Case 2:16-cv-00741-RWS Document 159-8 Filed 06/01/17 Page 1 of 8 PageID #: 2289
`Case 2:16-cv-00741-RWS Document 159-8 Filed 06/01/17 Page 1 of 8 PageID #: 2289
`
`
`
`
`
`
`
`EXHIBIT H
`
`EXHIBIT H
`
`
`
`
`
`
`
`
`
`
`
`Case 2:16-cv-00741-RWS Document 159-8 Filed 06/01/17 Page 1 of 8 PageID #: 2289
`
`
`
`
`
`
`
`EXHIBIT H
`
`EXHIBIT H
`
`
`
`
`
`
`
`
`
`
`
`
`Case 2:16-cv-00741-RWS Document 159-8 Filed 06/01/17 Page 2 of 8 PageID #: 2290
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`UNIFIED PATENTS INC.,
`Petitioner
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
`
`
`
`
`
`
`
`
`IPR2017-00184
`PATENT 7,069,293
`
`
`
`
`
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
`
`
`
`
`
`
`
`
`Case 2:16-cv-00741-RWS Document 159-8 Filed 06/01/17 Page 3 of 8 PageID #: 2291
`IPR2017-00184
`U.S. Patent 7,069,293
`the Petition. Petitioner “must specify where each element of the claim is found in
`
`the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4).
`
`The Board should reject any non-redundant, non-cumulative grounds that remain (if
`
`any) because Petitioner fails to meet this burden.6
`
` Claim Construction
`
`Before wading into claim construction issues introduced in the Petition, it is
`
`worth noting that the parties’ present disputes make it unnecessary to construe the
`
`terms Petitioner proposes. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d
`
`795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
`
`controversy, and only to the extent necessary to resolve the controversy.”). Even if
`
`the Board were to adopt all of Petitioner’s proposed constructions, Petitioner has
`
`failed to establish a prima facie case of obviousness for even one challenged claim.
`
`Nevertheless, it is worth pointing out certain flaws in the Petition with respect to
`
`claim construction that are so egregious they each provide an independent basis to
`
`deny the Petition in its entirety.7
`
`
`6 While certain deficiencies in the Petition are addressed herein, Patent Owner
`hereby expressly reserves the right to address other deficiencies of the Petition in a
`full Response (and with the support of its own expert) if an inter partes review is
`instituted.
`7 The standard for claim construction at the Patent Office is different from that used
`during a U.S. district court litigation for non-expired patents. See In re Am. Acad. of
`Sci. Tech Ctr., 367 F.3d 1359, 1364, 1369 (Fed. Cir. 2004). Uniloc expressly
`reserves the right to argue a different claim construction in litigation for any term of
`the '293, as appropriate in that proceeding. Further, Patent Owner does not burden
`
`15
`
`
`
`Case 2:16-cv-00741-RWS Document 159-8 Filed 06/01/17 Page 4 of 8 PageID #: 2292
`IPR2017-00184
`U.S. Patent 7,069,293
`
`1.
` “registration operations”
`Petitioner’s proposed construction for “registration operations” should be
`
`rejected because it renders other claim language superfluous and introduces
`
`ambiguity. See Apple Inc. v. ContentGuard Holdings, Inc., IPR2015-00353, Paper
`
`No. 9, Decision Denying Institution of Inter Partes Review (P.T.A.B. June 25, 2015)
`
`(declining to adopt proposed claim construction that would render other claim
`
`language superfluous) and Biotronik, Inc. et al. v. My Health, Inc., IPR2015-00102,
`
`Paper No. 11, Decision Institution of Inter Partes Review (P.T.A.B. April 16, 2015)
`
`(declining to adopt proposed claim construction that “introduces ambiguity into the
`
`meaning of the term.”).
`
`Petitioner proposes to construe “registration operations” to mean “operations
`
`to make the application available for use locally.” However, Claim 1 further recites
`
`“distributing the file packet to the target on-demand server to make the application
`
`program available for use by a user at a client.” Petitioner’s proposed construction
`
`renders that “distributing” step superfluous as it is explicitly an operation
`
`(distributing) “to make the application program available for use by a user at a
`
`client.” Clearly, the “registration operations” recited in Claim 1 must mean
`
`something other than what is effected in the “distributing” process step.
`
`
`the Board here with all possible issues introduced by Petitioner’s proposed
`constructions; and Patent Owner’s silence with respect to any construction proffered
`by Petitioner is not to be taken as a concession that the construction is correct.
`
`16
`
`
`
`Case 2:16-cv-00741-RWS Document 159-8 Filed 06/01/17 Page 5 of 8 PageID #: 2293
`IPR2017-00184
`U.S. Patent 7,069,293
`Petitioner’s faulty claim construction taints the entire Petition. By attempting
`
`to conflate “registration operations” with the “distributing” step, Petitioner reads the
`
`“registration operations” language out of the claim entirely. Not surprisingly,
`
`Petitioner carefully avoids even mentioning the word “registration” when presenting
`
`its argument.
`
`Petitioner’s proposed construction also improperly introduces ambiguity. For
`
`example, “locally” is a relative term and it is unclear from Petitioner’s construction
`
`which claimed component (e.g., client, target on-demand server, or network
`
`management server, etc.) is to be considered the “local” one. The Petition states
`
`“‘registration operations’ are done . . . at the client ‘locally.’” Pet. at 15. Yet the
`
`Petition cites to an embodiment in the Specification which clearly states “. . . the
`
`data required to properly install and register the application program on the on-
`
`demand server ….” Id. (citing Ex. 1003 4:18-22) (emphasis added). Moreover, the
`
`claim language itself recites “a segment configured to initiate registration operations
`
`for the application program at the target on-demand server.” It is unclear whether
`
`Petitioner has attempted to rewrite the claim such that the “registration operations”
`
`must be initiated at the “client” instead of the claimed “target on-demand server.”
`
`As will be shown, Petitioner’s injected ambiguity is compounded by the fact that
`
`Petitioner’s patentability challenge relies solely on operations performed at what
`
`Petitioner alleges is the “client” computer.
`
`17
`
`
`
`Case 2:16-cv-00741-RWS Document 159-8 Filed 06/01/17 Page 6 of 8 PageID #: 2294
`IPR2017-00184
`U.S. Patent 7,069,293
`As another example of how Petitioner’s construction unnecessary introduces
`
`ambiguity, there is no antecedent basis in the claim for Petitioner’s phrase “the
`
`application.” If Petitioner had instead meant “the program application,” it should
`
`have said so. The Board and the Patent Owner should not be forced to guess what is
`
`meant by Petitioner’s ambiguous construction.
`
`In summary, Petitioner’s proposed construction should be rejected as
`
`replacing a known term of art with a phrase that unnecessarily injects ambiguity and
`
`that, at best, renders other claim language superfluous.
`
`2.
`“a target on-demand server”
`The preamble of each of the challenged independent claims recites
`
`“[distributing / distribution of] application programs to a target on-demand server.”
`
`Ex. 1001 at 21:22-23, 22:53-54 and 22:57-58. Consistent with that context, the body
`
`of each independent claim recites, for example, “specifying a … target directory for
`
`distribution of the application program,” “preparing a file packet … configured to
`
`initiate registration operations at the target on-demand server,” and “distributing the
`
`file packet to the target on-demand server to make that application program available
`
`for use by a user at a client.” Viewing the claim language as a whole, there can be
`
`no question that the “target” of the claimed distribution is the “target on-demand
`
`server” where the “registration operations for the application program” are initiated.
`
`18
`
`
`
`Case 2:16-cv-00741-RWS Document 159-8 Filed 06/01/17 Page 7 of 8 PageID #: 2295
`IPR2017-00184
`U.S. Patent 7,069,293
`“It is improper to combine references where the references teach away from
`
`their combination.” In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983). A prior art
`
`reference teaches away from the claimed invention when a person of ordinary skill,
`
`upon reading the reference, “would be led in a direction divergent from the path that
`
`was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Prior
`
`art also teaches away when it “criticize[s], discredit[s], or otherwise discourage[s]
`
`investigation into the claimed invention.” See DePuy, 567 F.3d at 1327.
`
`Additionally, “a reference teaches away from a combination when using it in that
`
`combination would produce an inoperative result.” See In re ICON Health &
`
`Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007).
`
`Furthermore, the claims cannot be obvious in light of a combination of
`
`elements that changes the principle operation of the prior art reference being
`
`applied. In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (“If a proposed modification
`
`or combination of the prior art would change the principle of operation of the prior
`
`art device being modified, then the teachings of the references are not sufficient to
`
`render the claims prima facie obvious.”).
`
`2.
`
`No prima facie case for “distribution of application programs to a
`target on-demand server”
`Petitioner’s patentability challenge should be rejected as effectively
`
`attempting to rewrite the recitation “distribution of application programs to a target
`
`on-demand server” as, instead, routing “Software Packages” through a “Hop
`
`26
`
`
`
`Case 2:16-cv-00741-RWS Document 159-8 Filed 06/01/17 Page 8 of 8 PageID #: 2296
`IPR2017-00184
`U.S. Patent 7,069,293
`Server” to a downstream “Target System” or “Distribution Target” where they are
`
`installed. While Collins teaches that its Software Packages are optionally transmitted
`
`through a Hop Server (Ex. 1003 at 3:19-20, 4:59-60, 5:50-54), Collins contains no
`
`teaching or suggestion that the Hop Server is ever a “target” destination—i.e., one
`
`where an application program is installed and thus available “on demand.” On the
`
`contrary, Collins makes clear that the “target” destination of its Software Packages
`
`are the aptly named Target Systems where installation must occur.9
`
`The distinction is significant. The '293 Specification, including its claims,
`
`consistently refers to the “target” destination as the “target on-demand servers”
`
`where the “application programs” are installed, registered, and made available to
`
`clients “on demand.” Indeed, the Specification uses “target on-demand servers” and
`
`“destination servers” interchangeably. See, e.g., Ex. 1001 at 17:63-65 (“The
`
`application program software is then distributed by Tivoli™ server 20 to specified
`
`on-demand servers 22, 22′ at block 116. In addition, the destination servers 22, 22′
`
`….”). The '293 Specification also refers to “after-distribution programs” that are
`
`executed at the target on-demand servers (i.e., even before a client accesses). See,
`
`e.g., id. at 18:4-29. The Specification further unambiguously states “[i]t is to be
`
`
`9 See, e.g., id. at 4:61-61 (“At the Target, the Package is installed.”); 5:64-67 (“The
`Package Transfer Agent (21) on the Target System places packages on the Inbound
`Package Queue (24). The Remote Package Manager (23) acts on these queue entries
`to install or backout the Software Packages.”); 6:64 (“… and installs the files into
`the Target’s file system.”).
`
`27
`
`
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
