UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.
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`Petitioner
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`v.
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`UNILOC 2017 LLC
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`Patent Owner
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`IPR2019-00701
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`PATENT 8,018,877
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.107(a)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.
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`Petitioner
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`v.
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`UNILOC 2017 LLC
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`Patent Owner
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`IPR2019-00701
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`PATENT 8,018,877
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.107(a)
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`IPR2019-00701
`U.S. Patent 8,018,877
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`Table of Contents
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`I.
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`II.
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`III.
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`INTRODUCTION .................................................................................... 1
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`THE ’877 PATENT .................................................................................. 1
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`THE PETITION IMPROPERLY REDUDANTLY
`CHALLENGES THE CLAIMS AT ISSUE ............................................. 3
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`IV.
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`RELATED PROCEEDINGS .................................................................... 6
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`V.
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`LEVEL OF ORDINARY SKILL IN THE ART ...................................... 7
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`VI.
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`PETITIONER DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM .......................................................................... 7
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`A.
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`Claim Construction ......................................................................... 8
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`B.
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`C.
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`Kirmse Does Not Disclose “transmitting a request to a
`server to allocate a network address and port associated
`with the server to use in a data exchange session with a
`participating mobile device” (Redundant Ground 1)
`(Independent Claims 1, 8, 15) ........................................................ 8
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`Chambers and RSIP Does Not Disclose “transmitting a
`request to a server to allocate a network address and port
`associated with the server to use in a data exchange
`session with a participating mobile device” (Redundant
`Ground 2) (Independent Claims 1, 8, 15) ..................................... 10
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`D. A POSITA Would Not Have Combined Cordenier and
`TURN (Ground 3)......................................................................... 15
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`E.
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`The Petition fails to Prove Obviousness of Any
`Dependent Claim .......................................................................... 21
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`VII.
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`THE CONSTITUTIONALITY OF INTER PARTES REVIEW
`IS THE SUBJECT OF A PENDING APPEAL ..................................... 21
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`ii
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`IPR2019-00701
`U.S. Patent 8,018,877
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`VIII. CONCLUSION ....................................................................................... 21
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`IPR2019-00701
`U.S. Patent 8,018,877
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`I.
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`INTRODUCTION
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`Uniloc 2017 LLC (“Uniloc” or “Patent Owner”) submits this Preliminary
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`Response to Petition IPR2019-00701 for Inter Partes Review (“Pet.” or “Petition”)
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`of United States Patent No. 8,018,877 (“the ’877 patent” or “EX1001”) filed by
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`Apple, Inc. (“Petitioner”). The instant Petition is procedurally and substantively
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`defective for at least the reasons set forth herein.
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`II. THE ’877 PATENT
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`The ’877 patent is titled “Mobile conferencing method and system.” The ʼ877
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`patent issued September 13, 2011, from U.S. Patent Application No. 13/079,767
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`filed April 4, 2011, which is a continuation of application No. 12/691,594, filed on
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`January 21, 2010, now Pat. No. 7,940,704, which is a continuation of application
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`No. 11/091,242, filed on March 28, 2005, now Pat. No. 7,672,255, and a
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`continuation-in-part of application No. 10/935,342, filed on September 7, 2004, now
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`Pat. No. 7,764,637, which is a continuation-in-part of application No. 10/817,994,
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`filed on April 5, 2004, now Pat. No. 7,961,663, and a continuation-in-part of
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`application No. 11/042,620, filed on January 24, 2005, now Pat. No. 7,773,550.
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`The inventors of the ’877 patent observed that, at the time, mobile instant
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`messaging (“IM”) had just begun to become available and was not as easy to use in
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`the mobile environment as it was in the desktop environment. In particular, the then
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`IM paradigm was encumbered by the constraint that one can only communicate with
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`those who are currently (i) online, (ii) logged on to same IM service such as AOL's
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`Instant Messenger (AIM), Yahoo! Messenger or MSN Messenger, and (iii) included
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`as a “buddy” on one's “buddy list.” And while at the time there were also peer-to-
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`peer instant messaging systems, those peer-to-peer techniques also had their
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`limitations. Specifically, with pure peer-to-peer IM techniques, it was more difficult
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`to implement a commercially viable IM system that efficiently incorporated the
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`capability to communicate in a real-time messaging session with more than two
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`devices (i.e., adding conferencing capabilities to an IM system). Additionally, to the
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`extent service providers dynamically allocated private IP addresses (rather than
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`allocate public Internet IP addresses) to mobile devices through Network Address
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`Translation (NAT) or any other network address allocation techniques, peer-to-peer
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`IM techniques generally would only work within the private network of the service
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`provider since the private IP addresses allocated to a mobile device would not be
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`properly resolved by a receiving mobile device residing on a separate private
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`network with a separate service provider. EX1001, 1:30-2:18.
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`According to the invention of the ’877 patent, a method and system is
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`provided for establishing a real-time session-based IM system or data exchange
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`system between mobile devices over a digital mobile network system that supports
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`data packet-based communications. One such method for of initiating a data
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`exchange session among mobile devices comprises transmitting a request to a server
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`to allocate a network address and port associated with the server to use in a data
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`exchange session with a participating mobile device, receiving the network address
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`and port from the server, using a page-mode messaging service to assist in
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`communicating the network address and port to the participating mobile device,
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`wherein the page-mode messaging service utilizes a unique identifier to locate the
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`participating mobile device, and participating in the data exchange session with the
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`participating mobile device through the server, wherein the participating mobile
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`device has established a connection with the server using the network address and
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`port. EX1001, 2:22-39.
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`III. THE PETITION IMPROPERLY REDUDANTLY CHALLENGES
`THE CLAIMS AT ISSUE
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`The Petition redundantly challenges all claims of the ’877 Patent, without
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`providing any alleged justification for such inefficient redundancies. More
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`specifically, the Petition challenges claims 1-3, 5-10, 12-17, 19-20 (including
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`independent claims 1, 8, and 15) three times, while also challenging all of claims 1-
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`20 twice. See Pet. 6. Moreover, the Petition redundantly challenges each set of
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`challenged claims a total of three times each, for a total of six redundant grounds.
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`As the Board has previously explained, “multiple grounds, which are
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`presented in a redundant manner by a petitioner who makes no meaningful
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`distinction between them, are contrary to the regulatory and statutory mandates, and
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`therefore are not all entitled to consideration.” See Liberty Mut. Ins. Co. v.
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`Progressive Cas. Ins. Co., No. CBM2012-00003, Paper 7 (P.T.A.B. Oct. 25, 2012).
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`Such redundancies place a significant burden on both the Board and the patent
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`owner, causing unnecessary delay, compounding costs to all parties involved, and
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`compromising the ability to complete review within the statutory deadline. Id.; 37
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`C.F.R. § 42.1(b); see also 37 C.F.R. § 42.108. As such, analyzing the petition and
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`eliminating redundant grounds streamlines the proceeding. Idle Free Sys., Inc. v.
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`Bergstrom, Inc., IPR2012-00027, Paper 26 at 4-5 (P.T.A.B. June 11, 2013); Liberty
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`Mut., CBM2012-00003, Paper 7 at 2.
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`The Petition presents grounds that are horizontally redundant with respect to
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`each other. Horizontal redundancy “involves a plurality of prior art applied not in
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`combination to complement each other but as distinct and separate alternatives.”
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`Liberty Mut., CBM2012-00003, Paper 7 at 3. In such instances where reliance on
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`distinct and separate alternatives is alleged to sufficiently present a prima facie case
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`of invalidity, such reliance fails where “the associated arguments do not explain why
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`one reference more closely satisfies the claim limitation at issue in some respects
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`than another reference, and vice versa.” Id. (emphasis in original). “Because the
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`references are not identical, each reference has to be better in some respect or else
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`the references are collectively horizontally redundant.” Id.
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`As the Board explained, the Petitioner in Liberty Mutual did “not articulate
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`any relative weakness in any respect for any one of the …references.” Liberty Mut.,
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`CBM2012-00003, Paper 7 at 6. Further, the Petitioner in Liberty Mutual did not
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`“articulate any relative strength in any respect for any one of the… references.” Id.
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`Here, Petitioner similarly makes no effort to justify its horizontally redundant
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`theories by explaining the relative strength and relative weakness of the alternative
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`references cited in any combination of Grounds 1, 2, or 3. If one of the alternative
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`grounds is better from all perspectives, then the Board should only consider the
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`stronger ground and not burden the Patent Owner and the Board with the weaker
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`ground. Further, if there is no difference in the grounds, the Petitioner should only
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`assert one of the grounds. Id. at 12. “Only if the Petitioner reasonably articulates
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`why each ground has strength and weakness relative to the other should both
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`grounds be asserted for consideration.” Id. (emphasis added). Indeed, the Petition
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`does not even acknowledge the gamesmanship of hedging its bets through the
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`redundancy of its six (6) grounds in the present Petition.
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`The Board in Eizo Corp. v. Barco N.V.1 flatly rejected a similar attempt to
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` IPR2014-00358, Paper 11 (P.T.A.B. July 23, 2014)
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`hedge bets and unnecessarily multiply the work of both the Board and the Patent
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`Owner. The Board there found insufficient the petitioner’s “conclusory assertion”
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`that “[t]o the extent [the first prior art reference] may not explicitly teach” the
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`limitation, the second prior art reference “explicitly teaches this limitation.” The
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`Board explained that “such an assertion fails to resolve the exact differences sought
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`to be derived from” the second prior art reference. Id.
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`The Board’s precedential authority on these procedural issues is clear. Here,
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`Petitioner impermissibly seeks the benefit of different bites at the apple, without
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`providing a bi-directional explanation of the relative strengths and weaknesses of
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`each redundantly offered ground. For example, the Petition makes no mention of
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`the relative strengths and weaknesses of the multiple redundant grounds of rejection
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`asserted by Petitioner, including in any combination of Grounds 1, 2, or 3. If
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`Petitioner believes its obviousness challenges in any of its three (3) redundant
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`grounds suffer from weaknesses, Petitioner is obligated to articulate those
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`weaknesses in the Petition itself. Because Petitioner chose to not offer such
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`concessions, presumably for strategic reasons, the Board need not and should not
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`consider the merits of the redundant challenges based on obviousness.
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`IV. RELATED PROCEEDINGS
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`There are no currently pending cases concerning U.S. Pat. No. 8,018,877
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`(EX1001).
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`V. LEVEL OF ORDINARY SKILL IN THE ART
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` The Petition alleges that “[a] person of ordinary skill in the art at the time of
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`the alleged invention of the 877 patent (a “POSITA”) would have had a Bachelors’
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`degree in computer science or a comparable field of study, plus approximately two
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`to three years of professional experience with cellular phone and IP networks, or
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`other relevant industry experience.” Pet. 10. Given that Petitioner fails to meet its
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`burden of proof when purportedly applying its own definition of a person of ordinary
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`skill in the art, Patent Owner does not offer a competing definition for purposes of
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`this proceeding. Furthermore, again because Petitioner fails to meet it burden of
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`proof, Patent Owner does not offer competing analysis of the Petition’s allegations
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`regarding the knowledge of a POSITA. See Pet. 10-13.
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`VI. PETITIONER DOES NOT PROVE A REASONABLE LIKELIHOOD
`OF UNPATENTABILITY FOR ANY CHALLENGED CLAIM
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`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
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`§42.108(c) (“review shall not be instituted for a ground of unpatentability unless
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`. . . there is a reasonable likelihood that at least one of the claims challenged . . . is
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`unpatentable”). The Petition fails to meet this burden.
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`The Petition raises the following Section 103 challenges:
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`U.S. Patent 8,018,877
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`
`Ground
`1
`2
`3
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`Claims
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`Reference(s)
`Kirmse2 and Chambers3
`1-20
`Chambers and RSIP4
`1-20
`1-3, 5-10, 12-17, 19-20 Cordenier5 and TURN6
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`A. Claim Construction
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`Patent Owner submits that the Board need not construe any claim term in a
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`particular manner in order to arrive at the conclusion that the Petition is
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`substantively deficient. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
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`(Fed. Cir. 2011) (“need only be construed to the extent necessary to resolve the
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`controversy”). However, in the event the Board institutes trial, Patent Owner
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`reserves the right to oppose Petitioner’s other proposed constructions and provide
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`Patent Owner’s own proposed constructions.
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`B. Kirmse Does Not Disclose “transmitting a request to a server to
`allocate a network address and port associated with the server to
`use in a data exchange session with a participating mobile device”
`(Redundant Ground 1) (Independent Claims 1, 8, 15)
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`In redundant Ground 1, the Petition relies solely on Kirmse for this limitation.
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`See Pet. 18-20. Kirmse does not disclose transmitting a request to the server to
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` 2
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` EX1005, U.S. Patent No. 6,699,125.
`3 EX1006, U.S. Patent Application Publication No. 2003/0142654.
`4 EX1013, Request for Comment 3103.
`5 EX1007, EP 1 385 323 A1.
`6 EX1009, Draft Request for Comment published by IETF.
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`8
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`allocate a network address and port associated with the server, as required by the
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`claim language.
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`Specifically, according to the disclosure of Kirmse, “the game server serves
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`up an active game (S3) and provides (S4) inviter with enough information, such as
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`IP address and port number, so the inviter can play the game.” EX1005, 7:33-36
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`(emphasis added). In other words, there is nothing in Kirmse that discloses a mobile
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`device requesting to allocate a network address and port associated with the server,
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`because the server of Kirmse serves active games where the session identifier, such
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`as port number, is already known to the game client. This is confirmed by Kirmse
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`itself:
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`EX1005, 5:59-65 (highlighting and underlining added).
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`As shown above, Kirmse itself confirms that the “URL string for the game
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`server, with a specific port reference… is known to the game client … or can be
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`obtained by the game client.” As such, under Kirmse, a request is not transmitted to
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`the game server to allocate a network address and port associated with the server
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`because the game server serves active games and that information is already known
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`to the game client (or can be obtained by the game client).
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`Therefore, Kirmse does not disclose “transmitting a request to a server to
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`allocate a network address and port associated with the server to use in a data
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`exchange session with a participating mobile device” as required by the claim
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`language, and thus Ground 1 fails.
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`C. Chambers and RSIP Does Not Disclose “transmitting a request to
`a server to allocate a network address and port associated with
`the server to use in a data exchange session with a participating
`mobile device” (Redundant Ground 2) (Independent Claims 1, 8,
`15)
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`In redundant Ground 2, the Petition relies on the proposed combination of
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`Chambers and RSIP for this limitation. See Pet. 40-41. However, neither Chambers
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`nor RSIP disclose the required request from a mobile device to allocate a network
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`address and port associated with the server.
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`The Petition does not rely on Chambers for allocating a network address and
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`port associated with the server, in fact, the Petition admits that in the system of
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`Chambers, a (temporary) IP address is allocated to the mobile device. Pet. 40
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`(“initiating mobile phone requests IP address from stationary server…”); Pet. 34.
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`However, RSIP does not disclose the required allocating a network address and port
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`associated with the server either.
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`10
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`U.S. Patent 8,018,877
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`First, despite proposing the combination of Chambers and RSIP, the Petition
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`fails to specifically point to any of the particular structures of either Chambers or
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`RSIP as being the required mobile device and the required server. The Board nor
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`Patent Owner should have to speculate as to how the proposed combination
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`allegedly reads on the claim language. And for that reason alone, the Petition should
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`fail.
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`Second, in any case, the only possibility that makes sense is that the Petition
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`intended to point to the RSIP Gateway to correspond to the server of Chambers and
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`the RSIP Host to correspond to the mobile devices of Chambers. As the Petition
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`itself admits, Chambers discloses a mobile device communicating with another
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`mobile device by the initiating mobile device first requesting a temporary IP address
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`from a server so that the other mobile device(s) can then use the temporary IP
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`address for a chat session. See Pet. 34. And RSIP discloses that the RSIP Gateway
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`functions as the server between RSIP Host, so that it can communicate to other
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`devices in a public realm:
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`EX1013 at 8 (highlighting added).
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`In fact, RSIP itself discloses that the “RSIP Server” must exist on all RSIP
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`gateways, and that the “RSIP Client” must exist on all RSIP hosts:
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`EX1013 at 9 (highlighting and underlining added).
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`As seen above, despite Petitioner failing to show how its proposed
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`combination would be combined, the only way to make sense of Petitioner’s
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`proposed combination is if the RSIP Gateway of RSIP correlates to the server of
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`Chambers.
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`Third, RSIP does not disclose transmitting a request to a server (RSIP
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`Gateway) to allocate a network address and port associated with the server (the
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`RSIP Gateway). The Petition relies on the sequence of the RSIP Host sending to the
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`RSIP
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`Gateway:
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`a
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`“REGISTER_REQUEST”
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`followed
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`by
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`a
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`“ASSIGN_REQUEST_RS[A]P-IP” or “LISTEN_REQUEST”. See Pet. 40-41.
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`However, nothing in any request or message sent by the RSIP Host (a.k.a. a mobile
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`device) requests to allocate a network port number of the RSIP Gateway (a.k.a. the
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`server). As RSIP itself discloses, the “ASSIGN_REQUEST_RSAP-IP” message
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`does not contain any request to allocate a network address and port associated with
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`the server (a.k.a. the RSIP Gateway) itself:
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`EX1013 at 27 (highlighting and underlining added).
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`As seen above, the “ASSIGN_REQUEST_RSAP-IP” message contains two
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`address and port parameters, one for the RSIP Host itself (a.k.a. a mobile device),
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`or the local address and port(s), and the second of each to refer to the remote address
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`and port(s) that will be contacted. In other words, of the two addresses and ports
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`specified, one set is the local to the requesting mobile device, and the second set is
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`for the mobile device that is to be contacted. There is nothing regarding a request to
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`U.S. Patent 8,018,877
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`allocate a network address and port associated with the RSIP Gateway (a.k.a.
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`server).
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`The Petition’s reliance on RSIP’s “LISTEN_REQUEST” is similarly
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`unavailing:
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`EX1013 at 36 (highlighting and underlining added).
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`As seen above, the “LISTEN_REQUEST” message also contains two address
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`and port parameters, and similarly, the address and port parameters come in two
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`sets: local and remote. Therefore, just as with the “ASSIGN_REQUEST_RSAP-IP”
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`message, there is nothing in the “LISTEN_REQUEST” message regarding a request
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`to allocate a network address and port associated with the RSIP Gateway (a.k.a.
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`the server).
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`Finally, the Petition itself argues that RSIP should be used “with the no
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`remote flow policy”. Pet. 40; see also Pet. 37, 41, 42, 47. And regarding “remote
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`flow policy”, RSIP expressly states that under a “no flow” policy, the hosts (a.k.a.
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`mobile devices) communicate without explicitly notifying the gateway (a.k.a. the
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`server):
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`EX1013 at 13 (highlighting and underlining added).
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`The above further confirms that under RSIP the allocation of “addressing
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`parameters” is “to the host” (a.k.a. the mobile device), and not associated with the
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`RSIP gateway (a.k.a. the server), as required by the claim language.
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`Therefore, Ground 2 fails because neither Chambers nor RSIP discloses the
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`required “transmitting a request to a server to allocate a network address and port
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`associated with the server to use in a data exchange session with a participating
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`mobile device”, as required by the claim language.
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`D. A POSITA Would Not Have Combined Cordenier and TURN
`(Ground 3)
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`In redundant Ground 3, the Petition proposes the combination of Cordenier
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`and TURN. However, Petitioner does not identify any shortcoming of Cordenier
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`that would cause a POSITA to look to TURN, or vice versa. Instead, the Petition
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`merely offers hindsight reconstruction.
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`“[A] patent composed of several elements is not proved obvious merely by
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`demonstrating that each of its elements was, independently, known in the prior art.”
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`KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418, 127 S.Ct. 1727, 167 L.Ed.2d 705
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`(2007). To establish obviousness under 35 U.S.C. § 103(a), it is petitioner’s “burden
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`to demonstrate . . . that a skilled artisan would have been motivated to combine the
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`teachings of the prior art references to achieve the claimed invention.” In re
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`Magnum Oil Tools Int’l Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (quotations
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`omitted). The petitioner must “articulate[] reasoning with some rational
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`underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v.
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`Teleflex Inc., 550 U.S. 398, 418 (2007) (citation omitted). In a case of obviousness,
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`there must be an explanation of why a person of ordinary skill in the art would
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`modify the prior art references to create the claimed invention. Cutsforth, Inc. v.
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`MotivePower, Inc., 636 Fed. Appx. 575, 577–78 (Fed. Cir. 2016).
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`The “factual inquiry” into the reasons for “combin[ing] references must be
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`thorough and searching, and the need for specificity pervades.” In re Nuvasive, Inc.,
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`842 F.3d 1376, 1381–82 (Fed. Cir. 2016) (quotations omitted). An obviousness
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`determination cannot be reached where the record lacks “explanation as to how or
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`why the references would be combined to produce the claimed invention.”
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`TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016). This requisite
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`explanation avoids an impermissible “hindsight reconstruction,” using “the patent
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`in suit as a guide through the maze of prior art references, combining the right
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`references in the right way so as to achieve . . . The claims in suit.” Id.; In re NTP,
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`Inc., 654 F.3d 1279, 1299 (Fed. Cir. 2011).
`
`Moreover, Petitioner cannot merely speculate through its declarant, outside
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`16
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`the four corners of the reference, to carry its burden. The Federal Circuit has
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`instructed that “legal determinations of obviousness, as with such determinations
`
`generally, should be based on evidence rather than on mere speculation or
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`conjecture.” Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1290 (Fed. Cir. 2006);
`
`K/S HIMPP v. Hear-Wear Techs., LLC, 751 F.3d 1362, 1365−66 (Fed. Cir. 2014)
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`(finding the P.T.A.B. correctly rejected conclusory assertions of what would have
`
`been common knowledge in the art).
`
`Here, neither Cordenier nor TURN discloses any alleged shortcomings that
`
`would cause a POSITA to look to combine one with the other. In other words, under
`
`Petitioner’s proposed combination, both Cordenier and TURN are being used to
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`supply solutions for problems that don’t exist in the other.
`
`First, the Petition allegedly provides various “reasons” for its proposed
`
`combination however, the Petition really only provides a single reason:7 that a
`
`POSITA would have allegedly been motivated to look for a known NAT traversal
`
`technique. See Pet. 59. However, the Petition itself admits that Cordenier already
`
`discloses the use of NAT: “Cordenier expressly discloses that its mobile phones
`
`
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` 7
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` See Pet. 54-56 (First reason is merely that the references are allegedly “analogous
`art”, the second and third reasons are the same – that allegedly a POSITA would
`have looked to combine Cordenier with a known NAT traversal technique, and the
`fourth and fifth reasons are merely that NAT traversal was known and allegedly a
`POSITA would have had a reasonable expectation of success).
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`17
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`could be on different networks and separated by NAT.” Pet. 54 citing EX1007, Fig.
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`7 and 8:3-26. For this reason alone, the Petition itself admits that there was no reason
`
`for a POSITA to combine Cordenier and TURN.
`
`Yet, the Petition argues that “[b]ecause Cordenier does not provide any NAT
`
`traversal technique, a POSITA would have been motivated to search for and use a
`
`known NAT traversal technique…” Pet. 54. However, the Petition does not provide
`
`any evidence or analysis for this conclusion, instead, the Petition merely cites to its
`
`declarant for support. Id. citing EX1002, ¶ 115. But Petitioner’s declarant merely
`
`parrots the same speculative and conclusory statement of the Petition. Compare Pet.
`
`54 with EX1002, ¶ 115. That is insufficient. 37 C.F.R. § 42.65(a) (“Expert testimony
`
`that does not disclose the underlying facts or data on which the opinion is based is
`
`entitled to little or no weight.”); Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286,
`
`1290 (Fed. Cir. 2006) (“legal determinations of obviousness, as with such
`
`determinations generally, should be based on evidence rather than on mere
`
`speculation or conjecture.”); In re Magnum Oil Tools Int’l Ltd., 829 F.3d 1364, 1380
`
`(Fed. Cir. 2016) (“[A] petitioner cannot employ mere conclusory statements” and
`
`“must instead articulate specific reasoning, based on evidence of record . . . .”).
`
`In the case of In re Omeprazole Patent Litigation, 536 F.3d 1361 (Fed. Cir.
`
`2008), the Federal Circuit affirmed a finding of nonobviousness because the alleged
`
`flaws in the prior art that ostensibly prompted the modification had not been
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`18
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`recognized in the art itself. Thus, there would have been no reason to modify as
`
`proposed, even though the modification could have been done. Analogous reasoning
`
`and the same conclusion of nonobviousness apply here.
`
`Second, there was also no reason to combine TURN with Cordenier. The
`
`Petition argues that “it would have been obvious” to a POSITA to combine
`
`Cordenier and TURN “such that the SMS invitation taught by Cordenier includes
`
`the public IP address and port number of the TURN server”. Pet. 63. However, and
`
`again, the Petition provides nothing in the way of evidence or analysis to support its
`
`mere conclusion, except for the testimony of its declarant. But the declarant again
`
`merely parrots the conclusory statements of the Petition. Compare Pet. 67-68 with
`
`EX1002, ¶¶ 142-43. This is not enough. 37 C.F.R. § 42.65(a)
`
`Furthermore, and most importantly, as the Petition itself expressly
`
`acknowledges, TURN already expressly discloses sending the public IP address and
`
`port from the client to the peer:
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`19
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`
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`Pet. 63 citing TURN (EX1009, Figure 2) (emphasis in original).
`
`As the Petition makes clear, and as confirmed by TURN itself, TURN already
`
`provides a mechanism for the client to transmit the public IP and port information
`
`to the peer. Therefore, there further was no reason for a POSITA to combine
`
`Cordenier and TURN as the Petition proposes because there was no shortcoming of
`
`TURN in transmitting the public IP and port information from the client to the peer.
`
`In re Omeprazole Patent Litigation, 536 F.3d 1361 (Fed. Cir. 2008) (Affirmed a
`
`finding of non-obviousness because the alleged flaws in the prior art that ostensibly
`
`prompted the modification had not been recognized in the art itself. Thus, there
`
`would have been no reason to modify as proposed.)
`
`Thus, for the reasons above, Ground 3 fails.
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`20
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`E.
`
`The Petition fails to Prove Obviousness of Any Dependent Claim
`
`The deficiencies of the Petition articulated above concerning the challenged
`
`independent claims apply also taint the analysis of the challenged dependent claims.
`
`Accordingly, the Petition should be denied in its entirety.
`
`VII. THE CONSTITUTIONALITY OF INTER PARTES REVIEW IS THE
`SUBJECT OF A PENDING APPEAL
`
`In a pending appeal to the Federal Circuit, Polaris Innovations Ltd. v.
`
`Kingston Technology, No. 18-01768, Dkt. No. 27, the patent owner Polaris argued
`
`that the Board’s appointments of administrative patent judges violate the
`
`Appointments Clause of Article II, and that their decisions must be set aside,
`
`because administrative patent judges are “appointed by the Secretary of Commerce,
`
`in consultation with the Director” of the USPTO, but without appointment by the
`
`President and confirmation by the Senate in violation of Article II, Section 2, Clause
`
`2 of the Constitution. Out of an abundance of caution, Patent Owner hereby adopts
`
`this constitutional challenge now to ensure the issue is preserved pending the appeal.
`
`VIII. CONCLUSION
`
`For at least the reasons set forth above, Uniloc respectfully requests that the
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`21
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`
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`Board deny all challenges in the instant Petition.8
`
`Date: June 7, 2019
`
`
`
`
`
`Respectfully submitted,
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`IPR2019-00701
`U.S. Patent 8,018,877
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`
`By: /s/ Brett A. Mangrum
`
`Brett A. Mangrum; Reg. No. 64,783
`
`Attorney for Patent Owner
`
`
`
` 8
`
` Patent Owner does not concede, and specifically denies, that there is any legitimacy
`to any arguments in the instant Petition that are not specifically addressed herein.
`
`22
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`
`CERTIFICATE OF COMPLIANCE
`
`
`
`Pursuant to 37 C.F.R. § 42.24(d), we certify that this Preliminary Response
`
`to Petition complies with the type-volume limitation of 37 C.F.R. § 42.24(b)(1)
`
`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 7, 2019
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /s/ Brett A. Mangrum
`
`Brett A. Mangrum; Reg. No. 64,783
`
`Attorney for Patent Owner
`
`i
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`CERTIFICATE OF SERVICE
`
`
`
`Pursuant to 37 C.F.R. §§ 42.6(e), we certify that we served an electronic copy
`
`of the foregoing PATENT OWNER’S PRELIMINARY RESPONSE PURSUANT
`
`TO 37 C.F.R. § 42.107(a) along with any accompanying exhibits via the Patent
`
`Review Processing System (PRPS) to Petitioner’s counsel at the following
`
`addresses identified in the Petition’s consent to electronic service:
`
`Brian Erickson (Reg. No. 48,895)
`James M. Heintz (Reg. No. 41,828)
`brian.erickson@dlapiper.com
`jim.heintz@dlapiper.com
`
`
`
`
`Date: June 7, 2019
`
`
`
`
`
`Respectfully submitted,
`
`By: /s/ Brett A. Mangrum
`
`Brett A. Mangrum; Reg. No. 64,783
`
`Attorney for Patent Owner
`
`
`
`ii
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`
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