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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Backholm, et al.
`In re Patent of:
`10,027,619 Attorney Docket No.: 39521-0089IP1/IP2
`U.S. Patent No.:
`July 17, 2018
`Issue Date:
`Appl. Serial No.: 14/609,189
`Filing Date:
`Jan. 29, 2015
`Title:
`MESSAGING CENTRE FOR FORWARDING E-MAIL
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`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`PETITIONER’S NOTICE RANKING PETITIONS AND EXPLAINING
`MATERIAL DIFFERENCES BETWEEN PETITIONS FOR U.S. PATENT
`NO. 10,027,619
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`1
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`Petitioner is filing two concurrent Petitions challenging the validity of
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`claims of U.S. Patent No. 10,027,619 (“the ’619 patent”). Petitioner submits this
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`paper pursuant to the Board’s July 2019 Trial Practice Guide Update.
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`I.
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`Ordering of Petitions
`Although Petitioner believes that both Petitions are meritorious and justified,
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`Petitioner requests that the Board consider the Petitions in the following order:
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`Rank Attny. Docket No. Primary Reference
`A
`39521-0089IP1
`Hind
`B
`39521-0089IP2
`Brown
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`II. Material Differences that Compel Permitting Multiple Petitions
`A. Difference in Focus of Primary References
`While Hind and Brown are both generally directed toward e-mail redirection
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`(by necessity, due to the subject matter of the ’619 patent), the specifications of
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`Hind and Brown focus on different aspects of the redirection process. For
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`example, Brown’s disclosure is largely dedicated to descriptions of authentication
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`of a requesting device by an authenticating device through exchange of an
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`authentication password (APPLE-1012, 1:60-4:26, 7:44-9:36; 14:15-16-67) with
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`comparatively limited (yet still complete) disclosure of e-mail redirection (APPLE-
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`1012, 5:37-7:43). By contrast, while Hind’s disclosure of the “PIN” used for
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`service activation fully discloses the relevant portions of the challenged claims,
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`such discussion of Hind’s PIN is limited to a few brief sections (APPLE-1004,
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`2
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`12:8-11, 17:18-31, 20:14-19, 28:25-29) while the bulk of Hind’s disclosure
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`addresses message redirection. This difference in focus of the primary references
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`leads to a difference in how the secondary references are applied by each Petition.
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`B. Disclosure of the device that receives the “service activation
`code” in relation to receiving/sending the message
`Hind provides a clear and express disclosure that the device that receives the
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`“PIN” and authenticates the requesting device (the mobile device) is the same
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`device that redirects (receives, encrypts, and sends) the e-mail messages (the host
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`system). APPLE-1004, 17:11-31, 28:27-29:1; Hind Petition, pp. 15-27. By
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`contrast, the bulk of the relevant disclosure in Brown regarding device
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`authentication refers generically to “requesting” and “authenticating” devices.
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`APPLE-1012, 1:60-4:26, 7:64-8:15; 14:15-16-67. Due to this distinction, the
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`Brown petition relies on obviousness arguments (based on Brown alone and an
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`alternative argument based on the combination of Brown and Thompson) to
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`demonstrate that it was obvious for the device that receives the authentication
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`password to be the device that redirects messages. Brown Petition, pp. 20-42.
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`C. Claims 32, 46 “…the encryption key is closely related to the
`service activation code.”
`The Brown reference discloses an example in which the password (which
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`serves as Brown’s service activation code) is used as the encryption key to encrypt
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`information (Brown Petition, pp. 48-59) while the Hind petition relies solely on a
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`3
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`secondary reference (Richardson) for such disclosures.
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`D. Claim 33 “…store an association between at least two of…”
`The Hind reference discloses examples in which the PIN (which serves as
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`Hind’s service activation code) is stored in association with an identifier of the
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`remote device and where the PIN is stored in association with the messaging
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`account. Hind Petition, pp. 32-33. By contrast, the Brown petition relies solely on
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`a secondary reference (Eaton) for such disclosures.
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`E.
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`Claims 36, 50, 52 “…a control message is received from the
`remote device upon user interaction with the message”
`The Hind reference discloses an example in which a control message is sent
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`from the mobile device to the host system to cause the host system to redirect an
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`attachment to an e-mail to another device, in response to user interaction with the
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`message. Hind Petition, pp. 33-34. By contrast, the Brown petition relies solely on
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`a secondary reference (Friend) for these claims.
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`F.
`Type of Prior Art
`Grounds 1 and 2 of the Hind petition rely on references (Hind, Nielsen, and
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`Thompson) that qualify as prior art under §102(b) and therefore cannot be
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`antedated. By contrast, Brown qualifies as prior art under §102(e) and furthermore
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`relies on an earlier filed provisional patent application for this status, thus requiring
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`a Dynamic Drinkware type analysis, which opens up opportunities for both
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`antedating by the Patent Owner, and an attack of the Dyanmic Drinkware analysis.
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`4
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` In view of the material differences shown above, the Board should exercise
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`its discretion to institute both Petitions. Both Petitions are necessary to show the
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`breadth of prior art that reads on the overly broad claims. Instituting on only one
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`Petition would give Patent Owner an unfair advantage, allowing Patent Owner to
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`strategically attempt to distinguish its claims over the instituted prior art even if
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`those same arguments would effectively show invalidity over the non-instituted
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`prior art. This danger of Patent Owner gamesmanship is particularly relevant in
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`this case, because the ’619 patent has never before been challenged in IPR, and
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`consequently, Patent Owner has yet to take an official position of what its claims
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`do and do not cover (other than Patent Owner’s litigation infringement contentions,
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`which suggests that both sets of prior art are invalidating).
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`Moreover, this is not a situation where Petitioner has filed many IPR
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`petitions against one patent or is asserting dozens of independent grounds. Rather,
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`Petitioner has filed only two petitions, each based on a single primary reference.
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`Given the number of claims asserted in litigation by Petitioner, (20 claims in the
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`’619 patent, alone), instituting two petitions is reasonable. The differences
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`between the petitions are due to Seven’s uncertain positions and aggressive
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`litigation strategy, which will continue until the Patent Owner Responses are filed.
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`5
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`Dated: January 3, 2020
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`Respectfully submitted,
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`/W. Karl Renner/
`W. Karl Renner, Reg. No. 41,265
`Stuart A. Nelson, Reg. No. 63,947
`Patrick J. Bisenius, Reg. No. 63,893
`Fish & Richardson P.C.
`3200 RBC Plaza, 60 South Sixth Street
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
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`Attorneys for Petitioner
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`6
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
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`certifies that on January 3, 2020, a complete and entire copy of this Petitioner’s
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`Notice Ranking Petitions And Explaining Material Differences Between Petitions
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`was provided via Federal Express, to the Patent Owner by serving the
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`correspondence address of record as follows:
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`NK Patent Law- Seven Networks
`4917 Waters Edge Drive, Suite 275
`Raleigh NC 27606
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`/Diana Bradley/
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`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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