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`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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`SAMSUNG ELECTRONICS AMERICA, INC., APPLE INC., AND
`MOTOROLA MOBILITY LLC,
`Petitioners
`
`
`
`
`
`v.
`
`UNILOC 2017 LLC
`Patent Owner
`
`
`
`
`IPR2020-00701
`PATENT 6,836,654
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`
`
`
`
`
`
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`IPR2020-00701
`U.S. Patent No. 6,836,654
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`
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`TABLE OF CONTENTS
`
`EXHIBITS............................................................................................................ III
`
`I.
`
`INTRODUCTION ....................................................................................... 1
`
`II.
`
`THE ‘654 PATENT ..................................................................................... 1
`
`III. RELATED PROCEEDINGS ...................................................................... 3
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART ......................................... 5
`
`V.
`
`PETITIONER DOES NOT PROVE UNPATENTABILITY OF
`ANY CHALLENGED CLAIM ................................................................... 5
`
`A.
`
`Claim Construction Standard ............................................................ 6
`
`B.
`
`C.
`
`Nokia and Barvesten do not teach “verifying a user
`identification module mounted inside the mobile
`radiotelephony device is linked to the mobile
`radiotelephony device.” ..................................................................... 6
`
`The Petition does not establish that Barvesten and/or
`Schultz teaches “verifying a user identification module
`mounted inside the mobile radiotelephony device is
`linked to the mobile radiotelephony device” .................................. 12
`
`D.
`
`The Petition fails to prove obviousness of any dependent
`claim ................................................................................................ 13
`
`VI. APJS ARE UNCONSTITUTIONALLY APPOINTED
`PRINCIPAL OFFICERS ........................................................................... 13
`
`VII. CONCLUSION .......................................................................................... 17
`
`CERTIFICATE OF COMPLIANCE ................................................................... 18
`
`CERTIFICATE OF SERVICE ............................................................................ 19
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`
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`
`ii
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`
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`IPR2020-00701
`U.S. Patent No. 6,836,654
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`EXHIBITS
`
`Claim Construction Order, Uniloc 2017 LLC v. Motorola
`Mobility, LLC, 1-18-cv-018441 (consolidated with 1-18-cv-
`01844), Dkt. 75 (D. Del. Jan. 23, 2020)
`Claim Construction Memorandum Opinion and Order, Uniloc
`2017 LLC v. Samsung Electronics America, Inc., 2-18-cv-
`00508, Dkt. 61 (E.D. Tex. Jan. 20, 2020)
`Order, Uniloc 2017 LLC v. Samsung Electronics America,
`Inc., 2-18-cv-00508, Dkt. 71 (E.D. Tex. Feb. 26, 2020)
`(adopting magistrate’s claim construction order and
`overruling objections)
`Claim Construction Memorandum Opinion and Order, Uniloc
`2017 LLC v. Google LLC, 2-18-cv-00493, Dkt. 165 (E.D.
`Tex. Jan. 20, 2020)
`Order, Uniloc 2017 LLC v. Google LLC, 2-18-cv-00493, Dkt.
`212 (E.D. Tex. Mar. 23, 2020) (adopting magistrate’s claim
`construction order and overruling objections)
`Memorandum Opinion on Claim Construction, Uniloc 2017
`LLC v. Motorola Mobility, LLC, 1-18-cv-01841 (consolidated
`with 1-18-cv-01844), Dkt. 72 (D. Del. Jan. 17, 2020)
`
`iii
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`IPR2020-00701
`U.S. Patent No. 6,836,654
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`I.
`
`INTRODUCTION
`
`Uniloc 2017 LLC (the “Patent Owner” or “Uniloc”) submits its Preliminary
`
`Response to the Petition for Inter Partes Review (“Pet.” or “Petition”) of United
`
`States Patent No. 6,836,654 (“the ‘654 Patent” or “Ex. 1001”) filed by Samsung
`
`Electronics America, Inc. (“Samsung”),1 Apple Inc., and Motorola Mobility LLC.
`
`(“Petitioner”) in IPR2020-00701.
`
`In view of the reasons presented herein, the Petition fails to meet its burden
`
`of proving any challenged claim is unpatentable. In addition, Petitioner Apple, Inc.
`
`was served with a complaint alleging infringement of the ’654 Patent on April 11,
`
`2018. See Uniloc 2017, LLC v. Apple Inc, :19-cv-01697, Dkt. Nos. 1, 10 (NDCA).
`
`Furthermore, Petitioner Motorola Mobility LLC was served with a complaint
`
`alleging infringement of the ’654 Patent at least by January 4, 2019 See Uniloc 2017
`
`LLC v. Motorola Mobility, LLC, 1-18-cv-01844 Dkt. Nos. 1, 4 (DDE). Thus, inter
`
`partes review may not be instituted if Petitioners’ motion for joinder to IPR2019-
`
`01471 (the “Microsoft IPR”) is not granted.
`
`Thus, this Petition should not be instituted or joined to the Microsoft IPR.
`
`II. THE ‘654 PATENT
`
`The ’654 patent is titled “Anti-theft protection for a radiotelephony device.”
`
`The ʼ654 patent issued December 28, 2004, from U.S. Patent Application No.
`
` Uniloc and Samsung have filed a joint motion to terminate as to Samsung (Paper
`
` 1
`
`9).
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`1
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`IPR2020-00701
`U.S. Patent No. 6,836,654
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`09/739,507 filed December 18, 2000, claiming priority to French application 99-
`
`16136, filed December 21, 1999.
`
`Figure 3 of the ’654 patent, reproduced below, is a flow chart depicting an
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`example embodiment.
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`2
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`The text accompanying Figure 3 describes operation from box K1 at the top
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`of the figure, in which the device is in a state of availability, through various blocking
`
`states (K5, K11, K30) and decisional nodes related to these blocking states. See
`
`EX1001, 2:61–4:6.
`
`
`III. RELATED PROCEEDINGS
`
`The ’654 patent is or was involved in the following proceedings.
`
`Case Filing
`Date
`4/9/2018
`
`Case Name
`
`Case Number Court
`
`Uniloc USA, Inc. et al v. Apple Inc.
`
`1-18-cv-00293 WDTX
`
`7/23/2018 Uniloc USA, Inc. et al v. Samsung
`Electronics America, Inc. et al
`7/23/2018 Uniloc USA, Inc. et al v. Huawei
`Device USA, Inc. et al
`8/10/2018 Uniloc USA, Inc. et al v. Motorola
`Mobility, LLC
`8/14/2018 Uniloc USA, Inc. et al v. Huawei
`Device USA, Inc. et al
`10/1/2018 Uniloc 2017 LLC et al v. Google
`LLC
`11/17/2018 Uniloc 2017 LLC et al v. Google
`LLC
`11/17/2018 Uniloc 2017 LLC v. Samsung
`Electronics America, Inc. et al
`11/17/2018 Uniloc 2017 LLC v. Huawei Device
`USA, Inc. et al
`11/20/2018 Uniloc 2017 LLC v. Motorola
`Mobility, LLC
`11/30/2018 Uniloc 2017 LLC v. HTC America,
`Inc.
`Uniloc 2017, LLC v. Apple Inc.
`
`4/2/2019
`
`2-18-cv-00309 EDTX
`
`2-18-cv-00310 EDTX
`
`1-18-cv-01230 DDE
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`2-18-cv-00357 EDTX
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`2-18-cv-00422 EDTX
`
`2-18-cv-00493 EDTX
`
`2-18-cv-00508 EDTX
`
`2-18-cv-00509 EDTX
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`1-18-cv-01844 DDE
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`2-18-cv-01732 WDWA
`
`3-19-cv-01697 NDCA
`
`3
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`
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`
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`6/19/2019
`
`6/19/2019
`
`4/29/2019 Uniloc 2017 LLC v. Microsoft
`Corporation
`Samsung Electronics America, Inc.
`et al v. Uniloc 2017 LLC
`Samsung Electronics America, Inc.
`et al v. Uniloc 2017 LLC
`Microsoft Corporation v. Uniloc
`2017 LLC
`Microsoft Corporation v. Uniloc
`2017 LLC
`Samsung Electronics America, Inc.
`et al v. Uniloc 2017 LLC
`
`8/9/2019
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`8/9/2019
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`3/11/2020
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`IPR2020-00701
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`8-19-cv-00781 CDCA
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`IPR2019-01218 PTAB
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`IPR2019-01219 PTAB
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`IPR2019-01470 PTAB
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`IPR2019-01471 PTAB
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`IPR2020-00701 PTAB
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`Claim terms of the ’654 patent have been construed in three of the district
`
`court actions listed above. See Ex. 2007, Memorandum Opinion on Claim
`
`Construction, Uniloc 2017 LLC v. Motorola Mobility, LLC, 1-18-cv-01841
`
`(consolidated with 1-18-cv-01844), Dkt. 72 (D. Del. Jan. 17, 2020); Ex. 2002, Claim
`
`Construction Order, Uniloc 2017 LLC v. Motorola Mobility, LLC, 1-18-cv-018441
`
`(consolidated with 1-18-cv-01844), Dkt. 75 (D. Del. Jan. 23, 2020); Ex. 2003, Claim
`
`Construction Memorandum Opinion and Order, Uniloc 2017 LLC v. Samsung
`
`Electronics America, Inc., 2-18-cv-00508, Dkt. 61 (E.D. Tex. Jan. 20, 2020); Ex.
`
`2004, Order, Uniloc 2017 LLC v. Samsung Electronics America, Inc., 2-18-cv-
`
`00508, Dkt. 71 (E.D. Tex. Feb. 26, 2020) (adopting magistrate’s claim construction
`
`order and overruling objections), Ex. 2005, Claim Construction Memorandum
`
`Opinion and Order, Uniloc 2017 LLC v. Google LLC, 2-18-cv-00493, Dkt. 165 (E.D.
`
`Tex. Jan. 20, 2020); Ex. 2006, Order, Uniloc 2017 LLC v. Google LLC, 2-18-cv-
`
`00493, Dkt. 212 (E.D. Tex. Mar. 23, 2020) (adopting magistrate’s claim construction
`
`order and overruling objections).
`
`4
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`IV. LEVEL OF ORDINARY SKILL IN THE ART
`
`The Petition proposes a person of ordinary skill in the art in December 2000
`
`(“PHOSITA”) would have had a bachelor’s degree in electrical engineering or
`
`computer science, and one year of general programming experience. Additional
`
`experience may substitute for education, and addition education may substitute for
`
`experience. Pet. 10-11. For purposes of this Response, Patent Owner does not
`
`dispute Petitioner’s definition of a PHOSITA. Moreover, Patent Owner does not
`
`provide its own definition because even applying definitions proposed by Petitioner,
`
`Petitioner has not met its burden of showing that the cited references anticipate or
`
`render obvious, any of the disputed claims of the '654 Patent.
`
`V.
`
`PETITIONER DOES NOT PROVE UNPATENTABILITY OF ANY
`CHALLENGED CLAIM
`
`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
`
`§ 42.108(c) (“review shall not be instituted for a ground of unpatentability unless . .
`
`. there is a reasonable likelihood that at least one of the claims challenged . . . is
`
`unpatentable”). The Petition should be denied as failing to meet this burden.
`
`The Petition presents the following grounds of purported unpatentability
`
`based on alleged obviousness:
`
`Ground
`
`References
`
`Challenged Claims
`
`Nokia (Ex. 1003) in view of Barvesten (Ex.
`1006)
`Barvesten (Ex. 1006) in view of Schultz
`(Ex. 1008)
`
`10-20
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`10-20
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`1.
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`2
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`5
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`A. Claim Construction Standard
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`The Petition proposes that the claim terms should be given the ordinary
`
`meaning that the terms would have to a person of ordinary skill in the art on the
`
`earliest effective filing date, in view of the specification and file history. Pet. 11.
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`For this proceeding only, Patent Owner submits that all claim terms be given their
`
`plain and ordinary meaning. Although Patent Owner provides arguments below on
`
`the scope of certain claim terms, Patent Owner does not propose a comprehensive
`
`construction, as it would not be necessary to resolve the controversy. See Nidec
`
`Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed.
`
`Cir. 2017) (noting that “we need only construe terms ‘that are in controversy, and
`
`only to the extent necessary to resolve the controversy’”) (citing Vivid Techs., Inc.
`
`v. Am. Sci. & Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)); see also Changes to
`
`the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before
`
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340, 51,353 (Oct. 11, 2018) (Final
`
`Rule) (“Moreover, it also may not be necessary to determine the exact outer
`
`boundary of claim scope because only those terms that are in controversy need be
`
`construed, and only to the extent necessary to resolve the controversy (e.g., whether
`
`the claim reads on a prior art reference).” (citing Nidec)).
`
`B. Nokia and Barvesten do not teach “verifying a user identification
`module mounted inside the mobile radiotelephony device is linked
`to the mobile radiotelephony device.”
`
`The Petition relies on the combination of Nokia and Barvesten for teaching
`
`“verifying a user identification module mounted inside the mobile radiotelephony
`
`6
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`device is linked to the mobile radiotelephony device” (the "verifying" step) as recited
`
`in independent claims 10 and 17. Pet. 19-26. The Petition fails at least because the
`
`combination of references does not teach any user identification module that is
`
`linked to a device such that it can only function with that device.
`
`The Petition misconstrues the plain and ordinary meaning of the "verifying"
`
`step. For example, the Petition asserts that Nokia teaches a user identification
`
`module that is "linked" to a mobile phone (communicator) in the context of its "SIM
`
`change security" feature. Pet. 20-21 (citing Nokia 82/131). But the cited portion of
`
`Nokia merely teaches a security option of the mobile phone in which a SIM card
`
`may be authorized for use with that mobile phone. It does not, however, teach that
`
`the SIM card is "linked" to the mobile phone within the meaning and intent of the
`
`'654 Patent.
`
`The '654 Patent describes how a user identification module is linked to an
`
`electronic device (e.g., mobile phone). In an embodiment described in the ’654
`
`patent, for example, the function of linking the user identification module to the
`
`device involves not only authorizing the user identification module to permit the
`
`normal operation of the device, but also ensuring that the user identification module
`
`cannot be used with any other device. See ’654 Patent Fig. 3, 2:61-3:43. As shown
`
`in the flow chart of Figure 3 and the accompanying text, in this embodiment, the
`
`device is initially in a state of availability at box K1. Id, 2:63-65. When the user
`
`locks the device at box K2, the identification module that is inside the device is
`
`automatically linked to the device. The device is automatically linked by reading
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`7
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`data from the identification module (e.g., the international identification number
`
`(IMSI)) and stores it in the random-access memory of the device. Id, 2:56-3:6. Thus,
`
`the identification module is linked with the device in that the user identification
`
`module will only function with that device.
`
`Indeed, the '654 Patent teaches that, should the user identification module be
`
`placed within another device, normal operation of the device is not permitted. Id..,
`
`4:23-30. Thus, the "verifying" step, when taken in the context of the '654 Patent
`
`includes not only “confirming that a user identification module mounted inside the
`
`mobile
`
`radiotelephony device permits normal operation of
`
`the mobile
`
`radiotelephony device,” but also limiting the use of the user identification module
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`only to the device that it is linked with.
`
`Nokia does not teach or suggest a user identification module (SIM card) that
`
`once linked, is restricted to use with only the mobile phone (device) that it is linked
`
`with. Nokia states that the communicator mobile phone recognizes up to five
`
`different SIM cards. Nokia, 82/131. But Nokia does not teach or suggest how these
`
`five different SIM cards may, or may not, function when used in conjunction with
`
`another different mobile phone. Furthermore, Nokia provides no concrete examples
`
`or embodiments associated with how this may be accomplished.
`
`As an initial matter, Patent Owner notes that a PHOSITA would understand
`
`that Nokia is only a user’s manual that does not teach how to make or use the asserted
`
`features of the claims 10 and 17. Rather, it merely describes, at a high level, the
`
`supposed behavior of a particular phone (e.g., a Communicator) to a user. Moreover,
`
`8
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`Nokia in no way explains to a user how to make a radio telephony device with the
`
`features asserted by the Petition. As such, the teachings of Nokia are not enabling.
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`The Petition cites Nokia to assert:
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`A valid SIM card (supplied by your network operator) is required for
`
`making and receiving calls. The network operator may prevent the use
`
`of the communicator with any other but the operator’s own SIM cards.
`
`If an unacceptable SIM card is inserted, the message INVALID SIM
`
`CARD will be displayed. Should this happen, contact your retailer or
`
`network operator.
`
`Pet. 20 (citing Nokia 11/131). But as shown here, the SIM card, which is required
`
`for making and receiving calls, is provided by the network operator. Additionally,
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`Nokia states that the network operator may prevent the use of the phone (e.g.,
`
`Communicator) with only the SIM card provided by the network operator. Thus,
`
`Nokia teaches that the SIM card is not locked or linked to the phone, but rather to
`
`the network administered by the network operator because the network operator who
`
`subsidizes the use of the phone, has a vested interest in how the phone is used as will
`
`be described in detail herein below.
`
`The Petition further asserts that the Nokia Manual discloses that the mobile
`
`device can detect whether the “SIM card in the communicator has been changed”
`
`and that the “communicator recognizes five different SIM cards as the owner’s
`
`cards.” Pet. 21 (citing Ex. 1003 82/131). But this is not what Nokia teaches. Nokia
`
`explicitly teaches, and only teaches "When active, this security option checks
`
`whether the SIM card in the communicator has been changed." Nokia p. 82/131.
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`9
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`The security option could be performed anywhere in the network of the network
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`operator. But because Nokia is simply a user manual, it is silent as to exactly where
`
`the security option performs this checking operation. There exists no teaching or
`
`suggestion within the entirety of Nokia that the phone checks whether the SIM card
`
`in the communicator has changed. As such, Nokia cannot be construed to teach or
`
`suggest the "verifying" step of claims 10 and 17. It is respectfully submitted that the
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`Petition is attempting to impart disclosure into the teachings of Nokia where indeed,
`
`none exists.
`
`For at least the foregoing reasons, Nokia fails to teach “verifying a user
`
`identification module mounted inside the mobile radiotelephony device is linked to
`
`the mobile radiotelephony device,” as recited in independent claims 10 and 17. If a
`
`single limitation of a claim is absent from the prior art, the claim cannot be
`
`considered obvious. See CFMT, Inc. v. YieldUp Int’l Corp., 349 F.3d 1333, 1342
`
`(Fed. Cir. 2003) (“Obviousness requires a suggestion of all limitations in a claim.”)
`
`(citing In re Royka, 409 F.2d 981, 985 (C.C.P.A. 1974)); In re Rijckaert, 9 F.3d
`
`1531, 1534 (Fed. Cir. 1993) (reversing obviousness rejection where prior art did not
`
`teach or suggest all claim limitations).
`
`Barvesten does not teach or suggest the "verifying" step either. The Petition
`
`cites Barvesten for its alleged teaching of storing the same data in the identification
`
`module and mobile device for comparison purposes. Pet. 22. But, like Nokia,
`
`Barvesten does not teach or suggest a user identification module (SIM card) that
`
`10
`
`
`
`
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`once linked, is restricted to use with only the mobile phone (device) that it is linked
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`with.
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`Barvesten is directed to an arrangement for rendering services such as
`
`telephone communication, data communication, etc., comprising a terminal unit
`
`(device) and an access unit (identification module). Barvesten, 2:20-23. Barvesten
`
`teaches that the access unit may be a subscriber identity module (SIM card). Id..,
`
`2:29. Barvesten further teaches that the terminal unit stores a first access-unit-
`
`identification means (international mobile subscriber identity (IMSIs)) for each of
`
`one or more IMSIcs stored in corresponding access units (SIM cards). Id.., 2:24-29.
`
`Additionally, Barvesten
`
`teaches a second access-unit-identification means
`
`comprising a personal identification number (PINc) of the access unit (SIM card)
`
`that can be used to activate the terminal unit (device). Id.., 2:42-49. Barvesten,
`
`however, does not teach that the SIM card is linked to the terminal unit such that it
`
`is restricted to use only with that terminal unit.
`
`This functionality is substantially different from the "verifying" step as recited
`
`in Claims 10 and 17 where the user identification module only functions with the
`
`device that it is linked with. Thus, the access unit (SIM card) as described by
`
`Barvesten cannot be construed to be linked with the terminal unit (radiotelephony
`
`device) within the scope and meaning of the "verifying" step as recited in Claims 10
`
`and 17.
`
`It is also respectfully submitted that Barvesten cannot be reasonably combined
`
`with Nokia because it was well known to any PHOSITA at the time of the '654 Patent
`
`11
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`that a network operator subsidized use of the phone in return for profits associated
`
`with providing its communication services. Were the SIM card checking technique
`
`of Barvesten to be implemented in the Communicator described in Nokia, the
`
`network operator could not monitor or control how the Communicator is used. Thus,
`
`Barvesten effectively teaches away from a SIM card checking technique used by
`
`Barvesten because such a system would not allow a network operator to control
`
`when and how its subsidized phones are used. Thus, Barvesten cannot be combined
`
`with Nokia because Nokia teaches away from a SIM card checking technique as
`
`taught by Barvesten.
`
`For at least the foregoing reasons, Petitioner fails to meet its burden to show
`
`that Nokia, Barvesten, or any combination thereof teaches the claimed “verifying”
`
`step, or to show unpatentability based on Nokia and/or Barvesten.
`
`C. The Petition does not establish that Barvesten and/or Schultz
`teaches “verifying a user identification module mounted inside the
`mobile radiotelephony device is linked to the mobile
`radiotelephony device”
`
`The Petitioner has failed to meet its burden of establishing that Barvesten and
`
`Schultz teach or suggest “verifying a user identification module mounted inside the
`
`mobile radiotelephony device is linked to the mobile radiotelephony device” as
`
`recited in the Claims 10 and 17. In particular, the Patent Owner respectfully submits
`
`that no combination of Barvesten or Schultz teaches or suggests any user
`
`identification module that is linked to a device such that it can only function with
`
`that device.
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`12
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`As explained above with reference to Section V.B, Barvesten does not teach
`
`or suggest this feature. Regarding the teachings of Schultz, Schultz only teaches a
`
`communication device, such as a radio, phone, etc., that may be incorporated with a
`
`password lock feature that allows users to allow access to their communication
`
`devices based upon entry of a correct password. Schultz, ¶ 1. But Schultz provides
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`no disclosure involving any user identification module (e.g., a SIM card, etc.) that
`
`may be mounted on the communication device. Furthermore, Schultz provides no
`
`disclosure how any user identification module may be linked to the communication
`
`devices. Accordingly, Schultz fails to teach or suggest the aforecited feature of
`
`Claims 10 and 17.
`
`In view of the reasons presented herein, Petitioner has failed to meet its burden
`
`of showing that any challenged claim is unpatentable in view of Barvesten and
`
`Schultz. 35 U.S.C. § 316(e).
`
`D. The Petition fails to prove obviousness of any dependent claim
`
`The deficiencies of the Petition articulated above concerning the challenged
`
`independent claims also apply to the analysis of the challenged dependent claims.
`
`Accordingly, the Petition should be denied in its entirety.
`
`
`
`VI. APJS ARE UNCONSTITUTIONALLY APPOINTED PRINCIPAL
`OFFICERS
`
`As determined in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed.
`
`Cir. 2019), “APJs have substantial power to issue final decisions on behalf of the
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`U.S. Patent No. 6,836,654
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`United States without any review by a presidentially-appointed officer.” Patent
`
`Owner submits that APJs are principal officers under the Appointments Clause of
`
`the Constitution for this reason, but undisputedly are not appointed through the
`
`constitutionally-mandated mechanism of appointment for principal officers.
`
`Patent Owner submits that the Arthrex decision’s remedy (invalidation of the
`
`statutory limitations on removal of APJs) impermissibly re-writes the statutes
`
`governing APJs. As argued by Arthrex in its en banc petition:
`
`Given the adjudicative nature of IPRs, Congress would not have
`
`intended the IPR process to be run by decision-makers who lack the key
`
`attributes of impartiality and independence mandated by the Due
`
`Process Clause and the Administrative Procedure Act (“APA”). Patents
`
`are property entitled to due process protections. See [Oil States Energy
`
`Servs., LLC v. Greene’s Energy Grp., LLC, 138 S. Ct. 1365, 1379
`
`(2018)]. Such protections include independent and impartial decision-
`
`makers. See Schweiker v. McClure, 456 U.S. 188, 195 (1982) (“As [the
`
`Supreme Court] repeatedly has recognized, due process demands
`
`impartiality on the part of those who function in judicial or quasi-
`
`judicial capacities”). This Court has likewise described as an
`
`“indispensable ingredient []of due process” an opportunity to be heard
`
`by a “disinterested decision-maker.” Belden, Inc. v. Berk-Tek LLC, 805
`
`F.3d 1064, 1080 (Fed. Cir. 2015) (citations omitted).
`
`Congress has recognized for decades that independence and
`
`impartiality are essential for agency adjudicators. The Administrative
`
`Procedure Act provides that a hearing must be conducted in an
`
`“impartial manner.” 5 U.S.C. §556(b). And Congress expressly
`
`provided that administrative law judges may be removed “only for good
`
`cause established and determined by the Merit Systems Protection
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`14
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`Board.” 5 U.S.C. §7521(a). Those tenure protections play an
`
`indispensable role in ensuring impartiality. As Justice Breyer explained
`
`in Lucia:
`
`The
`
`substantial
`
`independence
`
`that
`
`the
`
`Administrative Procedure Act’s removal protections
`
`provide to administrative law judges is a central part of the
`
`Act’s overall scheme. See Ramspeck v. Federal Trial
`
`Examiners Conference, 345 U.S. 128, 130 (1953); Wong
`
`Yang Sung v. McGrath, 339 U.S. 33, 46 (1950). Before the
`
`Administrative Procedure Act, hearing examiners “were
`
`in a dependent status” to their employing agency, with
`
`their classification, compensation, and promotion all
`
`dependent on how the agency they worked for rated them.
`
`Ramspeck, 345 U. S., at 130. As a result of that
`
`dependence, “[m]any complaints were voiced against the
`
`actions of the hearing examiners, it being charged that they
`
`were mere tools of the agency concerned and subservient
`
`to the agency heads in making their proposed findings of
`
`fact
`
`and
`
`recommendations.”
`
`Id.,
`
`at 131. The
`
`Administrative Procedure Act
`
`responded
`
`to
`
`those
`
`complaints by giving administrative
`
`law
`
`judges
`
`“independence and tenure within the existing Civil Service
`
`system.” Id., at 132; cf. Wong Yang Sung, supra, at 41-46
`
`(referring
`
`to
`
`removal protections as among
`
`the
`
`Administrative Procedure Act’s “safeguards . . . intended
`
`to ameliorate” the perceived “evils” of commingling of
`
`adjudicative and prosecutorial functions in agencies).
`
`Lucia v. SEC, 138 S. Ct. 2044, 2060 (2018) (Breyer, J.,
`
`dissenting). This Circuit has also recognized the importance of the
`
`decisional independence of ALJs and agreed that an ALJ may not be
`
`15
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`placed in a position where he would be removable “at will.” See Vessel
`
`v. Office of Pers. Mgmt., 29 F.3d 600, 605 (Fed. Cir. 1994).
`
`Congress would have deemed those protections no less
`
`important—and probably even more important—here. Though the
`
`Arthrex panel determined that APJs are subject to a different removal
`
`restriction than the one in the APA, the court correctly determined that
`
`Congress granted APJs for-cause removal protections. [Opinion at 16-
`
`17]. By doing so, Congress not only acknowledged the longstanding
`
`importance of such protections but confirmed that they should apply
`
`here to ensure decisional independence and impartiality.
`
`Arthrex, Inc. v. Smith & Nephew, Inc., Appeal 2018-2140, APPELLANT
`
`ARTHREX, INC.’S COMBINED PETITION FOR REHEARING AND/OR
`
`REHEARING EN BANC, D.I. 78 (Fed. Cir.). Although the Federal Circuit has
`
`denied en banc review of Arthrex, the issue is ripe for Supreme Court review.
`
`In addition, the ability to remove APJs at will is insufficient to render APJs
`
`inferior officers. The importance placed on review of the decisions of Court of
`
`Criminal Appeals Judges in Edmond v. US, 520 U.S. 651 (1997), is inconsistent with
`
`Arthrex’s determination that invalidation of statutory limitations on the removal of
`
`APJs is sufficient to render APJs inferior officers. See Edmond, 520 U.S. at 665
`
`(“What is significant is that the judges of the Court of Criminal Appeals have no
`
`power to render a final decision on behalf of the United States unless permitted to
`
`do so by other Executive officers.”).
`
`In view of these issues, only Congress can fix the IPR statutory scheme, and
`
`this case must be dismissed. Patent Owner recognizes that the Board has previously
`
`“declin[ed] to consider . . . constitutional challenge[s] as, generally, ‘administrative
`
`16
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`agencies do not have jurisdiction to decide the constitutionality of congressional
`
`enactments.’” Square, Inc. Unwired Planet LLC, Case IPR2014-01165, Paper 32 at
`
`25 (PTAB Oct. 30, 2015) (quoting Riggin v. Office of Senate Fair Emp’t Practices,
`
`61 F.3d 1563, 1569 (Fed. Cir. 1995)).
`
`VII. CONCLUSION
`
`For the foregoing reasons, Uniloc respectfully requests that the Petition be
`
`denied in its entirety.2
`
`
`
`
`
`Date: June 24, 2020
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /Ryan Loveless/
`Ryan Loveless
`Reg. No. 51,970
`Brett A. Mangrum
`Reg. No. 64,783
`Attorneys for Patent Owner
`
`Patent Owner does not concede, and specifically denies, that there is any
`
`
`
` 2
`
`legitimacy to any arguments in the Petition that are not specifically addressed
`
`herein.
`
`17
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`CERTIFICATE OF COMPLIANCE
`
`Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies that this Patent
`
`Owner Preliminary Response to Petition complies with the type-volume limitation
`
`of 37 C.F.R. § 42.24(b)(2) because it contains fewer than the limit of 14,000 words,
`
`as determined by the word- processing program used to prepare the brief, excluding
`
`the parts of the brief exempted by 37 C.F.R. § 42.24(a)(1).
`
`Date: June 24, 2020
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /Ryan Loveless/
`Ryan Loveless
`Reg. No. 51,970
`Brett A. Mangrum
`Reg. No. 64,783
`Attorneys for Patent Owner
`
`
`
`
`
`
`18
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`IPR2020-00701
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`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that an electronic
`
`copy of the foregoing PATENT OWNER PRELIMINARY RESPONSE, along with
`
`any accompanying exhibits, was served via email to Petitioner’s counsel at the
`
`following addresses identified in the Petition’s consent to electronic service:
`
`
`
`Lead Counsel
`
`Tiffany C. Miller,
`Reg. No. 52,032
`
`Apple-Uniloc19-
`DLA@us.dlapiper.com
`
`Back Up Counsel (for
`Apple and Motorola)
`
`James M. Heintz,
`Reg. No. 41,828
`
`
`Back Up Counsel (for
`Samsung)
`
`Naveen Modi,
`Reg. No. 46,224
`Joseph E. Palys,
`Reg. No. 46,508
`Phillip W. Citroën,
`Reg. No. 66,541
`
`
`
`Date: June 24, 2020
`
`
`
`
`
`
`
`Apple-Uniloc19-
`DLA@us.dlapiper.com
`
`PH-Samsung-Uniloc-
`IPR@paulhastings.com
`
`Respectfully submitted,
`By: /Ryan Loveless/
`Ryan Loveless
`Reg. No. 51,970
`Brett A. Mangrum
`Reg. No. 64,783
`Attorneys for Patent Owner
`
`
`19
`
`
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