Trials@uspto.gov Paper No. 10
`Tel: 571-272-7822 Entered: November 16, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BITDEFENDER INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01315
`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: November 16, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BITDEFENDER INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01315
`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
`
`
`
`
`IPR2017-01315
`Patent 6,510,466 B1
`
`
`
`
`
`
`I. INTRODUCTION
`BitDefender Inc. (“Petitioner”) seeks rehearing (Paper 9, “Request” or
`“Req. Reh’g”) of our determination in the Decision on Institution (Paper 7,
`“Decision” or “Dec.”) not to institute an inter partes review of claims 15–
`17, 22–24, 30, and 35–37 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 the relationship
`between the holding in In re Katz and the ‘means for installing’ limitations
`of claims 15 and 16.” Req. Reh’g 1. Petitioner further contends in
`identifying corresponding structure for the “means for installing” limitations,
`our Decision overlooked that the ’466 patent distinguishes between
`installing and distributing. Id. Thus, Petitioner contends that “means for
`installing” falls within the Katz exception, and if it does not, the ’466 patent
`
`2
`
`
`
`
`
`
`
`IPR2017-01315
`Patent 6,510,466 B1
`
`specification contains no structure corresponding to that limitation.” Id. at
`1–2. For reasons that follow, we decline to modify our Decision.
`In the Petition, Petitioner argued that “means for installing” fell within
`the exception in Katz, such that a general purpose computer by itself could
`be the corresponding structure for that limitation. Pet. 19–20, 31. We fully
`considered this argument in our Decision and determined that Petitioner had
`not adequately shown “installing a plurality of application programs at the
`server,” as recited in the ’466 patent claims, falls within the Katz exception.
`See Dec. 10–11.
`As we noted in our Decision (Dec. 11), the Federal Circuit has
`characterized the exception in Katz as a “narrow” one, in which “a
`microprocessor can serve as structure for a computer-implemented function
`only where the claimed function is ‘coextensive’ with a microprocessor
`itself” (i.e., where the claimed function is a “basic function[] of a
`microprocessor”). EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785
`F.3d 616, 621–22 (Fed. Cir. 2015). In its Request, Petitioner contends that
`contrary to a statement in our Decision (Dec. 11), it provided “evidence and
`factually-supported explanation for the argument that ‘installing a plurality
`of application programs’ in the context of the ‘466 patent is a basic function
`of a microprocessor.” Req. Reh’g 6. In particular, Petitioner contends
`“[t]he Petition pointed out that the ‘466 Examiner interpreted installing as
`storing, and storing is a basic function squarely within the In re Katz
`exception.” Id.; see also id. at 11 (stating that “storing is a basic function
`that comes squarely within the In re Katz exception” and arguing that the
`functions in other cases cited in our Decision were “complex”). Petitioner
`further contends it “pointed to specification passages that distinguish
`
`3
`
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`IPR2017-01315
`Patent 6,510,466 B1
`
`installing from registering/configuring, and at least some of the cited
`passages also expressly distinguish installing from distributing.” Id. at 6.
`We did not overlook any arguments in the Petition. Specifically, the
`Petition cited two office actions as showing “[i]nstalling was interpreted
`during the prosecution of the ‘466 patent, under the BRI standard, as storing,
`an interpretation that was not contested by the patent applicant.” Pet. 18
`(citing Ex. 1002 (File History) Office Action mailed 08/13/2001 at 2, Office
`Action mailed 2/22/2002 at 2). In each of those office actions, the Examiner
`mapped a reference’s teachings to the claim language in an obviousness
`rejection and applied “installing (storing)” as part of that rejection. Ex. 1002
`(File History) Office Action mailed Aug. 13, 2001, at 2; Office Action
`mailed Feb. 22, 2002, at 2. In these Office Actions, the Examiner did not
`engage in detailed claim construction analysis of “installing” or determine
`that such “installing” was a basic function of a microprocessor. Thus citing
`to these Office Actions in the Petition did not provide evidence or factually-
`supported explanation to support Petitioner’s argument that “installing” in
`the context of the ’466 patent claims is a basic function of a
`microprocessor.1
`
`
`
`1 We note that in discussing prior systems, the ’466 patent suggests that
`installing encompasses more than mere storing of data: “To the extent
`software distribution capabilities from a central location are provided, such
`as with the TME 10TM system, they typically require various steps in the
`installation process to occur at different locations rather than allowing the
`entire process to be controlled from a single point for an entire managed
`network environment.” Ex. 1001, 3:31–36 (emphasis added). As shown in
`the quotation above, the ’466 patent contemplates that installation is a
`process requiring multiple steps.
`
`4
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`IPR2017-01315
`Patent 6,510,466 B1
`
`
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`We further observe that although Petitioner contends in its Petition
`installing does not include configuring (registering), it did not contend that
`installing does not include distributing. See Pet. 18. We are not persuaded
`that we overlooked any argument or evidence showing that the recited
`“installing a plurality of application programs at the server” is a basic
`function of a microprocessor. Accordingly, we determine we did not abuse
`our discretion in declining to adopt Petitioner’s proposed corresponding
`structure.
`The remainder of Petitioner’s arguments on rehearing are devoted to
`contending the corresponding structure we identified in our Decision from
`among those proposed by the Patent Owner is incorrect. Req. Reh’g 6–11.
`We need not address these arguments because even if correct, they would
`not change the outcome of our Decision as to these claims. In particular, if
`Petitioner is correct that 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
`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 Petitioner is correct that none of Patent
`Owner’s proposed corresponding structure is proper, we would still deny
`institution of claims 15–17, 22–24, 30, and 35–37.
`
`
`IV.CONCLUSION
`Having considered Petitioner’s Request, Petitioner has not persuaded
`us, for the reasons discussed, that our Decision should be modified.
`
`5
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`IPR2017-01315
`Patent 6,510,466 B1
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`
`V. ORDER
`
`Accordingly, it is:
`ORDERED that the Request for Rehearing is denied.
`
`
`
`
`
`
`6
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`IPR2017-01315
`Patent 6,510,466 B1
`
`PETITIONER:
`
`Andrei D. Popovici
`Mihai H. Murgulescu
`LAW OFFICE OF ANDREI D. POPVICI
`andrei@apatent.com
`mihai@apatent.com
`
`
`
`PATENT OWNER:
`
`Brett Mangrum
`Ryan Loveless
`ETHERIDGE LAW GROUP
`brett@etheridgelaw.com
`ryan@etheridgelaw.com
`
`Sean D. Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`7
`
`
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