Trials@uspto.gov Paper No. 14
`Tel: 571-272-7822 Entered: December 13, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UBISOFT, INC. and SQUARE ENIX, INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01290
`Patent 6,510,466 B1
`____________
`
`
`Before MIRIAM L. QUINN, ROBERT J. WEINSCHENK, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`Tel: 571-272-7822 Entered: December 13, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UBISOFT, INC. and SQUARE ENIX, INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01290
`Patent 6,510,466 B1
`____________
`
`
`Before MIRIAM L. QUINN, ROBERT J. WEINSCHENK, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`IPR2017-01290
`Patent 6,510,466 B1
`
`
`
`
`
`
`I. INTRODUCTION
`Ubisoft, Inc. and Square Enix, Inc. (collectively, “Petitioner”) seeks
`rehearing (Paper 13, “Request” or “Req. Reh’g”) of our determination in the
`Decision on Institution (Paper 12, “Decision” or “Dec.”) not to institute an
`inter partes review of claims 1, 2, 7, 8, 15–17, 22, 23, 30, 35, and 36 (all
`challenged claims) of U.S. Patent No. 6,510,466 B1 (Ex. 1001, the
`“’466 patent”). We have considered Petitioner’s Request, but for reasons
`that follow, we decline to modify our Decision.
`
`
`II. LEGAL STANDARD
`37 C.F.R § 42.71(d) provides: “The burden of showing a decision
`should be modified lies with the party challenging the decision. The request
`must specifically identify all matters the party believes the Board
`misapprehended or overlooked, and the place where each matter was
`previously addressed in a motion, an opposition, or a reply.” In addition,
`“[w]hen rehearing a decision on petition, a panel will review the decision for
`an abuse of discretion.” 37 C.F.R. § 42.71(c).
`
`
`III. DISCUSSION
`Petitioner contends our Decision misapprehended and/or overlooked:
`1) the ‘466 patent’s disclosure of “installing” does not exclude
`“configuring”; 2) Petitioner’s proposed structure – the
`configuration operations of Figure 5 – is “clearly linked” to the
`claimed function of “installing a plurality of application
`programs on a server”; 3) the corresponding structure adopted
`by the Board – steps 112-116 of Figure 8 – does not relate to
`“installing” at all, and is not “clearly linked” to the claimed
`function; and 4) Sonderegger in view of Hughes discloses both
`the function (and method) of “installing application programs”
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`2
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`IPR2017-01290
`Patent 6,510,466 B1
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`as well as the appropriate corresponding structure from Figure 5
`as described in the ‘466 patent.
`Req. Reh’g 3–4.
`We are not persuaded that we misapprehended or overlooked any
`matter that was previously presented to us. In the Petition, Petitioner did not
`propose a specific construction for “installing” or “application program” but
`contended it “includes, for example, ‘setting up the users and software to be
`managed,’ to make the application program ‘recognized and available to
`users at clients served by the server.’” Pet. 19. Petitioner also identified
`proposed corresponding structure for the “means for installing” limitations
`in claims 15 and 16, but did not explain why such structure is clearly linked
`to the claimed function. Pet. 3, 19. We fully considered this proposed
`corresponding structure in our Decision and determined that Petitioner had
`not adequately shown it was clearly linked to the claimed function. See Dec.
`7–12.
`
`We are not persuaded that we abused our discretion in making this
`determination. For example, Petitioner now argues that “installing” does not
`exclude “configuring.” Req. Reh’g 4–6. Petitioner, however, did not
`address this issue in its Petition, as Patent Owner pointed out (Prelim. Resp.
`12). And as Petitioner acknowledges, it could have anticipated this issue
`because the Board previously found a related patent distinguished between
`installation and registration. Req. Reh’g 6 n.1 (citing Unified Patents Inc. v.
`Uniloc USA Inc., IPR2017-00184, Paper 9 at 13 (Apr. 18, 2017)). Instead,
`Petitioner identified corresponding structure that assumed the installing
`function was coextensive with configuration without explanation. Pet. 3
`(stating that block 232 of Figure 4 describes “the installation/configuration
`process” and that “the configuration/installation step at block 232 is further
`
`3
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`IPR2017-01290
`Patent 6,510,466 B1
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`detailed in” Figure 5 without elaboration); see also id. at 19 (stating that
`“installing” includes “‘setting up the users and software to be managed’ to
`make the application program ‘recognized and available to users at clients
`served by the server’” without elaboration). We could not have
`misapprehended or overlooked arguments that were not presented to us.
`Petitioner further contends we misapprehended or overlooked that its
`proposed corresponding structure for the “means for installing” limitations is
`clearly linked to the claimed function. Req. Reh’g 6–10. Petitioner’s
`arguments in this regard are premised on its argument that configuration
`operations are the same as “installing.” Id. at 7–8. Petitioner also contends
`that the ’466 patent “specifically states that installing software (i.e.,
`application programs) on a server is accomplished by defining the software
`to the database on the server.” Id. at 8 (citing Ex. 1001, 8:60–64). Again,
`these are arguments that were not made in the Petition, and therefore, we
`could not have misapprehended or overlooked them. See Pet. 3 (referring
`only to “configuration/installation” without elaboration); id. at 19 (stating
`that “installing” includes “‘setting up the users and software to be managed’
`to make the application program ‘recognized and available to users at clients
`served by the server’” without elaboration).
`Petitioner also contends that the structure identified in our Decision is
`not clearly linked to the recited installing function. Req. Reh’g 10–11. We
`need not address these arguments because even if correct, they would not
`change the outcome of our Decision as to claims 15–17, 22, 23, 30, 35, and
`36. In particular, if none of Patent Owner’s proposed corresponding
`structure is clearly linked to the claimed function, then we would be left with
`no corresponding structure identified by either party. In the absence of
`
`4
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`IPR2017-01290
`Patent 6,510,466 B1
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`corresponding structure, we are not free to treat the “means for installing”
`limitations as if they were purely functional limitations. See IPCom GmbH
`& Co. v. HTC Corp., 861 F.3d 1362, 1371 (Fed. Cir. 2017), as corrected
`(Aug. 21, 2017). Thus, even if neither party identified proper corresponding
`structure, we would still deny institution of claims 15–17, 22, 23, 30, 35, and
`36.
`
`
`
`Finally, Petitioner contends that we misapprehended or overlooked
`that “Sonderegger in view of Hughes discloses ‘installing’ as described in
`the ‘466 patent.” Req. Reh’g 12. Specifically, Petitioner relies on its
`arguments discussed above (id. at 12–13), which we have found are not
`properly made on rehearing. Petitioner further argues that Sonderegger
`“expressly discloses that the application programs themselves (i.e., the code
`associated with underlying application program functions) are stored on a
`network drive accessible to the database server on which the application
`objects are stored.” Id. at 13–14. While Petitioner points to portions of
`Sonderegger it cited in the Petition (id. at 13–15), it does not show that it
`ever made such a contention in the Petition.
`As we noted in our Decision, claim 1 is a method claim and so is not
`limited to the corresponding structure required for claims 15 and 16. Dec.
`15. Petitioner’s analysis of the “installing” limitation of claim 1 in the
`Petition referred only to its analysis of the means-plus-function limitation of
`claim 15. Pet. 15. For that limitation, Petitioner stated that Sonderegger
`performed the “installing” function “by configuring the users and application
`programs to be managed by a server 14 through a set of application
`management routines 48, thereby making application programs available to
`appropriate users or groups.” Id. at 19 (citing Ex. 1002, 4:66–5:6, 7:11–20,
`
`5
`
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`IPR2017-01290
`Patent 6,510,466 B1
`
`11:3–21, Figs. 1, 2). Petitioner included a block quote from Sonderegger at
`7:11–20, and emphasized portions discussing application objects and in
`particular adding application objects to a database to make application
`programs available to network administrators and users. Id. (quoting Ex.
`1002, 7:11–20). Petitioner did not provide explanation or argument as to its
`other citations to Sonderegger. Id. Petitioner had the burden to show a
`reasonable likelihood that Petitioner would prevail with respect to at least
`one challenged claim. Even if Petitioner is now correct in its arguments
`about Sonderegger’s teachings, we did not abuse our discretion because such
`arguments were not made in the Petition.
`
`
`IV.CONCLUSION
`Having considered Petitioner’s Request, Petitioner has not persuaded
`us, for the reasons discussed, that our Decision should be modified.
`
`
`V. ORDER
`
`Accordingly, it is:
`ORDERED that the Request for Rehearing is denied.
`
`
`
`
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`6
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`IPR2017-01290
`Patent 6,510,466 B1
`
`PETITIONER:
`
`Eric A. Buresh
`Mark C. Lang
`Kathleen D. Fitterling
`ERISE IP, P.A.
`eric.buresh@eriseip.com
`mark.lang@eriseip.com
`kathleen.fitterling@eriseip.com
`
`
`PATENT OWNER:
`
`Brett Mangrum
`Ryan Loveless
`ETHERIDGE LAW GROUP
`brett.mangrum@unilocusa.com
`ryan@etheridgelaw.com
`
`Sean Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`
`7
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