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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`CISCO SYSTEMS, INC.,
`Petitioners
`
`v.
`
`UNILOC LUXEMBOURG S.A.
`Patent Owner
`
`Case IPR2017-00058
`Patent 7,804,948 B2
`
`PATENT OWNER’S REQUEST FOR
`REHEARING UNDER 37 C.F.R. § 42.71(D)
`
`
`
`
`
`
`
`In response to the Final Written Decision entered April 6, 2018, (Paper
`
`17, hereinafter “Decision”) and pursuant to 37 CFR § 42.71(d), Uniloc
`
`Luxembourg S.A. (“Patent Owner”) hereby respectfully requests a rehearing
`
`and reconsideration by the Patent Trial and Appeal Board (“Board”) of its Final
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`Decision finding unpatentable Claims 1, 2, 5–10, 12, 18–26, 29, 30, 36, 37, 49–
`
`53, 65, and 66. Patent Owner’s request for rehearing is based upon the
`
`following considerations.
`
`I.
`
`APPLICABLE STANDARDS
`“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
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`must specifically
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`identify all matters
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`the party believes
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`the Board
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`misapprehended or overlooked, and the place where each matter was
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`previously addressed in a motion, an opposition, or a reply.” Id. The Board
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`reviews a decision for an abuse of discretion. 37 C.F.R. §42.71(c).
`
`Claim construction is a question of law. Markman v. Westview
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`Instruments, 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370
`
`(1996). In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to their broadest reasonable construction in light of the
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`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo
`
`Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 2142 -46 (2016).
`
`2
`
`
`
`II. ARGUMENT
`
`The Board misapprehended or overlooked the fact that the relied upon
`
`obviousness combination includes a selection process that was unambiguously
`
`disclaimed during prosecution.1 More specifically, the relied upon Hamberg
`
`references uses the exact same selection process employed by the Haim reference
`
`applied during prosecution. During prosecution of the application that issued as the
`
`’948 Patent, Applicant successfully distinguished the Haims reference, at least in
`
`part, with the following remarks (which the Office ultimately found to be
`
`persuasive) concerning such selection:
`
`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.
`
`EX1002 at 80-81 (emphasis added). Thus, the intrinsic evidence unambiguously
`
`confirms, consistent with the explicit claim language, that there is a patentable
`
`
`1 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.”
`1
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`
`
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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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`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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`
`
`1
`
`
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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 n manner that is
`
`contrary to teachings further violates controlling authority. As held by the Federal
`
`Circuit, to render an invention obvious, an artisan would have to immediately
`
`envision the claimed combination. See Microsoft Corp v. Biscotti, Inc. Nos. 2016-
`
`2080, 2016-2082, 2016-2083, (Fed. Cir. Dec. 28, 2017) (Before Newman,
`
`O’Malley, and Reyna, J.) (Opinion for the court, O’Malley, J.) (Dissenting opinion,
`
`Newman, J.).2 Here, even after reading the Petition, an artisan still does not know
`
`what the alleged combination looks like.
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`
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`
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`2 http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-2080.Opinion.12-27-2017.1.PDF
`1
`
`
`
`
`III.
`
`CONCLUSION
`In view of the foregoing, Patent Owner respectfully requests that the Board
`grant a rehearing and reconsider its Final Written Decision invalidating Claims 11,
`2, 5–10, 12, 18–26, 29, 30, 36, 37, 49–53, 65, and 66 of the ‘948 patent.
`
`Date: May 4, 2018
`
`
`
`
`/s/ Brett A. Mangrum
`Brett A. Mangrum
`brett@etheridgelaw.com
`Reg. No. 64,783
`
`Counsel for Patent Owner
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that the foregoing was served electronically on
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`May 4, 2018 on the following counsel of record for Petitioner at the below-listed
`
`email address:
`
`David L. McCombs: david.mccombs@haynesboone.com
`Theodore M. Foster: ipr.theo.foster@haynesboone.com
`Dina Blikshteyn: dina.blikshteyn.ipr@haynesboone.com
`Jamie H. McDole: Jamie.mcdole@haynesboone.com
`
`Date: May 4, 2018
`
`/Brett A. Mangrum/
`
`
`
`Brett A. Mangrum
`brett@etheridgelaw.com
`Reg. No. 64,783
`
`Counsel for Patent Owner
`
`1
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