UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UBISOFT, INC.,
`Petitioner
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
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`IPR2017-01828
`PATENT 6,489,974
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UBISOFT, INC.,
`Petitioner
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
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`IPR2017-01828
`PATENT 6,489,974
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`IPR2017-01828
`U.S. Patent 6,489,974
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`Tables of Contents
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`I.
`INTRODUCTION ..................................................................................... 1
`THE ’974 PATENT ................................................................................... 1
`II.
`III. PERSON OF ORDINARY SKILL IN THE ART .................................. 2
`IV. RELATED MATTERS ............................................................................. 3
`V. ARGUMENT .............................................................................................. 4
`A.
`Claim Construction ........................................................................... 5
`B.
`No prima facie anticipation for at least the “[means for]
`providing a notification …” limitations (independent
`claims 1 and 12) ................................................................................ 8
`VI. THE SUPREME COURT IS CURRENTLY REVIEWING THE
`CONSTITUTIONALITY OF INTER PARTES REVIEW
`PROCEEDINGS ..................................................................................... 10
`VII. CONCLUSION ........................................................................................ 11
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`ii
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`IPR2017-01828
`U.S. Patent 6,489,974
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`I.
`
`INTRODUCTION
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107(a), Uniloc Luxembourg
`S.A. (“Patent Owner”) submits this Preliminary Response to the Petition for Inter
`Partes Review (“the Petition”) of U.S. Patent No. 6,489,974 (“the ’974 patent”) filed
`by Ubisoft, Inc. (“Petitioner”). Petitioner fails to establish prima facie anticipation
`under pre-AIA §102(b) by Inside Macintosh, Volume VI (“Inside Macintosh”)
`(EX1002) of any challenged claim. Significantly, while Petitioner has the burden
`here, the Petition offers no expert testimony in support of the conclusory factual
`statements contained therein.
`II. THE ’974 PATENT
`The ’974 patent is titled “Buoy Icon Notification of Object Interface
`Accessibility in Multitasking Computer Environment.” Ex. 1001 at [54]. The ’974
`Patent issued from U.S. Patent Application No. 08/586,149, which is a continuation
`of U.S. Patent Application No. 08/179,479. Ex. 1001 at [63]. Thus, the effective
`filing date for the ’974 patent is Jan. 10, 1994, well over two decades ago. Petitioner
`appears to agree. Pet. at 2 (identifying the “time of the alleged invention” as January
`10, 1994). The ’974 patent issued on December 3, 2003 and was originally assigned
`to the International Business Machines Corporation (“IBM”). Ex. 1001 at [45], [73].
`The Petition challenges two independent claims (1 and 12) of the ’974 patent,
`which recite similar limitations but are drafted in different forms (method and
`means-plus-function, respectively). For the convenience of the Board, claim 12 is
`copied below:
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`1
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`IPR2017-01828
`U.S. Patent 6,489,974
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`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.
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`III. PERSON OF ORDINARY SKILL IN THE ART
`The Petition offers no expert testimony in support of its definition for a person
`of ordinary skill in the art, which Petitioner defines as someone who “would have
`had at least a bachelor’s degree, or equivalent, in electrical engineering, computer
`engineering, computer science, or a related field or an equivalent number of years of
`working experience, and one to two years of experience in computer programming.”
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`U.S. Patent 6,489,974
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`It is unclear whether Petitioner had intended the requirement of “one to two
`years of experience in computer programming” to be in addition to “the equivalent
`number of years of working experience,” such that a person of ordinary skill in the
`art would need to have no less than six to seven years of working experience
`(assuming a bachelor’s degree in the fields identified could have been obtained in
`four to five years). This seems a bit excessive on its face; and Petitioner provides
`no explanation for why six to seven years of work experience, in addition to a
`bachelor’s degree, would have been necessary. Evidently, Petitioner found the
`patented technology to be highly technical, which is curious given that Petitioner
`provides no expert testimony in support of its conclusory allegations.
`IV. RELATED MATTERS
`The Petition fails to provide at least the required mandatory notices
`concerning related matters, pursuant to 37 C.F.R. § 42.8(b)(2) and 35 U.S.C.
`§ 312(a)(4). The Board has previously held that “[t]he Petition’s failure to comply
`with 37 C.F.R. § 42.8(b)(2), and thus also 35 U.S.C. § 312(a)(4), could be grounds
`for denial of the Petition.” See Apple, Inc. v. ContentGuard Holdings, Inc., IPR2015-
`00356, Paper No. 9 (P.T.A.B. June 26, 2015) (Decision Denying Institution of Inter
`Partes Review) (citations omitted). In its decision denying institution, the Board
`offered the following explanation:
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`A petition for an inter partes review “may be considered only if,”
`among other things, ‘the petition provides such other information
`as the Director may require by regulation.” 35 U.S.C. § 312(a)(4).
`In that regard, the Director requires a petitioner to include certain
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`U.S. Patent 6,489,974
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`mandatory notices with its petition. 37 C.F.R. § 42.8(a)(1). The
`mandatory notices include a requirement to “[i]dentify any other
`judicial or administrative matter that would affect, or be affected
`by, a decision in the proceeding.” 37 C.F.R. § 42.8(b)(2) (titled
`“Related matters”); see also 35 U.S.C. § 312(a)(4). “Judicial
`matters include actions involving the patent in federal court.
`Administrative matters include every application and patent
`claiming, or which may claim, the benefit of the priority of the
`filing date of the party’s involved patent or application as well as
`any ex parte and inter partes reexaminations for an involved
`patent.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,760 (Aug. 14, 2012).
`Id., at pp. 5-6.
`At a minimum, Petitioner failed to notify the Board of the district court
`litigation Uniloc USA, Inc. et al. v. Ubisoft Inc. et al., Case No. 2:16-cv-00746-RWS
`(E.D.T.X), in which Patent Owner has asserted the ’974 patent against Petitioner.
`That consolidated district court litigation also involves two other patents, which are
`challenged by petitions filed by Ubisoft Entertainment S.A. in Case Nos. IPR2017-
`1827 and IPR2017-1829. Those two other patents were part of the same consolidated
`claim construction proceedings in district court as that of the presently challenged
`’974 patent. The failure to provide the mandatory notice concerning related matters
`is grounds for denial. Apple, Inc., IPR2015-00356, Paper No. 9 at 5-6.
`V. ARGUMENT
`The Petition fails to establish prima facie anticipation under pre-AIA §102(b)
`by Inside Macintosh, Volume VI (“Macintosh”) (Ex. 1002) of even one of the
`challenged claims 1, 2, 4, 8, 12, 13, 15, and 19. Petitioner has the burden of proof to
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`U.S. Patent 6,489,974
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`establish they are entitled to their requested relief. 37 C.F.R. § 42.108(c). Further,
`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). For at least
`the reasons set forth herein, the Petition does not meet this burden and it therefore
`should be denied.
`A. Claim Construction
`The ’974 Patent expired on June 19, 2017, about a month before the filing
`date of the Petition. “[T]he Board’s review of the claims of an expired patent is
`similar to that of a district court’s review.” In re Rambus, Inc., 694 F.3d 42, 46 (Fed.
`Cir. 2012). “In this context, claim terms generally are given their ordinary and
`customary meaning, as understood by a person of ordinary skill in the art, at the time
`of the invention, taking into consideration the language of the claims, the
`specification, and the prosecution history of record because the expired claims are
`not subject to amendment.” Panel Claw, Inc. v. Sunpower Corp., No. IPR2014-
`00386, at 7 (P.T.A.B. June 30, 2014), Paper No. 7 (citing Phillips v. AWH Corp.,
`415 F.3d 1303, 1312-13(Fed. Cir. 2005)). Petitioner acknowledges that for purposes
`of this proceeding the claims must be construed pursuant to the Phillips standard
`applied in district court. Pet. 2 (citing Phillips, 415 F.3d at 1327).
`Although the Petition does not mention the statute, the Petition appears to
`identify certain claim limitations (recited in independent claim 12 and claims 13, 15,
`and 19 depending therefrom) as written in “means-plus-function” form and invoking
`pre-AIA 35 U.S.C. § 112, ¶ 6.
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`5
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`U.S. Patent 6,489,974
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`Petitioner’s proposed means-plus-function constructions are riddled with
`error. Perhaps the most glaring error is Petitioner’s repeated and unexplained
`insistence that the corresponding structure for each identified “means” must include
`at least the following hardware components: (1) “a computer,” (2) “an associated
`display,” (3) “a user input device,” and a (4) “computer processor.” Pet. 2-8. The
`preamble of claim 12 proscribes such a construction by reciting “[a]n apparatus for
`use with a multitasking computer.” That recitation unambiguously confirms the
`claimed “apparatus” and the “multitasking computer” are not structurally one and
`the same. Rather, the plain language of the claims, when understood in light of the
`specification, confirms the term “apparatus” (and its various recited “means”) refers
`to special-purpose software that runs on the expressly-distinguished “multitasking
`computer.” Indeed, the specification is replete with disclosed algorithmic structure
`specifically designed to perform the recited functional language. See, e.g., Ex. 1001,
`Figures 6-14, and accompanying descriptions; see also id. 3:44-47 (“One such
`resource object is the method of the present invention shown by the flow charts.
`Another such resource object is an operating system.”)
`Another repeated error in Petitioner’s proposed constructions is the attempt to
`rewrite, or entirely read out of the claim, various recited limitations. For example,
`dependent claim 13 recites “[t]he apparatus of claim 12 wherein said means for
`determining when said first object ceases executing further comprises means for
`determining when said first object provides a prompt for a user input. Ex. 1001,
`11:37-40 (emphasis added). Petitioner confuses the functional language introduced
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`U.S. Patent 6,489,974
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`in dependent claim 13 (i.e., determining when said first object provides a prompt for
`a user input) with the antecedent functional language it modifies. Pet. 5 (arguing the
`“stated function” for claim 13 requires only the antecedent functional language from
`independent claim 12—i.e., “determining when said first object ceases executing
`while said second object is enabled so as to support user interaction”). Petitioner
`then rewrites the functional language introduced in claim 13 and argues that
`redrafted functional language is the corresponding structure. Id. (identifying the
`corresponding structure as “the computer processor is further programmed to
`determine when the execution of the first object reaches a step where a user input
`is required for further execution.”).
`Petitioner cannot prove invalidity through application of an erroneous
`construction. See Mentor Graphics Corp., v. Synopsys, Inc., IPR2014-00287, 2015
`WL 3637569, at *11 (P.T.A.B. June 11, 2015), aff'd sub nom. Synopsys, Inc. v.
`Mentor Graphics Corp., 669 Fed. Appx. 569 (Fed. Cir. 2016) (denying Petition as
`tainted by reliance on an incorrect claim construction). Patent Owner is presently
`under no burden to correct Petitioner’s mistakes with respect to claim construction
`(though Patent Owner reserves the right to do so in a formal response in the unlikely
`event that the Board institutes trial). In any event, presenting counter-proposals for
`claim construction in the instant Preliminary Response would be merely academic,
`and unnecessarily burden the Board at this stage, because the Petition fails to
`establish prima facie anticipation even under the means-plus-function constructions
`Petitioner proposes, as explained further below.
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`B. No prima facie anticipation for at least the “[means for] providing
`a notification …” limitations (independent claims 1 and 12)
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`Among other deficiencies, there Petition fails to show prima facie
`anticipation of “[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,” as recited in independent claims 1 and 12
`(and hence all challenged claims). Significantly, the claim language expressly
`requires simultaneous yet separate display of both the “representation of the first
`object” and the “notification icon”, which must “suddenly” occur when the “first
`object ceases executing ….”
`Petitioner’s sole reliance on Macintosh’s Notification Manager is deficient at
`least because that feature does not involve the simultaneous yet separate display of
`both the “representation of the first object” and the “notification icon.” For the
`claimed “representation of the first object,” Petitioner points exclusively to an
`alleged “window of the background application (i.e., representation of the first
`object).” Pet. 36 (emphasis added); see also id. at 39. For the claimed “notification
`icon,” Petitioner points exclusively to Macintosh’s use of the Notification Manager
`to display icons within the Application menu. Pet 39. According to Petitioner, “[t]he
`notification icon is displayed in a location that is separate from the notifying
`application window (i.e., representation of said first object) on the user interface in
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`U.S. Patent 6,489,974
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`that the notification icon is displayed in the menu bar at the top right or left of the
`user interface.” Id.
`Petitioner provides no citation to the reference, or to any expert testimony, in
`support of its attorneys’ apparent speculation that the user sees the background
`“application window” at the moment when the Notification Manager displays an
`icon in the Application menu. Petitioner could not provide any evidentiary support
`because Macintosh contains no such disclosure. On the contrary, Macintosh teaches
`(in the very passages emphasized in the Petition) that its Notification Manager
`“allows software running in the background (or otherwise unseen by the user) to
`communicate information to the user.” Pet 36 (citing Ex. 1002 at p. 24-3 (p. 1270
`as marked by Petitioner)) (emphasis altered). Macintosh further teaches that “[i]f
`your application is in the foreground, you do not need to use the Notification
`Manager to notify the user[.]” Pet. 40 (citing Ex. 1002 at 24-9 (p. 1276 as marked
`by Petitioner)) (emphasis altered).
`speculative
`refutes Petitioner’s
`directly
`Accordingly, Macintosh
`interpretation (offered through its attorneys only) that the Notification Manager
`displays a notification icon within the Application menu while also simultaneously
`displaying the alleged “window of the background application.” Pet. 36.
`The Petition also glosses over the requirement that the notification icon must
`be “suddenly” displayed “when said first object ceases executing.” Petitioner’s
`reliance on Macintosh’s Notification Manager is misplaced. Pet. 35-44. The cited
`portions of Macintosh disclose that all notification requests are added to a
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`U.S. Patent 6,489,974
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`“notification queue” and that only when the notification request reaches the top of
`the queue will the Notification Manager post a notification to the user:
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`You post a notification by issuing a notification request to the
`Notification Manager, which places your request into a queue.
`When your request reaches the top of the queue, the Notification
`Manager posts a notification to the user.
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`Ex. 1002, at 24-3 (p. 1270 as marked by Petitioner). Notably, Petitioner concedes
`that the notifications are delayed until they reach the top of the queue. Pet. 43. The
`Petition has the burden of proof yet makes no attempt to explain how this designed
`delay in Macintosh allegedly satisfies the “suddenly” language recited in the claims.
`For the foregoing reasons, the is no prima facie anticipation at least for
`Petitioner’s sole application of the cited reference against the claim language
`emphasized above.1 Because this claim language appears in all challenges claims,
`the Petition should be denied in its entirety.
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`VI. THE SUPREME COURT IS CURRENTLY REVIEWING THE
`CONSTITUTIONALITY
`OF
`PARTES
`REVIEW
`INTER
`PROCEEDINGS
`The Supreme Court is currently considering the constitutionality of inter
`partes review proceedings. Oil States Energy Servs., LLC v. Greene’s Energy Grp.,
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`1 Notably, the Federal Circuit has instructed that the Board is not “free to adopt
`arguments on behalf of petitioners that could have been, but were not, raised by the
`petitioner during an IPR. Instead, the Board must base its decision on arguments that
`were advanced by a party, and to which the opposing party was given a chance to
`respond.” In re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016).
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`LLC, 137 S. Ct. 2239 (2017). The constitutional challenge is primarily based on the
`argument that adversarial challenges to an issued patent (like inter partes reviews)
`are “Suits at common law” for which the Seventh Amendment guarantees a jury
`trial. U.S. Const. amend. VII; Markman v. Westview Instruments, Inc., 517 U.S. 370,
`377 (1996). Further, because patents are private property rights, disputes concerning
`their validity must be litigated in an Article III court, not before an executive branch
`agency. McCormick Harvesting Mach. Co. v. C. Aultman & Co., 169 U.S. 606, 609
`(1898). Out of an abundance of caution, Patent Owner hereby adopts the same
`constitutional challenge to preserve the issue pending the Supreme Court’s decision.
`VII. CONCLUSION
`For the foregoing reasons, the Petition should be denied in its entirety.
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`Date: November 17, 2017
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`Respectfully submitted,
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`By: /s/ Brett A. Mangrum
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`Brett A. Mangrum; Reg. No. 64,783
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`Ryan Loveless; Reg. No. 51,970
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` Counsel for Patent Owner
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`11
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`IPR2017-01828
`U.S. Patent 6,489,974
`CERTIFICATE OF COMPLIANCE
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`Pursuant to 37 C.F.R. § 42.24(d), we certify that this Preliminary Response to
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`Petition complies with the type-volume limitation of 37 C.F.R. § 42.24(b)(1)
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`because it contains less than 14,000 words, as determined by the word-processing
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`program used to prepare the brief, excluding the parts of the brief exempted by 37
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`C.F.R. § 42.24(a)(1).
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`Date: November 17, 2017
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`Respectfully submitted,
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`By: /s/ Brett A. Mangrum
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`Brett A. Mangrum; Reg. No. 64,783
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`Ryan Loveless; Reg. No. 51,970
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` Counsel for Patent Owner
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`IPR2017-01828
`U.S. Patent 6,489,974
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e), we certify that we served an electronic
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`copy of the foregoing PATENT OWNER’S PRELIMINARY RESPONSE
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`PURSUANT TO 37 C.F.R. § 42.107(a) along with the accompanying exhibits via
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`the Patent Review Processing System (PRPS) and also via email to Petitioner’s
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`counsel of record at the following addresses:
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`Eric Buresh; eric.buresh@eriseip.com
`Mark Lang; mark.lang@eriseip.com
`Kathleen Fitterling; kathleen.fitterling@eriseip.com
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`Date: November 17, 2017
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`Respectfully submitted,
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`By: /s/ Brett A. Mangrum
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`Brett A. Mangrum; Reg. No. 64,783
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` Counsel for Patent Owner
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`ii
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