Paper 8
`Trials@uspto.gov
`571-272-7822 Entered: January 22, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UBISOFT, INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01828
`Patent 6,489,974 B1
`____________
`
`
`
`
`
`Before SALLY C. MEDLEY, BARBARA A. BENOIT, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`Trials@uspto.gov
`571-272-7822 Entered: January 22, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UBISOFT, INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01828
`Patent 6,489,974 B1
`____________
`
`
`
`
`
`Before SALLY C. MEDLEY, BARBARA A. BENOIT, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`IPR2017-01828
`Patent 6,489,974 B1
`
`I. INTRODUCTION
`Ubisoft, Inc. (“Petitioner”)1 filed a Petition for inter partes review of
`claims 1, 2, 4, 8, 12, 13, 15, and 19 of U.S. Patent No. 6,489,974 B1
`(Ex. 1001, “the ’974 patent”). Paper 2 (“Pet.”). Uniloc USA, Inc. and
`Uniloc Luxembourg S.A. (“Patent Owner”) filed a Preliminary Response.2
`Paper 6 (“Prelim. Resp.”). Institution of an inter partes review is authorized
`by statute when “the information presented in the petition . . . and any
`response . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” 35 U.S.C. § 314(a); see 37 C.F.R. § 42.108. Upon consideration
`of the Petition and Preliminary Response, we conclude the information
`presented does not show there is a reasonable likelihood that Petitioner
`would prevail in establishing the unpatentability of any of claims 1, 2, 4, 8,
`12, 13, 15, and 19 of the ’974 patent.
`
`A. Related Matters
`The parties state that the ’974 patent is the subject of a court
`proceeding styled Uniloc v. Ubisoft, Inc., Case No. 2:16-cv-00781 (E.D.
`Tex.). Pet. 533; Paper 3, 2.
`
`
`1 The Petition identifies Ubisoft, Inc. as a real party-in-interest, and Ubisoft
`Entertainment, S.A. as a “potential real party-in-interest.” Pet. 51.
`2 Patent Owner identifies Uniloc Luxembourg S.A. and exclusive licensee
`Uniloc USA, Inc. as real parties-in-interest. Paper 3, 1.
`3 Petitioner did not number the pages of its Petition. For purposes of this
`Decision, page numbering of the Petition begins at the page with the section
`styled “I. INTRODUCTION.”
`
`2
`
`
`
`IPR2017-01828
`Patent 6,489,974 B1
`
`B. The ’974 Patent
`The ʼ974 patent is directed to a method and apparatus for notifying
`user input situations and execution terminations in asynchronously executing
`tasks in multitasking computer environments. Ex. 1001, 1:10–13.
`Notification of an executing object becoming idle is provided in a
`multitasking environment. Id. Abstract. As the object executes, the user can
`interface with a second object. Id. When the executing object becomes
`accessible, a buoy icon object is suddenly displayed. Id. at 4:38–41,
`Abstract. The buoy icon has the name of the object as well as a pointer line
`extending from the buoy icon to the accessible object. Id. Abstract, Fig. 2.
`Figure 2 is illustrative and reproduced below.
`
`
`Figure 2 shows a desktop 25 on screen 17. Id. at 3:52–53. Desktop
`25 includes plural icons representing plural objects. A focused object
`
`3
`
`
`
`IPR2017-01828
`Patent 6,489,974 B1
`
`presents a window 33 and is enabled to receive user inputs. Id. at 3:53–62.
`A user can work within the focused object 33 while waiting for another
`object, such as phone object 31, to execute (e.g., to send a fax). Id. at 4:4–
`12. When the execution of the phone object 31 reaches a step where a user
`input is required, a buoy icon 35 is displayed on the desktop to notify the
`user that the specified object is available for user input. Id. at 4:13–28.
`
`C. Illustrative Claims
`Petitioner challenges claims 1, 2, 4, 8, 12, 13, 15, and 19 of the ’974
`patent. Claims 1 and 12 are independent claims and are reproduced below
`with pertinent language italicized:
`1. A method that is implemented on a multitasking computer
`that comprises first and second objects, said method providing
`notification of a status of said first object on said computer,
`comprising the steps of:
`a) providing a representation of said first object on a user
`interface of said computer, with the representation supporting
`user interaction with said first object on said user interface of
`said computer;
`b) executing said first object on said computer;
`c) while said first object is executing, enabling said
`second object so as to support user interaction with said second
`object on said user interface of said computer;
`d) while said second object is enabled so as to support
`user interaction, determining when said first object ceases
`executing;
`e) providing a notification on said user interface when
`said first object ceases executing by suddenly displaying a
`notification icon on said user interface of said computer while
`maintaining the representation of the first object, said
`notification icon being in a location that is separate from the
`representation of said first object on said user interface.
`
`
`4
`
`
`
`IPR2017-01828
`Patent 6,489,974 B1
`
`Id. at 9:62–10:17.
`12. An apparatus for use with a multitasking computer, said
`computer comprising first and second objects, said apparatus
`providing notification of a status of said first object on said
`computer, comprising:
`a) means for providing a representation of said first
`object on a user interface of said computer, with the
`representation supporting user interaction with said first object
`on said user interface of said computer;
`b) means for executing said first object on said computer;
`c) means for enabling said second object so as to support
`user interaction with said second object on a user interface of
`said computer while said first object is executing;
`d) means for determining when said first object ceases
`executing while said second object is enabled so as to support
`user interaction;
`e) means for providing a notification on said user
`interface when said first object ceases executing by suddenly
`displaying a notification icon on said user interface of said
`computer while maintaining the representation of the first
`object, said notification icon being in a location that is separate
`from the representation of said first object on said user
`interface.
`
`Id. at 11:13–36.
`
`D. Asserted Ground of Unpatentability
`Petitioner asserts that claims 1, 2, 4, 8, 12, 13, 15, and 19 are
`unpatentable under 35 U.S.C. § 102(b) as anticipated by Inside Macintosh,
`Volume VI (“Inside Macintosh”) (Ex. 1002). Pet. 1.
`
`5
`
`
`
`IPR2017-01828
`Patent 6,489,974 B1
`
`II. DISCUSSION
`
`A. Claim Construction
`The ’974 patent expired on June 19, 2017. Ex. 1001; Pet. 2; Prelim.
`Resp. 5. For claims of an expired patent, the Board’s claim interpretation is
`similar to that of a district court. See In re Rambus, Inc., 694 F.3d 42, 46
`(Fed. Cir. 2012). “In determining the meaning of the disputed claim
`limitation, we look principally to the intrinsic evidence of record, examining
`the claim language itself, the written description, and the prosecution
`history, if in evidence.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
`Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips v. AWH Corp.,
`415 F.3d 1303, 1312–17 (Fed. Cir. 2005) (en banc)). There is, however, a
`presumption that a claim term carries its ordinary and customary meaning.
`CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002).
`
`Although Petitioner proffers constructions for the corresponding
`structure for several means-plus-function terms (Pet. 2–8), and Patent Owner
`weighs in on those constructions (Prelim. Resp. 5–7), for purposes of this
`decision we need not expressly construe any of the corresponding structures
`for the means-plus-function terms or any other claim term. See Vivid Techs.,
`Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding
`that “only those terms need be construed that are in controversy, and only to
`the extent necessary to resolve the controversy”); see also Nidec Motor
`Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
`Cir. 2017) (citing Vivid Techs. in the context of an inter partes review).
`
`
`6
`
`
`
`IPR2017-01828
`Patent 6,489,974 B1
`
`B. Anticipation of Claims over Inside Macintosh
`Petitioner contends claims 1, 2, 4, 8, 12, 13, 15, and 19 are
`unpatentable under 35 U.S.C. § 102(b) as anticipated by Inside Macintosh.
`Pet. 4–43.
`
`1. Inside Macintosh
`According to Petitioner, Inside Macintosh, Volume VI, was published
`in 1991 and publicly available at least as early as December 1991. Pet. 14–
`15 (citing Ex. 10054 ¶ 43). In its Preliminary Response, Patent Owner does
`not challenge Inside Macintosh as prior art. For purposes of this decision,
`we assume without deciding that Inside Macintosh is prior art.
`Inside Macintosh describes “the system software version 7.0
`environment, new managers available with version 7.0, new routines and
`data structures, new user interface guidelines, and how to take advantage of
`the version 7.0 environment.” Ex. 1002, P–3. Inside Macintosh provides
`the following description:
`The Macintosh Operating System lets the user have several
`applications open at the same time and lets the user switch
`between them. The Operating System also gives the user
`constant access to the Finder. This lets a user move among
`open documents and applications without having to save or quit
`the previous document or application. This environment also
`allows applications to run in the background. For example, the
`Finder can copy files while the user is working on another task
`in the foreground.
`Id. at 1–4.
`
`
`4 Ex. 1005 is a declaration of Dr. Scott Bennett, retired academic librarian,
`whose testimony Petitioner relies on regarding the authenticity and public
`accessibility of Inside Macintosh. Ex. 1005 ¶¶ 8, 36–42.
`7
`
`
`
`IPR2017-01828
`Patent 6,489,974 B1
`
`Inside Macintosh describes a Notification Manager used to inform
`users of significant occurrences in applications that are running in the
`background. Id. at 24–3. A description of the Notification Manager
`follows:
`The Notification Manager provides an asynchronous
`notification service. It allows software running in the
`background (or otherwise unseen by the user) to communicate
`information to the user. For example, applications that manage
`lengthy background tasks (such as printing many documents or
`transferring large amounts of data to other machines) might
`need to inform the user that the operation is complete. These
`applications cannot use the standard methods of communicating
`with the user, such as alert or dialog boxes, because such
`windows might easily be obscured by the windows of other
`applications. Moreover, even if those windows are visible, the
`background application cannot be certain that the user is aware
`of the change. So some more reliable method must be used to
`manage the communication between a background application
`and the user, who might be awaiting the completion of the
`background task while running other applications in the
`foreground.
`
`In the same way, relatively invisible operations such as Time
`Manager tasks, VBL tasks, or device drivers might need to
`inform the user that some previously started routine is complete
`or perhaps that some error has rendered further execution
`undesirable or impossible.
`
`In all these cases, the communication generally needs to occur
`in one direction only, from the background application (or task,
`or driver) to the user. The Notification Manager, included in
`system software versions 6.0 and later, allows you to post to the
`user a notification, which is an audible or visible indication that
`your application (or other piece of software) requires the user’s
`attention. You post a notification by issuing a notification
`request to the Notification Manager, which places your request
`
`8
`
`
`
`IPR2017-01828
`Patent 6,489,974 B1
`
`into a queue. When your request reaches the top of the queue,
`the Notification Manager posts a notification to the user.
`
`
`Id. (emphasis added).
`
`2. Discussion
`To establish anticipation, each and every element in a claim, arranged
`as recited in the claim, must be found in a single prior art reference.
`See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir.
`2008); Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed.
`Cir. 2001). Although the elements must be arranged or combined in the
`same way as in the claim, “the reference need not satisfy an ipsissimis verbis
`test,” i.e., identity of terminology is not required. In re Gleave, 560 F.3d
`1331, 1334 (Fed. Cir. 2009); accord In re Bond, 910 F.2d 831, 832 (Fed.
`Cir. 1990).
`Independent claims 1 and 12 recite “providing a notification on said
`user interface when said first object ceases executing by suddenly displaying
`a notification icon on said user interface of said computer while maintaining
`the representation of the first object.” Although Petitioner asserts that Inside
`Macintosh describes “suddenly displaying a notification icon on the user
`interface while maintaining the window of the background application (i.e.,
`representation of the first object),” Petitioner does not explain how that is so.
`Pet. 35–44. For the disputed limitation, Petitioner merely directs attention to
`the paragraph from Inside Macintosh that is reproduced above, with the
`pertinent language italicized without any further meaningful explanation. Id.
`at 43.
`As Patent Owner points out, once an object ceases executing, the
`Notification Manager places notification requests in a queue, such that
`
`9
`
`
`
`IPR2017-01828
`Patent 6,489,974 B1
`
`“[w]hen your request reaches the top of the queue, the Notification Manager
`posts a notification to the user.” Prelim. Resp. 9–10 (citing Ex. 1002, 24–3).
`Based on the record before us, we find that the “when” indicates that only
`until the request reaches the top for some unspecified amount of time will a
`notification be posted to the user. Petitioner does not explain, however, with
`supporting evidence, how Inside Macintosh’s description of a request
`waiting in a queue until it reaches the top of that queue before a notification
`is posted to a user, meets the claim language of “suddenly displaying a
`notification icon on the user interface.” Accordingly, we are not persuaded
`that Petitioner has established a reasonable likelihood that Petitioner would
`prevail in its challenge to claims 1, 2, 4, 8, 12, 13, 15, and 19 as unpatentable
`under 35 U.S.C. § 102(b) as anticipated by Inside Macintosh.5
`
`III. CONCLUSION
`For the foregoing reasons, we determine that Petitioner has not shown
`a reasonable likelihood that it would prevail in showing that any of claims 1,
`2, 4, 8, 12, 13, 15, and 19 of the ’974 patent are unpatentable.
`
`IV. ORDER
`For the foregoing reasons, it is
`ORDERED that the Petition is denied as to all challenged claims, and
`no trial is instituted.
`
`
`
`5 Because we find Petitioner has not shown a reasonable likelihood of
`prevailing on this challenge for the reasons discussed above, we do not reach
`Patent Owner’s other argument as to this challenge.
`10
`
`
`
`IPR2017-01828
`Patent 6,489,974 B1
`
`
`
`
`For PETITIONER:
`
`Eric Buresh
`Mark Lang
`Kathleen Fitterling
`ERISE IP
`eric.buresh@eriseip.com
`mark.lang@eriseip.com
`kathleen.fitterling@eriseip.com
`
`For PATENT OWNER:
`
`Brett Mangrum
`Ryan Loveless
`Etheridge Law Group
`
`Sean Burdick
`Uniloc USA, Inc.
`
`brett@etheridgelaw.com
`ryan@etheridgelaw.com
`sean.burdick@unilocusa.com
`
`
`
`11
`
`
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