UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CISCO SYSTEMS, INC.,
`Petitioner
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
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`IPR2017-00058
`U.S. PATENT NO. 7,804,948
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`PATENT OWNER’S REQUEST FOR
`DIRECTOR REVIEW AND REHEARING
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CISCO SYSTEMS, INC.,
`Petitioner
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
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`
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`IPR2017-00058
`U.S. PATENT NO. 7,804,948
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`PATENT OWNER’S REQUEST FOR
`DIRECTOR REVIEW AND REHEARING
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`Pursuant to United States v. Arthrex, Inc., 141 S. Ct. 1970, 1987–88 (2021)
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`and the Federal Circuit’s April 8, 2022 order entered in this proceeding as EX1021,
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`Uniloc USA, Inc. and Luxembourg S.A. (“Patent Owners”1) hereby request
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`Director review and rehearing of the Final Written Decision finding unpatentable
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`Claims 1, 2, 5–10, 12, 18–26, 29, 30, 36, 37, 49–53, 65, and 66. Patent Owner’s
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`request for rehearing is based upon the following considerations.
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`I.
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`APPLICABLE STANDARDS
`For a request of Director review under Arthrex, the PTAB has adopted a
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`mechanism similar to rehearing procedures under 37 C.F.R. §42.71(d). Under that
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`provision, “[a] party dissatisfied with a decision may file a request for rehearing,
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`without prior authorization from the Board.” 37 C.F.R. §42.71(d). “The request must
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`specifically identify all matters the party believes the Board misapprehended or
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`overlooked, and the place where each matter was previously addressed in a motion,
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`an opposition, or a reply.” Id.
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`Claim construction is a question of law. Markman v. Westview Instruments,
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`52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). In an
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`inter partes review, claim terms in an unexpired patent are interpreted according
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`to their broadest reasonable construction in light of the specification of the patent
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`1 Uniloc USA, Inc. and Luxembourg S.A. are referred to herein as “Patent Owners”
`only for convenience. Ownership changed during the pendency of this proceeding.
`2
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`in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
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`136 S.Ct. 2131, 2142 -46 (2016).
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`II. ARGUMENT
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`A. The Board misapprehended or overlooked the fact that the relied
`upon obviousness combination includes a selection process that was
`unambiguously disclaimed during prosecution.
`The Board misapprehended or overlooked the fact that the relied upon
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`obviousness combination includes a selection process that was unambiguously
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`disclaimed during prosecution.2 More specifically, the relied upon Hamberg
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`references uses the exact same selection process employed by the Haim reference
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`applied during prosecution. During prosecution of the application that issued as the
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`’948 Patent, Applicant successfully distinguished the Haims reference, at least in
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`part, with the following remarks (which the Office ultimately found to be
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`persuasive) concerning such selection:
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`Haims neither teaches nor even suggests such a methodology.
`Rather, Haims proposes that a user determine whether attendees
`are available and select ones for invitation. See, e.g., pars. [0110]
`and [0111]. In contrast, Claim 1 calls for the system to
`automatically establish a conference call with a plurality of users
`who are then participating in a common IM session with the
`requester responsively to a single requester request.
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`2 This disclaimed selection process arose in Claim 1’s “generating a conference call
`request responsively to a single request by the conference call requester, said
`conference call request identifying each of the potential targets for said conference
`call request” and likewise in Claim 23’s “generating a conference call request by said
`conference call requester in a single step, said conference call request identifying
`each of the potential targets” and Claim 51’s “generating a conference call request
`by the call requester responsively to a single requester indication.”
`3
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`EX1002 at 80-81 (emphasis added). Thus, the intrinsic evidence unambiguously
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`confirms, consistent with the explicit claim language, that there is a patentable
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`distinction between “a single request by the conference call requester” and, instead,
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`requiring the requester to select which attendees to invite to join a conference call.
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`Nothing in the prosecution history suggests that the distinction successfully
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`raised by the Applicant depends on how the user must select the attendees. Applicant
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`made no mention of the particular way in which multiple attendee selection occurs
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`because that was not the point of distinction over Haims. Rather, the patentable
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`distinction successfully raised during prosecution is simply that Haims required the
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`conference call requester to select the attendees for invitation (i.e., regardless how
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`the selection occurs). Accordingly, to determine whether the distinction successfully
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`raised during prosecution applies equally here, the operative question is not how the
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`user in a cited reference must select the conference call attendees, but rather whether
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`the user must make such a selection.
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`Just like Haim, the relied-up Hamberg requires a selection in its CALL
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`ALIAS processing (typing the word “CALL” followed by certain alias names and
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`then pressing enter). It is undisputed that Hamberg teaches the purpose for its
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`CALL ALIAS message is to enable a user to selectively define whom to
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`include/exclude in a conference call. Because this selection process was disclaimed
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`during prosecution, Hamberg teaches away from the claims.
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`4
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`In attempts to side-step Hamberg’s contrary teachings, Petitioner parsed the
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`Hamberg and Lamb references to select certain teachings while disregarding
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`others. This is impermissible. “It is impermissible within the framework of section
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`103 to pick and choose from any one reference only so much of it as will support
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`a given position to the exclusion of other parts necessary to the full appreciation of
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`what such reference fairly suggests to one skilled in the art.” Bausch & Lomb, Inc.
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`v. Barnes-Hind / Hydrocurve, Inc., 796 F.2d 443, 448 (Fed. Cir. 1986)). Petitioner
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`argued that one may simply take a button interface with regards to the Lamb
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`(without regard to a lack of teaching as to the details concerning what happens
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`when one clicks that button) and combine it with Hamberg processing, ignoring
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`the fact that Hamberg uses a selection process to initiate such processing.
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`Moreover, any proposal that an artisan could program in a manner that is
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`contrary to teachings further violates controlling authority. As held by the Federal
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`Circuit, to render an invention obvious, an artisan would have to immediately
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`envision the claimed combination. See Microsoft Corp v. Biscotti, Inc. Nos. 2016-
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`2080, 2016-2082, 2016-2083, (Fed. Cir. Dec. 28, 2017) (Before Newman,
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`O’Malley, and Reyna, J.) (Opinion for the court, O’Malley, J.) (Dissenting opinion,
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`Newman, J.).3 Here, even after reading the Petition, an artisan still does not know
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`what the alleged combination looks like.
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`3 http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-2080.Opinion.12-27-2017.1.PDF
`5
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`B. The Board misapprehended the construction of “a single request of
`the conference call requester.”
`The Board’s claim construction of the analogous recitations, “a single request
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`by the conference call requester,” “by said conference call requester in a single step,”
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`and “a single requester indication,” as recited in independent claims 1, 23, and 51,
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`respectively, of United States Patent No. 7,804,948 (“the ʼ948 patent”), was
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`unreasonable and thus erroneous under the governing broadest-reasonable-
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`interpretation standard, where the construction applied by the Board violates the
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`doctrine of prosecution disclaimer by recapturing scope clearly and unequivocally
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`surrendered during prosecution.
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`C. Board erred in adopting an invalidity theory for the “generating”
`steps recited in each challenged claim.
`The Board erred in adopting an invalidity theory for the “generating” steps
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`recited in each challenged claim that relies on a proposed modification to WIPO
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`Application Publication No. WO/02/21816 (Hamberg) that would impermissibly
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`change its basic principles of operation.
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`D. The Board erroneously gap filled missing limitations.
`The Board erred in adopting an invalidity theory for the “generating steps”
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`recited in each challenged claim that gap-fills missing limitations based on
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`conclusory allegations concerning common knowledge of persons of ordinary skill
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`in the art.
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`6
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`E. The Board overlooked multiple admissions by Petitioner and its
`declarant.
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`The Board overlooked multiple admissions by Petitioner and its declarant in
`concluding that the proposed modification of Hamberg’s CALL ALIAS message
`would result in a conference call request that “identif[ies] each of the potential
`targets,” as recited in independent claims 1, 23 and 51 (and hence every challenged
`claim). The phrase “the potential targets” derives its antecedent basis from a
`limitation that further defines this term, in part, as including all those “participating
`in a given instant messaging session with the conference call requester.” This plain
`reading of the claim language gives rise to another fatal deficiency of the invalidity
`theory adopted by the Board. The Petition and its attached declaration both expressly
`concede that Hamberg identifies Max as participating in a text-based group chat and
`yet Max is excluded from the only example CALL ALIAS message disclosed in
`Hamberg (i.e., “CALL LISA HENRY ANN”).
`Quoting Hamberg, the Petition acknowledges that even though Figure 2 of
`Hamberg shows Max’s status as presently ABSENT, “text messages can be sent to
`him.” Petition, Paper 2 at 30 (quoting EX1005 at 4:12-15). Dr. Houh testifies that in
`the example described with reference to Figure 2 of Hamberg, Max is presently one
`of the members of group G2 participating in a chat session with the conference call
`requester: “[i]n group G1, Henry, Lisa, and John are participating in the chat session,
`and in group G2, Henry, Lisa, John, Max, and Ann are participating in the chat
`session.” See EX1003 to IPR2017-000198, p. 51; see also EX2002, 81:2-7
`(confirming the same). Dr. Houh also confirmed during his cross examination that
`Hamberg’s description of Figure 2 confirms Max is among those “participating in
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`7
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`the chat session.” EX2002 at 80:18-20. Dr. Houh further conceded that, under his
`proposed modification, the CALL ALIAS message would automatically exclude
`Max, even though Max is admittedly participating in the chat session. EX1003 p. 56
`(“In this case, a CALL ALIAS message would not include Max in the CALL ALIAS
`message because in the mobile station display Max’s status information is still set to
`‘absent.’”).
`Notwithstanding these multiple party admissions, which the Final Written
`Decision ignores, the Board improperly considered and adopted contrary arguments
`and tacit claim construction positions advanced for the first time in Petitioner’s
`Reply. Specifically, in addressing the admission that Max would still be excluded
`from the CALL ALIAS message under the proposed modification, the Final Written
`Decision summarizes the Reply as advancing the (new and contrary) argument that
`“Max may be ‘connected to said instant messaging service’ as claimed, but is not
`‘participating in a given instant messaging session,’ because he is absent and not
`responding.” Paper 17 at 31.
`Petitioner essentially advanced a new claim construction position for the first
`time in its Reply—i.e., the recitation “participating in a given instant messaging
`session with the conference call requester” excludes potential targets that receive
`messages but are not responding. As alleged support for this unreasonably narrow
`construction for the “potential targets” term, the Board cites—nothing.
`III.
`CONCLUSION
`In view of the foregoing, Patent Owner respectfully requests that the
`Director grant a rehearing and reconsider the Final Written Decision invalidating
`Claims 1, 2, 5–10, 12, 18–26, 29, 30, 36, 37, 49–53, 65, and 66 of the ’948 patent.
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`8
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`Date: May 9, 2022
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`/s/ Brett A. Mangrum
`Brett A. Mangrum
`brett@etheridgelaw.com
`Reg. No. 64,783
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`Counsel for Patent Owner
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that the foregoing was served electronically on
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`May 9, 2022 on the following counsel of record for Petitioner at the below-listed
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`email address:
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`David L. McCombs: david.mccombs@haynesboone.com
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`A copy of this request is also being sent to the Director at the following
`address:
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` Director_PTABDecision_Review@uspto.gov
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`Date: May 9, 2022
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`/Brett A. Mangrum/
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`
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`Brett A. Mangrum
`brett@etheridgelaw.com
`Reg. No. 64,783
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`Counsel for Patent Owner
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`9
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