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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`IPR2019-00702
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`PATENT 7,969,925
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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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`
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`IPR2019-00702
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`PATENT 7,969,925
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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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`IPR2019-00702
`U.S. Patent 7,969,925
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`Table of Contents
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`
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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 ’925 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 ...................................... 6
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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 ......................................................................... 7
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`1.
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`“opening a listening software port” (claims 1, 8,
`and 15) / “opening a second listening software
`port” (claims 2, 9, and 16) .................................................... 8
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`B.
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`None of the Petition’s References and Proposed
`Combinations Disclose “opening a listening software
`port” (Independent Claims 1, 8, 15) (Grounds 1-6) ..................... 11
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`1.
`
`2.
`
`3.
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`“Opening a listening software port” requires
`actually opening a port ....................................................... 11
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`None of Alos, Cordenier, or Lee disclose
`“opening a listening software port” .................................... 12
`
`The Petition does not show that any of the
`combinations with RFC793 in the Petition’s
`redundant Grounds 1, 3, or 5 results in a
`hypothetical system that discloses “opening a
`listening software port” ...................................................... 14
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`C.
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`The Petition fails to Prove Obviousness of Any
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`ii
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`Dependent Claim .......................................................................... 16
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`VII.
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`THE CONSTITUTIONALITY OF INTER PARTES REVIEW
`IS THE SUBJECT OF A PENDING APPEAL ..................................... 17
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`VIII. CONCLUSION ....................................................................................... 17
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`IPR2019-00702
`U.S. Patent 7,969,925
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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 IPR2019-00702 for Inter Partes Review (“Pet.” or “Petition”)
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`of United States Patent No. 7,969,925 (“the ’925 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 ’925 PATENT
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`The ’925 patent is titled “Peer-to-peer mobile data transfer method and
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`device.” The ʼ925 patent issued June 28, 2011, from U.S. Patent Application No.
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`12/832,576 filed January July 8, 2010.
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`The inventors of the ’925 patent observed that, at the time, multimedia
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`messaging technologies for mobile devices depended upon a server that receives and
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`prepares multimedia content to be retrieved by the recipient of the multimedia
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`message. For example, at the time, the Multimedia Messaging Service (“MMS”)
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`protocol utilized a server known as a Multi-Media Service Center (“MMSC”) to
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`store multimedia content in preparation for a retrieval process initiated by the
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`recipient. Specifically, under MMS, the initiating device initiated a data connection
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`over TCP/IP and performed an HTTP POST of an MMS Encapsulation Format
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`encoded multimedia message to the MMSC. The MMSC stored the multimedia
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`message and made it available as a dynamically generated URL link. The MMSC
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`1
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`then generated a notification message containing the dynamically generated URL
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`and sent the notification message to the recipient through WAP Push over the Short
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`Message Service (“SMS”) protocol. When the recipient received the MMS
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`notification message, it initiated a data connection over TCP/IP and performed an
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`HTTP request to retrieve the MMS message containing multimedia content from the
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`MMSC through the dynamically generated URL. EX1001, 1:23-42.
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`According to the disclosure of the ’925 patent, a method and system is
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`provided for establishing a direct data transfer session between mobile devices over
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`a digital mobile network system that supports data packet-based communications.
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`Under the disclosure of the ’925 patent, no separate data server need be used to
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`provide a known location from which a recipient retrieves data such as multimedia
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`content. Instead, a mobile device initiating a data transfer opens a listening port
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`defined by an underlying data packet-based network protocol. The initiating mobile
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`device sends an invitation message containing the network address, including the
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`listening port, of the initiating device to a target mobile device through a page-mode
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`messaging service (e.g., text-based service) supported by the digital mobile network
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`system. The initiating mobile device further utilizes and incorporates a unique
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`identification number (e.g., telephone number, PIN number, etc.) associated with the
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`target mobile device into the invitation message to locate and contact the target
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`mobile device within the wireless mobile network. Once the initiating mobile device
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`2
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`receives a response from the target mobile device at the listening port, the two mobile
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`devices are able to establish a reliable virtual connection through the underlying data
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`packet-based network protocol in order to transfer data directly between the two
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`mobile devices. EX1001, 1:61-2:17.
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`III. THE PETITION IMPROPERLY REDUNDANTLY CHALLENGES
`THE CLAIMS AT ISSUE
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`The Petition redundantly challenges both sets of challenged claims ((1) claims
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`1, 3-8, 10-15, 17-20; and (2) claims 2, 9, and 16) of the ’925 Patent, without
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`providing any alleged justification for such inefficient redundancies. Moreover, the
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`Petition redundantly challenges each set of challenged claims a total of three times
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`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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`3
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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, 3, and 5 or in any combination of
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`Grounds 2, 4, and 6. If one of the alternative grounds is better from all perspectives,
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`then the Board should only consider the stronger ground and not burden the Patent
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`Owner and the Board with the weaker ground. Further, if there is no difference in
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`the grounds, the Petitioner should assert only one of the grounds. Id. at 12. “Only if
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`the Petitioner reasonably articulates why each ground has strength and weakness
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`relative to the other should both grounds be asserted for consideration.” Id.
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`(emphasis added). Indeed,
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`the Petition does not even acknowledge
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`the
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`gamesmanship of hedging its bets through the redundancy of its six (6) grounds in
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`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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`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, 3, and 5, or in
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`any combination of Grounds 2, 4, and 6. If Petitioner believes its obviousness
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` 1
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` IPR2014-00358, Paper 11 (P.T.A.B. July 23, 2014)
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`5
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`challenges in any of its six (6) redundant grounds suffer from weaknesses, Petitioner
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`is obligated to articulate those weaknesses in the Petition itself. Because Petitioner
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`chose to not offer such concessions, presumably for strategic reasons, the Board
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`need not and should not consider the merits of the redundant challenges based on
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`obviousness.
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`IV. RELATED PROCEEDINGS
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`The following proceedings are currently pending cases concerning U.S. Pat.
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`No. 7,969,925 (EX1001).
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`Case Caption
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`Case Number
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`District Case Filed
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`Uniloc USA, Inc. et al v. Apple
`Inc.
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`4-19-cv-01696
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`CAND Apr. 03, 2019
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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 925 patent (a “POSITA”) would have had a Bachelor’s
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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. 9. 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.
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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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`Ground
`1
`2
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`Claims
`1, 3-8, 10-15, 17-20
`2, 9, and 16
`
`3
`4
`5
`6
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`1, 3-8, 10-15, 17-20
`2, 9, and 16
`1, 3-8, 10-15, 17-20
`2, 9, and 16
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`Reference(s)
`Alos2, and RFC7933
`Alos, RFC793, and SMS Specification, 4 and
`WMA5
`Cordenier6 and RFC793
`Cordenier, RFC793, and Dorenbosch7
`Lee, 8 RFC793, and SMS Specification
`Lee, RFC793, SMS Specification, and WMA
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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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`
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` 2
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` EX1005, EP 1 099 153 A1.
`3 EX1010, Request for Comment 793.
`4 EX1014, SMS Specification.
`5 EX1018, WMA.
`6 EX1007, EP 1 385 323 A1.
`7 EX1011, US Patent Application No. 2003/0217174.
`8 EX1006, US Patent No. 6,847,632.
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`7
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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, because the Petition seeks to construe the term “opening a
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`listening port” and “opening a second listening port” in a manner inconsistent with
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`its plain and ordinary meaning, Patent Owner addresses Petitioner’s inappropriate
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`proposed construction below. Further, in the event the Board institutes trial, Patent
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`Owner reserves the right to oppose Petitioner’s other proposed constructions and
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`provide Patent Owner’s own proposed constructions.
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`In IPR proceedings, claim terms are to be given a construction utilizing the
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`standard applied by Article III courts. 37 C.F.R. §42.100(b); Phillips v. AWH Corp.,
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`415 F.3d 1303 (Fed. Cir. 2005). Under Phillips, a claim term must be given “the
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`meaning that the term would have to a person of ordinary skill in the art in question
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`at the time of the invention.” Phillips, 415 F.3d at 1313. The Phillips standard
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`primarily focuses on intrinsic evidence, such as the patent specification and
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`prosecution history, to interpret the claim terms. Id. at 1317; see also 37 C.F.R. §
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`42.100(b).
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`1.
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`“opening a listening software port” (claims 1, 8, and 15) /
`“opening a second listening software port (claims 2, 9, and
`16)
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`Petitioner realizes that its numerous redundant references and grounds fail to
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`disclose the required “opening a [second] listening software port”, and therefore the
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`8
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`Petition seeks to improperly to rewrite the claim language by rendering the term
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`“opening” superfluous and/or substituting the required “opening” with merely
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`“associating”. Pet. 21-22.
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`The Petition provides no authority or intrinsic evidence for its inappropriate
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`proposed construction. Specifically, the Petition proposed construction is that the
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`limitations means “associating a port identifier with a process.” Pet. 21. And then
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`Petitioners make clear its actual goal in its inappropriate proposed re-write of the
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`claim language: “[t]he Board should reject any proposed construction that attempts
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`to narrow this phrase to require that the port be opened exclusively for receiving a
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`response from only the target device.” Pet. 22. As will be shown below, Petitioner
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`acknowledges its multitude of redundant references are each lacking and does not
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`render any of the challenged claims unpatentable, and therefore Petitioner seeks to
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`improperly re-write the claim language.
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`Yet, the Petition provides no evidence or authority to support such a drastic
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`re-writing of the claim language. Instead, the Petition only references various
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`extrinsic pieces of evidence that merely explain generally the concept of ports. See
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`Pet. 21-22. The Petition provides no explanation how such generic extrinsic
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`evidence supports Petitioner’s improper attempt to re-write the claim language.
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`Petitioner’s use of such extrinsic evidence in an unexplained and unsupported
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`manner to improperly re-write the claim language in its proposed construction
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`should be rejected.
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`Furthermore, the Petition’s purported reliance on “a related application”
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`(EX1004) also fails. As the Petition itself admits, the “additional claim language”
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`of EX1004 included the phrase opening a listening software port “for the target
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`mobile device”. See Pet. 21. Therefore, EX1004 and the “additional claim language”
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`does not support Petitioner’s contention that this somehow “excluded the use of
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`well-known ports” (Pet. 21); instead, that “additional claim language” of EX1004
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`only excludes ports that are exclusively “for the target mobile device.”
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`There is no argument in the Petition that EX1004 (or anything else for that
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`matter) that renders superfluous or excludes the required act of “opening” of a
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`listening software port, because there is none. In fact, the claim language from
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`EX1004 also recites the required “opening”. See EX1004 at 414 (listing certain
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`limitations of claim 1). Therefore, there is nothing in EX1004 that supports re-
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`writing the claim language here to remove or render superfluous the required act of
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`“opening” of a listening software port. Quite the opposite – the claims in the EX1004
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`application also recite the required act of “opening”.
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`The Board should reject Petitioner’s unsupported and improper attempt to
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`drastically re-write the claim language to replace or render superfluous the required
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`claim language term “opening”. See K-2 Corp. v. Salomon S.A., 191 F.3d 1356,
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`1364 (Fed. Cir. 1999) ("Courts do not rewrite claims; instead, [Courts] give effect
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`to the terms chosen by the patentee."). Patent Owner contends the claim language
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`on its face requires “opening” a listening software port, and the term “opening”
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`should be given its plain and ordinary meaning, for example, to perform the act of
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`making open.
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`B. None of the Petition’s References and Proposed Combinations
`Disclose “opening a listening software port” (Independent Claims
`1, 8, 15) (Grounds 1-6)
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`Each and every ground in the Petition relies on a combination involving
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`RFC793, including Grounds 1, 3, and 5, which challenge independent Claims 1, 8,
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`and 15. See Pet. 6. For the limitation “opening a listening software port”, for each
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`of Grounds 1, 3, and 5, the Petition groups together independent Claims 1, 8, and
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`15 and addresses all of them collectively. See Pet. 31-32 (Ground 1); Pet. 47
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`(Ground 3); Pet. 59-60 (Ground 5). For the reasons discussed below, none of
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`Grounds 1, 3, or 5 show that the proposed combination discloses “opening a
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`listening software port” as required by independent Claims 1, 8, and 15.
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`1.
`
`“Opening a listening software port” requires actually
`opening a port
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`As discussed above in Section VI.A.1, the Board should reject Petitioner’s
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`unsupported proposed construction to re-write the claim language in such a way to
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`remove or render superfluous the term “opening” from the claim limitation. See K-
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`2 Corp. v. Salomon S.A., 191 F.3d 1356, 1364 (Fed. Cir. 1999) (“Courts do not
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`rewrite claims; instead, [Courts] give effect to the terms chosen by the patentee.”).
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`Instead, it is Petitioner’s burden to show that its (numerous redundant)
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`proposed combinations would render obvious the claim limitation that requires
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`opening a listening software port. Indeed, if a single limitation of a claim is absent
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`from the prior art, the claim cannot be considered obvious. See CFMT, Inc. v.
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`YieldUp Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (“Obviousness requires
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`a suggestion of all limitations in a claim.”) (citing In re Royka, 409 F.2d 981, 985
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`(C.C.P.A. 1974)); In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) (reversing
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`obviousness rejection where prior art did not teach or suggest all claim limitations);
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`Garmin Int’l, Inc. v. Patent of Cuozzo Speed Techs. LLC, Case No. IPR2012-00001,
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`slip op. at 15 (P.T.A.B. Jan. 9, 2013) (refusing to institute an inter partes review
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`under 35 U.S.C. § 103 where prior art did not disclose all claim limitations).
`
`2.
`
`None of Alos, Cordenier, or Lee disclose “opening a listening
`software port”
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`The Petition admits that none of Alos, Cordenier, or Lee discloses “opening
`
`a listening software port”, as required by the claim language. Instead, in each
`
`Ground, the Petition purports to rely on RFC793 for the required act of “opening”.
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`Regarding Alos, the Petition admits that Alos “does not specify a transport
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`layer protocol”. Pet. 31. And therefore, by definition, Alos could not and does not
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`specify the operation of the transport layer protocol which it fails to identify. Instead,
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`here the Petition purports to rely on RFC793 for the required and missing act of
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`“opening” a listening software port limitation. Pet. 31-32.
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`Regarding Cordenier, again, the Petition admits that Cordenier “does not
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`specify a transport layer protocol”, as required by the claim language. Pet. 47. And
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`again, therefore, by definition, Cordenier could not and does not specify the
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`operation of the transport layer protocol which it fails to identify. Instead, here, the
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`Petition also purports to rely on RFC793 for the required and missing act of
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`“opening” a listening software port limitation. Pet. 47.
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`Regarding Lee, while Lee allegedly discloses a transport layer protocol, there
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`is nothing in Lee that discloses operation of that protocol, and specifically there is
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`nothing in Lee regarding the required “opening” a listening software port limitation.
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`And the Petition does not argue otherwise. Instead, as with the other references and
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`redundant grounds above, the Petition purports to rely on RFC793 for the required
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`and missing act of “opening” a listening software port limitation. Pet. 60.
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`Thus, as confirmed by the Petition itself, nothing in any of the redundant
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`grounds involving Alos, Cordenier, or Lee discloses the required and missing
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`“opening” a listening software port limitation. And as will be shown below, the
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`Petition’s purported reliance on RFC793 is also unavailing.
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`3.
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`IPR2019-00702
`U.S. Patent 7,969,925
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`The Petition does not show that any of the combinations with
`RFC793 in the Petition’s redundant Grounds 1, 3, or 5
`results in a hypothetical system that discloses “opening a
`listening software port”
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`As the Petition itself acknowledges, RFC793 itself discloses that there are
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`TCP ports that are not available for opening because those certain ports are reserved
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`and permanently assigned to a particular socket for things such as file transfer. An
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`example of such a TCP port is what is called a “well-known socket”. See e.g., Pet.
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`21 (citing to “well-known sockets”). Specifically regarding “well-known sockets”,
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`RFC793 recites:
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`
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`EX1010 at 20 (highlighting and underlining added).
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`As shown by the passage above, “well-known sockets” are “permanently
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`assigned to a particular socket” and made available “a priori”. And one of those
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`“well-known sockets” is “reserved for File Transfer”. EX1010 at 20. Therefore,
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`there is no reason for any of the hypothetical combinations of Alos, Cordenier, or
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`Lee with RFC793 to not simply use one of the “well-known sockets” which are
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`“permanently assigned” and made available “a priori”, and specifically include a
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`U.S. Patent 7,969,925
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`socket that is specifically “reserved” for “file transfer”. In each of the Petition’s
`
`redundant grounds and hypothetical combinations with RFC793, using the pre-
`
`existing, “permanently assigned” socket that is “reserved” for “file transfer” would
`
`be the simplest and most common-sense solution, as RFC793 itself expressly
`
`provides for it. Therefore, there is no disclosure in the Petition that the redundant
`
`hypothetical combinations of Alos, Cordenier, or Lee with RFC793 renders obvious
`
`“opening a listening software port” as required by the claim language because there
`
`already exists in the disclosure of RFC793 a “well-known socket” for “file transfer”
`
`is “permanently assigned”.
`
`And, the Petition provides no evidence or analysis that a POSITA would
`
`ignore this “well-known socket”. Instead, the Petition merely speculates through its
`
`declarant that “A POSITA would also have been motivated to configure phone 1 to
`
`make a passive OPEN call to open a TCP port in a listen mode because, if the TCP
`
`port on phone 1 were not opened, the TCP response message from phone 2 could
`
`not be received and processed.” Pet. 28. However, Petitioners provide no evidence
`
`that its redundant hypothetical combinations would not have used the “well-known
`
`socket” for “file transfer” that is “permanently assigned” and available “a priori”. In
`
`such a case, any hypothetical combinations with RFC793 does not perform the
`
`required “opening a listening software port” as required by the claim language
`
`because there is nothing to open, since the “well-known socket” is “permanently
`
`15
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`IPR2019-00702
`U.S. Patent 7,969,925
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`assigned”, and available “a priori”.
`
`Finally, to the extent the Board considers Petitioner’s declarant’s testimony
`
`on this issue, that testimony should be given little to no weight. The Petitioner’s
`
`declarant merely parrots the same conclusory statements as in the Petition (compare
`
`Pet. 28 with EX1002, ¶ 65) and should be given little to no weight. 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.”); see also Verlander v.
`
`Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (Board has discretion to accord little
`
`weight to broad conclusory statements from expert witness). The Petition and
`
`Petitioner’s declarant merely conclude that a POSITA would have been motivated
`
`to open a TCP port, without any discussion or acknowledgement of the “well-known
`
`socket” for “file transfer” that is “permanently assigned” as disclosed by RFC793.
`
`Thus, for at least the reasons discussed above, the Petition fails to prove that
`
`any of its redundant grounds renders obvious “opening a listening software port” as
`
`required by the claim language, and therefore the Petition should be denied.
`
`C. 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.
`
`16
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`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
`
`Board deny all challenges in the instant Petition.9
`
`Date: May 28, 2019
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /s/ Brett A. Mangrum
`
`Brett A. Mangrum; Reg. No. 64,783
`
`Attorney for Patent Owner
`
`
`
` 9
`
` 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.
`
`17
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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: May 28, 2019
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /s/ Brett A. Mangrum
`
`Brett A. Mangrum; Reg. No. 64,783
`
`Attorney for Patent Owner
`
`i
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`
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`IPR2019-00702
`U.S. Patent 7,969,925
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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: May 28, 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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