UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`AMAZON.COM, INC., AMAZON DIGITAL SERVICES, INC., AMAZON
`FULFILLMENT SERVICES, INC., HULU, LLC, and NETFLIX, INC.,
`Petitioners
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
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`IPR2017-00948
`PATENT 8,566,960
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`PATENT OWNER’S REPLY FOR CONTINGENT MOTION TO
`AMEND CLAIMS 1, 22, and 25 OF U.S. PATENT NO. 8,566,960
`UNDER 37 C.F.R. § 42.121
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`

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`Patent Owner’s Reply ISO its Contingent Motion to Amend
`IPR2017-00948, U.S. Patent 8,566,960
`TABLE OF CONTENTS
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`1
`1
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`2
`3
`7
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`9
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`12
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`14
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`I.
`INTRODUCTION
`THE AMENDMENT DOES NOT ENLARGE CLAIM SCOPE
`II.
`III. PETITIONER FAILS TO PROVE THE AMENDED CLAIMS
`ARE NOT PATENTABLE OVER THE CITED ART
`A.
`The conditional “temporarily adjust” limitations
`B.
`The multifaceted “request” limitations
`C.
`The conditional “determin[ing] whether the device identity is
`currently on a record” limitations
`IV. THE AMENDMENT DOES NOT INJECT ELIGIBILITY
`ISSUES
`THE AMENDMENT DOES NOT INJECT INDEFINITNESS
`ISSUES
`
`V.
`
`
`LIST OF EXHIBITS
`
`
`Description
`
`Declaration of Dr. Val DiEuliis (previously filed)
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`Petitioner’s Motion before the District Court (previously filed)
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`Dr. Rubin’s Deposition Transcript (previously filed)
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`U.S. Application Serial No. 12/272,570 or “the ’570
`Application” (previously filed)
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`U.S. Application Serial No. 60/988,778 or “the ’778
`Application” (previously filed)
`
`Exhibit No.
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`2001
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`2002
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`2003
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`2004
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`2005
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`ii
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`Patent Owner’s Reply ISO its Contingent Motion to Amend
`IPR2017-00948, U.S. Patent 8,566,960
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`I.
`
`INTRODUCTION
`The Motion (Paper 17 or “Mot.”) should be granted because (1) it is
`uncontested that the amendment is adequately supported; (2) it is uncontested that
`the amendment responds to a ground of unpatentability in the trial; (3) Petitioner’s
`party admissions confirm that the amendment does not enlarge claim scope; and (4)
`Petitioner has not met its burden to prove unpatentability of the substitute claims.1
`
`II. THE AMENDMENT DOES NOT ENLARGE CLAIM SCOPE
`Petitioner’s sole challenge to the Motion itself is that the amendment is
`allegedly broadening because it removes claim language originally recited in the
`“verify[ing]” limitations. Paper 19 (“Opp.”) at 22. However, Petitioner’s former
`party admissions undermine its interpretation of the scope of the substitute claims.
`The Board observed in its Institution Decision that the Petition essentially
`interprets the original “verify[ing]” limitations as “set[ing] forth a test” that
`encompasses determining whether the “device identity” is on a “record” as
`claimed. See Paper 10 at 8, 10. The substitute claims make this “determining” an
`additional and explicit requirement. Thus, Petitioner’s acknowledgment of
`structure encompassed by the original claims confirms that the substitute claims
`are not broader in scope. See Lavergne v. Concrete, 899 F.2d 1228 (Fed. Cir. 1990)
`(“claims are broadened if it is possible to read those claims on structures that could
`not have been covered by the original claims, … a situation that does not here
`
`1 See Aqua Products, Inc. v. Matal, 872 F.3d 1290, 1305-06 (Fed. Cir. 2017) (“Aqua
`Prod.”) (holding that once the patent owner establishes that its amendment is non-
`broadening, supported, and responsive to a ground already at issue, the petitioner
`must satisfy its burden to prove the amended claims are not patentable).
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`1
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`Patent Owner’s Reply ISO its Contingent Motion to Amend
`IPR2017-00948, U.S. Patent 8,566,960
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`prevail”). Arcelormittal France v. AK Steel Corp., 786 F.3d 885, 891-92 (Fed. Cir.
`2015) (in reissue proceedings, an amendment is not broadening when it recites
`adjudicated scope of the original claims).
`It is also significant, and narrowing in scope, that the “determin[ing]”
`limitations are recited in addition to the “verify[ing]” limitations and must be “in
`response to the license data being verified as valid”. In addressing the original
`claim language, a dispute arose as to whether “[verify/verifying] that a license data
`associated with the digital product is valid” requires deeming the “license data” to
`be “valid.” Paper 10 at 10-11. The newly-added limitation “in response to the
`license data being verified as valid” makes such a requirement explicit as a
`condition precedent to the additional “determin[ing]” limitations, thereby expressly
`interrelating the “verify[ing]” and “determin[ing]” limitations and further ensuring
`the substitute claims are not broader in scope.
`
`III. PETITIONER FAILS TO PROVE THE AMENDED CLAIMS ARE
`NOT PATENTABLE OVER THE CITED ART
`Petitioner dedicates a scant portion of its Opposition to address its burden of
`proving unpatentability based on the cited references. The short-shrift analysis does
`not even purport to address the entirety of the claim language on an element-by-
`element basis, as is required. Rather, the Opposition admittedly focuses on alleged
`“differences between the original and substitute claims” ostensibly “[b]ecause the
`motion assumes that all features of the original claims were known in and/or not
`patentably distinct over the prior art.” Opp. 12. However, Uniloc’s Motion does not
`concede that the original claims recite no patentable features; and Petitioner provides
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`Patent Owner’s Reply ISO its Contingent Motion to Amend
`IPR2017-00948, U.S. Patent 8,566,960
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`no citation to suggest otherwise. On the contrary, the Motion emphasizes how certain
`claim amendments clarify the meaning of patentable claim language recited in the
`original claims. For example, the Motion explains in detail how the recitation
`“temporarily adjust the allowed copy count from its current number to a different
`number by setting the allowed copy count to a first upper limit for a first time period”
`further defines the patentable “set[ting]” limitations recited in the original claims.
`See, e.g., Paper 17 (Motion) at 9-15. The deficiencies of the Opposition identified
`herein apply in general to all substitute claims 26, 27, and 28.
`
`A. The conditional “temporarily adjust” limitations
`Petitioner fails to prove that the cited references render obvious the recitation
`“in response to the device identity not currently being on the record, temporarily
`adjust the allowed copy count from its current number to a different number by
`setting the allowed copy count to a first upper limit for a first time period ….”
`Petitioner does not purport to address this specific claim language in its Opposition.
`Instead, Petitioner relies exclusively on DeMello as allegedly disclosing that
`“[w]hen a device is not in the record of activated devices, the disclosed process
`proceeds to determine what device limit to apply and if that device limit has been
`met.” Reply at 17 (citing EX1003 at 22:51-56). Petitioner cannot prove obviousness
`by addressing something other than what the amended claims recite.
`Moreover, Petitioner’s primary citation to DeMello teaches away from the
`claimed conditional and temporary adjustment by disclosing that “an error message
`is rendered” if the preestablished limit has been reached:
`
`Next, it is determined at step 164 if this is a new activation for the
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`Patent Owner’s Reply ISO its Contingent Motion to Amend
`IPR2017-00948, U.S. Patent 8,566,960
`reader (as opposed to a “recovery” of a prior activation). [¶] If it is
`determined that this is a new activation at step 164, then the
`process proceeds to step 168 to determine whether an activation
`limit has been reached. If the limit has been reached, then an error
`message is rendered at step 172, preferably including a support
`telephone number. The process then ends at step 198.
`EX1003, 21:51-59. Nothing in the above passage even remotely resembles
`“temporarily [adjust/adjusting] the allowed copy count from its current number to a
`different number by setting the allowed copy count to a first upper limit for a first
`time period,” let alone doing so “in response to the device identity not currently
`being on the record”. See EX2001 ¶¶ 74-75.
`
`Petitioner next alleges that “DeMello further teaches that the device limit can
`be changed over time.” Opp. at 17. This too is inapposite. The claim language at
`issue does not recite adjusting the “allowed copy count” over time, much less doing
`so in accordance with a predetermined and fixed schedule. Rather, the claimed
`temporary adjustment of “the allowed copy count from its current number to
`different number” is responsive to a determination that “the device identity not
`currently being on the record,” which is an event that may randomly, if ever, occur.
`
`Lastly, Petitioner mischaracterizes DeMello as teaching that, after a
`predetermined 90-day period has expired, the activation server(s) 94 purportedly
`wait to change a user’s device limit until the user requests access from a device that
`was not on record. Opp. at 17-18. The only citation provided for this fundamental
`rewrite of DeMello is paragraph 56 from the supplemental declaration of Dr. Rubin.
`Id. (citing EX1031 ¶ 56). That paragraph merely restates (verbatim) the same
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`Patent Owner’s Reply ISO its Contingent Motion to Amend
`IPR2017-00948, U.S. Patent 8,566,960
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`conclusory and incorrect characterization of DeMello. Compare Opp. at 17 with
`EX1031 ¶ 56. The lack of citation to DeMello in either the Opposition or the attached
`declaration is telling. Petitioner cannot meet its burden in the absence of any
`evidentiary proof of a conclusory statement. See Gracenote, Inc. v. Iceberg Ind. LLC,
`IPR2013-00552 (Paper 6) at 20-21 (PTAB March 7, 2014) (finding it insufficient
`when an expert merely stated that a prior art system must operate in the same manner
`as the claim without providing any evidentiary proof) (citing 37 C.F.R. §
`42.22(a)(2), 37 C.F.R. § 42.104(b)(4), Office Patent Trial Practice Guide, 77 Fed.
`Reg. at 48763, and Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2013-00027 (Paper
`16), 4-5 (PTAB June 24, 2013)).
`rebut Petitioner’s unsupported
`to
`
`Uniloc
`is under no obligation
`characterization of DeMello. Nevertheless, Uniloc submits that DeMello not only
`fails to inherently disclose, but also expressly contradicts the mischaracterization
`offered by Petitioner and echoed by its declarant. This is because DeMello relies on
`a predetermined and static schedule of activation limits. For example, DeMello
`teaches that its limit on activations “allow[s] for additional activations as time
`passes—e.g., one additional activation for each 90 day period after the first 90 days.”
`EX1003, 23:4-6 (emphasis added); see also 2:61-65 (“the number of devices that a
`particular persona may activate may be limited by rate and or by number (e.g., five
`activations within a first 90 day period, followed by an additional activation for
`every subsequent 90 day period, up to a maximum of ten activations).”). These
`teachings confirm that DeMello’s implementation of “additional activations” is
`exclusively time-dependent and based on a fixed and predetermined schedule—i.e.,
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`Patent Owner’s Reply ISO its Contingent Motion to Amend
`IPR2017-00948, U.S. Patent 8,566,960
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`“one additional activation” is made available immediately after a predetermined
`amount of time has expired, regardless whether an additional activation is requested.
`
`Figure 8 of DeMello further confirms a
`lack of the claimed temporal and conditional
`adjustment. As shown in the relevant portion of
`Figure 8, copied to the right, there is no
`conditional and temporal adjustment of an
`allowed copy count interposed between the
`determination of whether “this is a New
`Activation for this Reader” (step 164) and the
`determination of whether
`the “user [has]
`activated over 5 Readers in 90 days” (step 168).
`These example passages in DeMello (among others) confirm that the mere
`passage of time and a prefixed schedule dictates when additional activations are
`allowed. This is distinguishable on its face from the claimed temporary adjustment
`that is responsive to the claimed determination which may randomly, if ever, occur.
` Notably, Petitioner does not dispute (or even address) the previously-raised
`fact that the conditional, “cause-and-effect” aspect of the “set[ting]” limitations was
`successfully distinguished during prosecution over art (like DeMello) that, instead,
`only increases limits according to a preset schedule. Mot. at 15.
`Hu does not cure the deficiency of DeMello concerning the claimed temporary
`adjustment that is responsive to the claimed determination, as recited in the
`substitute claims. Petitioner does not argue otherwise in its Opposition. Rather, the
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`Patent Owner’s Reply ISO its Contingent Motion to Amend
`IPR2017-00948, U.S. Patent 8,566,960
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`Petitioner cites to Hu only when addressing other claim limitations. Opp. 13-16.
`Accordingly, Petitioner has not met its burden to prove the DeMello and Hu
`references, either alone or in combination, render obvious the recitation “in response
`to the device identity not currently being on the record, temporarily adjust the
`allowed copy count from its current number to a different number by setting the
`allowed copy count to a first upper limit for a first time period”.
`
`B.
` The multifaceted “request” limitations
`Petitioner also fails to prove obviousness of a received “request for
`authorization to use the digital product” that includes both the “license data
`associated with the digital product” and the “device identity”.
`Petitioner appears to rely on DeMello’s PASSPORT ID and Hardware ID as
`allegedly disclosing the claimed “license data” and “device identity,” respectively.
`Paper 1 (Petition or “Pet.”) at 27-28; Opp. 13. Petitioner does not contest in its
`Opposition, however, that DeMello fails to disclose or suggest providing both the
`PASSPORT ID and the Hardware ID in a “request for authorization to use the digital
`product” as claimed. Opp. 13. Petitioner argues Hu cures this conceded deficiency
`by allegedly disclosing that “[w]hen the user requests authorization to run licensed
`software on a device—such as a computer—the device sends account authentication
`information to the server together with a ‘computer_id.’” Opp. at 14 (citing EX 1026
`(Hu) at 6:31-39 and EX1031 at ¶ 35).
`
`Petitioner’s reliance on Hu is misplaced, however, at least because Petitioner
`fails to prove that Hu’s “account authentication information” (1) is “license data”
`and (2) is “associated with a digital product” as claimed. At most, Petitioner alleges
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`Patent Owner’s Reply ISO its Contingent Motion to Amend
`IPR2017-00948, U.S. Patent 8,566,960
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`that “the user account [in Hu] is associated with a software license” and that “the
`user account is also associated with user account authentication information.”
`Petitioner’s characterization of Hu is irrelevant, regardless whether it is correct (and
`Uniloc does not concede that it is). Nothing in the intrinsic evidence supports
`construing “license data associated with the digital product” to mean anything
`allegedly associated, instead, with a user account. Petitioner has the burden of proof,
`yet it provides no evidentiary basis supporting such an untethered construction.
`Another fatal flaw in Petitioner’s apparent reasoning is that Hu’s so-called
`“computer_id” would also constitute “license data associated with the digital
`product” to the extent the “computer_id” is also associated with the user account.
`The explicit distinction in the claim language between the terms “license data
`associated with the digital product” and the “device identity” further proscribes such
`an untethered interpretation of the claim language at issue.
`The Opposition also fails to address the fact that DeMello’s explicit teachings
`would have led a POSITA away from the proposed combination with Hu. Polaris
`Indus., Inc. v. Arctic Cat, Inc., __ F.3d __, No. 2016-1807, 2018 WL 797462, at *9
`(Fed. Cir. Feb. 9, 2018) (remanding a finding of obviousness where the panel
`disregarded explicit teachings in the primary reference that would have led a
`POSITA “in a direction divergent from the path that was taken by the applicant.”).
`DeMello teaches that its system is specifically designed to first authenticate
`PASSPORT credentials and, only if authentication is confirmed, thereafter upload a
`hardware ID. Mot. 16. EX1003 at 22:44-53 (“Once user’s PASSPORT™ credentials
`are authenticated (step 156), a PASSPORT™ API is queried for the user alias and
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`Patent Owner’s Reply ISO its Contingent Motion to Amend
`IPR2017-00948, U.S. Patent 8,566,960
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`e-mail address (step 158). Thereafter, at steps 160-162, the activation servers 94
`will request that the client (via the ActiveX control) upload a unique hardware ID
`….”) (emphasis added); see also Mot. 16 (quoting the same); EX1003, 2:56-60
`(reemphasizing the importance of first implementing authentication).
`Accordingly, Petitioner has not met its burden to prove obviousness, based on
`the proposed combination of DeMello with Hu, for a received “request for
`authorization to use the digital product” that includes both the “license data
`associated with the digital product” and the “device identity”.
`
`C. The conditional limitations “in response to …, determin[ing]
`whether the device identity is currently on a record”
`Petitioner fails to prove obviousness for the recitation “in response to the
`license data being verified as valid, [determine / determining] whether the device
`identity is currently on a record.” In the substitute claims “the device identity” has
`antecedent basis in the “request for authorization to use the digital product,” which
`defines “the device identity” as being “generated at the given device at least in part
`by sampling physical parameters of the given device”.
`Petitioner’s Opposition leaves uncontested the following demonstrable facts:
`(1) “DeMello’s Machine ID … is not ‘generated at the given device’ and included
`within ‘a request for authorization to use the digital product’ (together with ‘license
`data associated with the digital product’)” (Mot 18; see also Opp. 15); (2) DeMello
`discloses only its “activation server creates a ‘unique machine ID’” (Mot. 18,
`quoting Petitioner’s party admission in the Petition (Paper 1) at 28); and
`(3) “DeMello’s repository search for a server-generated Machine ID fails to
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`Patent Owner’s Reply ISO its Contingent Motion to Amend
`IPR2017-00948, U.S. Patent 8,566,960
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`disclose, and rather teaches away from, the recited determination involving, instead,
`“a device identity generated at the requesting device” (id.).
`Petitioner’s reliance on Hu’s “computer_id” suffers from the same teach-away
`flaws Uniloc identified in the previously-proposed combination with Staruila (which
`is a reference that Petitioner abandons its in Opposition, evidently due to the same
`teach-away argument that still applies here). See Mot. 18-19. Regardless whether Hu
`discloses its “computer_id” is “generated at the given device” as claimed, and Uniloc
`does not conceded that it does, its incorporation into DeMello’s system would reach
`the same distinguishable result—i.e., the server computes a Machine ID based on
`what it receives (e.g., DeMello’s Hardware ID or, under the proposed combination,
`Hu’s computer_id); and the server-generated Machine ID is then used to perform
`the repository search. Thus, the combination with Hu (like the abandoned
`combination with Staruila) would still fail to render obvious a “device identity
`generated at the requesting device” that is received in a “request for authorization to
`use the digital product” and applied in “determining whether the device identity [i.e.,
`the one that is received] is currently on a record.” Id.
`Petitioner has not avoided this express teach away with its hindsight argument
`that a POSITA would somehow be motivated to “forgo[]” DeMello’s admitted
`teachings that the activation server creates a unique machine ID and thereafter
`requires it for various functions. Opp. 15.2 Petitioner attempts to justify this
`
`2 Petitioner inconsistently argues, for the first time in its Opposition, that “some
`embodiments in DeMello” allegedly disclose “forgoing” generating a machine ID
`from the hardware ID. Opp. 15-16. The only alleged evidentiary support Petitioner
`cites is paragraph 48 from the supplemental declaration (Ex. 1031). That paragraph
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`Patent Owner’s Reply ISO its Contingent Motion to Amend
`IPR2017-00948, U.S. Patent 8,566,960
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`acknowledged departure from the four corners of DeMello as allegedly motivated
`by simplification. This alleged motivation is illusory at least because (1) DeMello
`identifies the generation and application of its server-generated machine ID as part
`of “the required information” and thus its exclusion would produce an inoperative
`result;3 (2) nothing in DeMello suggests the required Machine ID is an
`overcomplicated design flaw;4 and (3) given how prominently the server-generated
`Machine ID is featured in the disclosure, there would not have been sufficient
`motivation for omitting it altogether.5
`
`
`does not purport to identify any portion of DeMello as allegedly disclosing an
`embodiment that does not require the server to generate a machine ID from the
`hardware ID and then apply the server-generated machine ID (e.g., to search the
`repository). There simply is no such disclosure in the four corners of DeMello; and
`the Opposition fails to prove otherwise.
`3 See, e.g., EX1003, 13:61-66; 14:13-15; 23:23-25, 49-50; 25:5-7; 30:1-3 (list
`Machine ID as part of “all the required information”); 30:13 (“the computed
`machine ID”); 31:33 (including “MachId” within the “UserDevices Table”); etc.
`(emphasis added); see also In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1382
`(Fed. Cir. 2007) (“a reference teaches away from a combination when using it in that
`combination would produce an inoperative result.”).
`4 In re Omeprazole Patent Litigation, 536 F.3d 1361 (Fed. Cir. 2008) (affirming a
`finding of nonobviousness because the alleged flaw in the prior art that ostensibly
`prompted the modification had not been recognized in the art itself.)
`5 To the extent it even merits a note, Petitioner offers an irrelevant and conclusory
`argument that the motivation to “forgo[]” DeMello’s Machine ID allegedly arises
`from commonly-known alternative ways (extraneous to the cited references) to
`protect user privacy. Opp. 15; cf. In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970)
`(common knowledge can be relied upon when the asserted commonly known facts
`are “capable of such instant and unquestionable demonstration as to defy dispute.”).
`DeMello does not identify user privacy as a purpose, let alone the sole purpose, for
`its server-generated Machine ID in particular; and neither Petitioner nor its declarant
`provide any citation to DeMello to conclude otherwise.
`
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`Patent Owner’s Reply ISO its Contingent Motion to Amend
`IPR2017-00948, U.S. Patent 8,566,960
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`Accordingly, Petitioner has not proven obviousness for the recitation “in
`response to the license data being verified as valid, [determine / determining]
`whether the device identity is currently on a record.”
`
`IV. THE AMENDMENT DOES NOT INJECT ELIGIBILITY ISSUES
`Evidently recognizing the weakness of its patentability challenge, Petitioner
`opens its Opposition brief with an irrelevant nine-page challenge based, instead, on
`alleged ineligibility under the Mayo/Alice judicial exception of abstractness to § 101.
`However, once the Board determines Uniloc’s amendment is narrowing, the
`proposed substitute claims could not then inject such an eligibility issue here.
`It is axiomatic that a claim that is narrowed by amendment in an IPR
`proceeding has a narrower preemptive scope (i.e., it is less abstract). Because
`Petitioner chose to file an IPR instead of a CBM, Petitioner could not have raised
`a challenge under § 101 against the broader original claims. It follows that the
`statutory exclusion of a Mayo/Alice abstractness challenge from this IPR proceeding
`necessarily applies to narrower amended claims. 35 U.S.C. § 311(b); see also Secure
`Axcess, LLC v. PNC Bank Nat'l Ass'n, 848 F.3d 1370, 1379 (Fed. Cir. 2017)
`(Congress carefully set out limits on the inter partes review (‘IPR’) program for
`review of patents after issuance. Persons sued for infringement … were restricted to
`presenting only certain §§ 102 and 103 grounds of unpatentability, thus excluding
`grounds based on, for example, § 101 or § 112.”) (emphasis added).
`The lead opinion in Aqua. Prod. is instructive here:
`
`The structure of an IPR does not allow the patent owner to inject a
`wholly new proposition of unpatentability into the IPR by
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`Patent Owner’s Reply ISO its Contingent Motion to Amend
`IPR2017-00948, U.S. Patent 8,566,960
`proposing an amended claim. The patent owner proposes an
`amendment that it believes is sufficiently narrower than the
`challenged claim to overcome the grounds of unpatentability upon
`which the IPR was instituted. When the petitioner disputes
`whether a proposed amended claim is patentable, it simply
`continues to advance a “proposition of unpatentability” in an “inter
`partes review instituted under this chapter.” 35 U.S.C. § 316(e).
`Aqua Prod., 872 F.3d at 1306 (emphasis original).
`Petitioner cites to IPR decisions predating Aqua Prod. to argue that when a
`patent owner files a motion to amend in an IPR it has the burden of demonstrating
`eligibility under § 101. See Opp. at 1 (citing Ariosa Diagnostics v. Isis Innovation
`Ltd., IPR2012-00022 (Paper 166) at 50-53 (PTAB Sept. 2, 2014)). Ariosa relies on
`(and indeed expands on) the erroneous holding in Idle Free Sys.6 (a decision
`expressly rejected by Aqua. Prod.7) to hold that because a patent owner has the
`burden of persuasion in a motion to amend, it must address § 101.8 Aqua Prod.
`squarely rejected this notion. The only grounds for unpatentability to which a motion
`to amend must respond are those “involved in the trial.” 37 C.F.R. § 42.121. For this
`IPR trial, those grounds do not include the abstractness exception to § 101.9,10
`
`6 IPR2012-00027 (Paper 26) at 3-9 (PTAB June 11, 2013).
`7 Aqua Prod., 872 F.3d 1290, 1301.
`8 Ariosa, IPR2012-00022 (Paper 166) at 50-53 (holding that although a “challenge
`brought by a petitioner” in an IPR cannot be based on § 101, a motion to amend in
`an IPR must address § 101 because it is not a “challenge brought by the petitioner”
`but is instead a motion under which the patent owner has the burden of persuasion).
`9 It follows that Uniloc had no duty to disclose an irrelevant and appealed district
`court opinion addressing eligibility (not patentability) of the broader original claims.
`10 Petitioners also argue Uniloc failed to meet its “burden of production” with respect
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`Patent Owner’s Reply ISO its Contingent Motion to Amend
`IPR2017-00948, U.S. Patent 8,566,960
`V. THE AMENDMENT DOES NOT INJECT INDEFINITNESS ISSUES
`The Board should also reject Petitioner’s indefiniteness challenge of the
`recitation “verify that the license data associated with the digital product is valid”
`because that language is not introduced by amendment but rather appears verbatim
`in the issued claims. 35 U.S.C. § 311(b); Secure Axcess, 848 F.3d at 1379 (holding
`the statutory limits on IPR proceedings exclude grounds based on indefiniteness);
`Toyota Motor Corp. v. Blitzsafe Texas, LLC, IPR2016-00422 (Paper 12) at 28
`(PTAB Jul. 6, 2016) (“Petitioner may not, however, in an inter partes review,
`assert a ground of unpatentability based on indefiniteness under 35 U.S.C. § 112,
`para. 2.”). Indeed, the Board will refuse to institute an IPR if it determines that a
`term or phrase in a challenged claim is indefinite. See, e.g., Amazon.com, Inc. v.
`AC Techs. S.A., IPR2015-01801 (Paper 10) at 14-15 (PTAB Mar. 8, 2016).
`In any event, Petitioner undermines its improper indefiniteness challenge
`by submitting arguments and an accompanying supplemental declaration that
`purport to apply the recitation “verify that the license data associated with the
`digital product is valid” without any expressed degree of difficulty. See EX1031 ¶
`51; see also EX2001 ¶¶ 2, 29, 56-61; Sonix Tech. Co. v. Publications Int'l, Ltd.,
`844 F.3d 1370, 1380 (Fed. Cir. 2017) (holding that application of claim language
`by an expert opining on patentability “provide[s] evidence that a skilled artisan
`did understand the scope of the invention with reasonable certainty.”).
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`to eligibility under § 101. Even if Uniloc bears a “burden of production,” a notion
`strongly criticized by the lead opinion in Aqua Prod., that burden does not require
`Uniloc to demonstrate eligibility under § 101. The burden of production argued for
`in Judge Reyna’s concurring opinion was merely a reference to the requirements of
`§ 316(d) and 37 C.F.R. § 42.121. Aqua Products, 872 F.3d at 1335.
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`14
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`Date: March 14, 2018
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`Patent Owner’s Reply ISO its Contingent Motion to Amend
`IPR2017-00948, U.S. Patent 8,566,960
`Respectfully submitted,
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`/s/ Brett A. Mangrum
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`Brett A. Mangrum
`Reg No. 64,783
`brett@etheridgelaw.com
`Jeffrey Huang
`Reg. No. 68,639
`jeff@etheridgelaw.com
`Counsel for Patent Owner
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`15
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`Patent Owner’s Reply ISO its Contingent Motion to Amend
`IPR2017-00948, U.S. Patent 8,566,960
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the foregoing as served electronically
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`via e-mail on the date below on the following counsel for Petitioner:
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`Daniel T. Shvodian: DShvodian@perkinscoie.com
`Sarah E. Stahnke: SStahnke@perkinscoie.com
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`for AMAZON.COM,
`Attorneys
`AMAZON
`DIGITAL
`INC.,
`SERVICES,
`INC., AMAZON
`FULFILLMENT SERVICES, INC.,
`HULU, LLC, and NETFLIX, INC.
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`Date: March 14, 2018
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`Respectfully submitted,
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`By: /s/ Brett A. Mangrum
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`Brett A. Mangrum
`Reg No. 64,783
`brett@etheridgelaw.com
`Jeffrey Huang
`Reg. No. 68,639
`jeff@etheridgelaw.com
`Counsel for Patent Owner
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