the mandate rule exists.
`
`Microsoft respectfully requests that the Board reject Patent Owner’s arguments and
`
`issue a Final Written Decision finding all challenged claims unpatentable.
`
`Respectfully submitted,
`
`Petitioner’s Response Brief On Remand
`
`Page 8
`
`
`
`Dated: February 15, 2023
`
`
`
`IPR2020-00023
`Patent 6,467,088
`
`
`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
`
`Petitioner’s Response Brief On Remand
`
`Page 9
`
`
`
`IPR2020-00023
`Patent 6,467,088
`
`CERTIFICATE OF SERVICE
`I certify that on February 15, 2023, a complete copy of PETITIONER’S
`
`RESPONSE TO PATENT OWNER’S OPENING REMAND BRIEF was
`
`served on Patent Owner’s 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
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`Page 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
