UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Google, LLC,
`Petitioner
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner
`
`Case IPR2017-01685
`Patent 7,804,948 B2
`
`PATENT OWNER’S REQUEST FOR
`REHEARING UNDER 37 C.F.R. § 42.71(D)
`
`
`
`1
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Google, LLC,
`Petitioner
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner
`
`Case IPR2017-01685
`Patent 7,804,948 B2
`
`PATENT OWNER’S REQUEST FOR
`REHEARING UNDER 37 C.F.R. § 42.71(D)
`
`
`
`1
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`In response to the Final Written Decision entered July 14, 2019, (Paper
`
`24) and pursuant to 37 CFR § 42.71(d), Patent Owner hereby respectfully
`
`requests a rehearing and reconsideration by the Patent Trial and Appeal Board
`
`(“Board”) of its Final Decision. 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,
`
`without prior authorization from the Board.” 37 C.F.R. §42.71(d). “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.” Id. The Board
`
`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
`
`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
`
`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). An unequivocal
`
`disclaimer invokes prosecution history estoppel, which “requires that
`
`patent claims be interpreted in light of the proceedings before the Patent and
`
`
`
`2
`
`
`
`Trademark Office (PTO).” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki
`
`Co., 535 U.S. 722, 723 (2002).
`
`II. ARGUMENT
`
`1. The Board erred in when it failed to find explicit claim language
`precluding a user
`from
`identifying and
`selecting call
`participants.
`
`
`
`
`Claim 1 expressly requires “generating a conference call request
`
`responsively to a single request” by the user. See Ex. 1001, 25 (12:8-19)
`
`(emphasis added); PO Resp. 12-16. Patent Owner respectfully submits that the
`
`Board misconstrued the plain meaning of Claim 1 when it “fail[ed] to discern
`
`any explicit claim language that precludes the user’s determination as to
`
`availability or the selection of call participants as part of or as a prelude to
`
`[the] recited ‘single request.’” See Paper 24 at 11. Claim 1 states, in relevant
`
`part:
`
`
`
`
`
`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;
`
`transmitting said conference call request from said
`
`network access device to said conference call server; and
`
`call
`conference
`a
`establishing
`automatically
`
`requester, said
`connection
`to said conference call
`conference call connection initiated by said conference call
`server, said conference call connection further being
`connected to each of the potential targets.
`
`3
`
`
`
`Ex. 1001, 11:58–12:17 (emphasis added).
`
`
`
`Claim 1 plainly states that the “potential targets” are identified by the
`
`“conference call request,” not the “single request” to which the “conference
`
`call request” is responsive. Id. 12:8-10 (“said conference call request
`
`identifying each of the potential targets”). Petitioner and the Board argue that
`
`perhaps the user identifies the “potential targets” as a “prelude” to making the
`
`recited “single request.” But a “prelude” or “preliminary selection” of
`
`potential targets by the user before making the “single request” would be,
`
`under plain and ordinary construction, an additional request. See PO Resp. 13.
`
`Petitioner’s erroneous construction is not helped by calling this additional
`
`request a “prelude.” See id. It is similarly unavailing to describe selecting
`
`targets as “part of” a single request, as a request divided into multiple “parts”
`
`is not a single request.
`
`
`
`Claim 1 likewise plainly states that the connection to the “potential
`
`targets” is automatically established by “said conference call server” in
`
`response to the “conference call request,” not the “single request” to which the
`
`“conference call request” is responsive. Ex. 1001, 12:8-17.
`
`
`
`The prosecution history confirms the plain and ordinary meaning of
`
`“single request.” In distinguishing Haims, the applicant argued “Haims neither
`
`teaches nor even suggests” the automatic conference call methodology
`
`
`
`4
`
`
`
`described by Claim 1:
`
`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.
`
`
`Ex. 1018, 124-25 (emphasis added).
`
`
`
`In Final Written Decision, the Board noted that during prosecution the
`
`applicant amended
`
`the “presenting,” “generating,” and “establishing”
`
`limitations “and emphasized all those limitations in arguing against rejection.”
`
`Paper 25 at 18 (emphasis added). The Board erred, however, by (1) suggesting
`
`the “establishing”
`
`limitation was
`
`the sole “subject of
`
`the sentence”
`
`distinguishing1 Haims and (2) concluding the applicant directed its prosecution
`
`argument distinguishing Haims not at the “generating” limitation but to a
`
`different limitation. See id at 18-19.
`
`
`
`Contrary to the Board’s conclusion (and as recognized by the Board
`
`elsewhere), the applicant distinguished Claim 1 over Haims “due to the
`
`
`1 Patent Owner does not argue the negative limitation prohibiting the user from
`identifying and selecting potential targets is absent from the explicit language
`of Claim 1 and is only found in prosecution history disclaimer. Rather, the
`plain language of Claim 1 makes it clear that the user makes only a “single
`request,” not multiple requests consisting of selecting targets and submitting a
`request. The prosecution history confirms this plain reading of Claim 1.
`Alternatively,
`the prosecution history
`is an unambiguous, clear, and
`unmistakable disclaimer of the embodiment urged by Petitioner.
`
`
`
`5
`
`
`
`combination of [the] several [emphasized] phrases that together persuaded the
`
`Examiner to allow claim 1.” Id. at 19 (emphasis added). Those emphasized
`
`phrases included two important phrases from the “generating” limitation: (1)
`
`“responsively to a single request by the conference call requester”; and (2)
`
`“identifying each of the potential targets.” Ex. 1018, 124-25. The Board
`
`overlooked that the first two sentences of the argument (“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”)
`
`unambiguously and unmistakably refer to the “generating” limitation, which
`
`proposes that the system identify each of the potential targets. Id.
`
`
`
`The conclusion that the “establishing” limitation was the sole subject of
`
`the applicant’s argument can only be reached by ignoring the first two
`
`sentences of the paragraph distinguishing Haims and focusing only on the
`
`third. By doing so, the Board overlooked that the combination of emphasized
`
`phrases in the “presenting,” “generating,” and “establishing” limitations
`
`together disclaim an embodiment in which the user both selects potential
`
`targets and submits the requester request. The methodology not taught or
`
`suggested by Haims is one where, in response to a single request, the system
`
`identifies the targets (“generating” limitation) and the system automatically
`
`establishes the connection (“establishing” limitation). That this was the
`
`
`
`6
`
`
`
`subject of the applicant’s argument is unmistakable from the emphasized
`
`phrases in the amended claim language immediately preceding the argument,
`
`including in relevant part:
`
`
`
`Ex. 1018, 124 (highlights added).
`
`
`
`Finally, the Board misapprehended the applicant’s argument when it
`
`found the applicant’s citation to Haim’s paragraphs 110 and 111 show the
`
`applicant’s argument was not directed at the “generating” limitation. The
`
`applicant cited 110 and 111 as examples. Id. (citing “See, e.g., pars. [0110]
`
`and [0111].”). These examples were clearly not intended to limit applicant’s
`
`argument to the “establishing” or “presenting” limitations.
`
`2. The Board erred in when it failed to find prosecution history
`disclaimer.
`
`For the same reasons the Board erred by overlooking that the
`
`
`
`prosecution history unambiguously and unmistakably confirms the explicit
`
`negative limitation in the claim language, it also failed to find persecution
`
`
`
`7
`
`
`
`history disclaimer. As explained above,
`
`the applicant successfully
`
`distinguished Haims by demonstrating the methodology of Claim 1, unlike
`
`Haims, is one where, in response to a single request, the system identifies
`
`potential targets and the system connects those same potential targets.
`
`
`
`This unambiguous and unmistakable disclaimer confirms there is a
`
`patentable distinction between “a single request by the conference call
`
`requester” and, instead, requiring the requester to select which attendees to
`
`invite to join a conference call. See PO Resp. 13, 15.
`
`III. CONCLUSION
`
`
`
`In view of the foregoing, Patent Owner respectfully requests that the
`
`Board grant a rehearing and reconsider its Final Written Decision.
`
`
`
`Date: February 13, 2019
`
`Respectfully submitted,
`
`By: /s/ Brett A. Mangrum
`
`Brett A. Mangrum
`brett@etheridgelaw.com
`Reg. No. 64,783
`
`Ryan Loveless
`ryan@etheridgelaw.com
`Reg. No. 51,970
`
`Counsel for Patent Owner
`
`8
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Under 37 C.F.R. §§ 42.6(e), the undersigned certifies that an electronic copy
`
`of the foregoing paper was served via PRPS and email to Petitioner’s counsel of
`
`record at the addresses identified below:
`
`Erika H. Arner (Reg. No. 57,540)
`erika.arner@finnegan.com
`Finnegan, Henderson, Farabow,
`Garrett, & Dunner, LLP
`Two Freedom Square
`11955 Freedom Dr.
`Reston, VA 20190-5675
`Tel: 571-203-2700
`Fax: 202-408-4400
`
`Kai Rajan (Reg. No. 70,110)
`kai.rajan@finnegan.com
`Finnegan, Henderson, Farabow,
`Garrett, & Dunner, LLP
`901 New York Ave NW
`Washington, DC 20001
`Tel: 202-408-4000
`Fax: 202-408-4400
`
`Jason E. Stach (Reg. No. 54,464)
`jason.stach@finnegan.com
`Finnegan, Henderson, Farabow,
`Garrett, & Dunner, LLP
`271 17th Street, NW
`Suite 1400
`Atlanta, GA 30363-6209
`Tel: 404-653-6400
`Fax: 404-653-6444
`
`Daniel C. Cooley (Reg. No. 56,639)
`daniel.cooley@finnegan.com
`Finnegan, Henderson, Farabow,
`Garrett, & Dunner, LLP
`Two Freedom Square
`11955 Freedom Dr.
`Reston, VA 20190-5675
`Tel: 571-203-2700
`Fax: 202-408-4400
`
`
`
`
`
`
`
`
`
`
`
`
`Date: February 13, 2019
`
`By: /s/ Brett A. Mangrum
`
`
`
`Brett A. Mangrum
`Attorney for Patent Owner
`Reg. No. 64,783
`
`9
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
