Paper: 26
`Trials@uspto.gov
`571-272-7822 Entered: June 24, 2019
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`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC1,
`Patent Owner.
`____________
`
`Case IPR2017-01685
`Patent 7,804,948 B2
`____________
`
`
`
`Before KEN B. BARRETT, JEFFREY S. SMITH, and
`MINN CHUNG, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`1 Patent Owner’s Mandatory Notice filed on July 20, 2017, identified Uniloc
`Luxembourg S.A. as the Patent Owner. Paper 5. More recently, Patent
`Owner filed an Updated Mandatory Notice identifying Uniloc 2017 LLC as
`the Patent Owner. Paper 17.
`
`

`

`IPR2017-01685
`Patent 7,804,948 B2
`
`
`INTRODUCTION
`I.
`Uniloc 2017 LLC (“Patent Owner”) filed a Request for Rehearing
`
`(Paper 25, “Request” or “Req. Reh’g”) of our determination in the Final
`Written Decision (Paper 25, “Decision” or “Dec.”) that Petitioner had
`demonstrated by a preponderance of the evidence that claims 1–4, 6–8, 18,
`21, and 22 of U.S. Patent No. 7,804,948 B2 (Ex. 1001, “the ’948 patent”) are
`unpatentable. Specifically, Patent Owner contends that we erred in our
`construction of independent claim 1. For the reasons provided below, Patent
`Owner’s Request for Rehearing is denied.
`
`II. ANALYSIS
`A party requesting rehearing bears the burden of showing that the
`
`decision should be modified. 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.
`
`In the Decision, we declined to adopt Patent Owner’s proposed claim
`construction involving the inclusion of a negative limitation. We concluded
`that there was insufficient evidence “that the claim language or a prosecution
`history disclaimer requires a negative limitation that precludes the requester
`from determining attendee availability and manually selecting attendees for
`invitation to the conference call.” Dec. 21. Patent Owner contends that we
`erred in failing to find this negative limitation in the explicit language of the
`claim or in a purported prosecution history disclaimer. Req. Reh’g 3, 8.
`
`Patent Owner’s contentions are directed to the “generating” step of
`claim 1, which recites:
`
`2
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`IPR2017-01685
`Patent 7,804,948 B2
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`
`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.
`Ex. 1001, 12:7–10. As we noted in the Decision, this claim phrase involves
`two separate requests: 1) a “single request” by the conference call requester,
`and 2) a “conference call request” generated responsively to that single
`request. Dec. 10.
`
`In its Response (Paper 13, “PO Resp.”), Patent Owner argued that
`“the intrinsic evidence unambiguously confirms, consistent with the explicit
`claim language, that 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.” PO Resp. 13,
`14–15. In addressing this argument, we stated:
`
`While the claim language does contain a recitation of a
`“single request” by the user to generate a conference call
`request, we fail 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 that
`recited “single request.” In other words, the language of
`claim 1 does not contain the negative limitation proposed by
`Patent Owner.
`Dec. 11. Patent Owner argues in its Request for Rehearing that, because we
`were unable to discern a negative limitation explicitly set forth in the claim
`language, we “misconstrued the plain meaning of Claim 1.” Req. Reh’g 3.
`After having considered Patent Owner’s arguments in the Request, we still
`are unable to discern explicit claim language defining the negative
`limitation.
`
`Patent Owner first argues that “[c]laim 1 plainly states that the
`‘potential targets’ are identified by the ‘conference call request,’ not the
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`IPR2017-01685
`Patent 7,804,948 B2
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`‘single request’ to which the ‘conference call request’ is responsive.” Id.
`at 4 (citing Ex. 1001, 12:8–10). Thus, Patent Owner appears to argue now
`that the claim’s recitation of the “conference call request identifying each of
`the indicated potential targets” precludes an identifying action at any other
`time performed by any other actor. See id. Patent Owner does not indicate
`where this argument was made previously, and thus has not shown that we
`misapprehended or overlooked this argument. See id. (citing the ’948 patent
`(Ex. 1001) rather than a brief). Further, Patent Owner does not explain
`adequately why the open-ended claim (utilizing the transitional phrase
`“comprising”) excludes another step involving the act of identifying.
`
`Patent Owner next argues that “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.” Id. (citing PO
`Resp. 13). It is not clear that Patent Owner previously made this argument
`concerning the purported plain and ordinary language of “single request.”
`At most, Patent Owner’s argument on the cited page of its Response appears
`to be based on prosecution history disclaimer, not the plain language of the
`claim. See PO Resp. 13 (citing, as support for the argument that certain
`subject matter is outside the scope of the claim, Exhibit 1018, which is the
`prosecution file history for the ’948 patent). We could not have
`misapprehended or overlooked a “plain and ordinary construction” argument
`not made. Additionally, Patent Owner does not now elaborate on or provide
`evidence to support the conclusory and implied argument that a “preliminary
`selection . . . before making the single request” would be considered by a
`person of ordinary skill in the art to be an additional request. Req. Reh’g 4
`(internal quotation marks omitted).
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`IPR2017-01685
`Patent 7,804,948 B2
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`Patent Owner next argues, again without any indication whether or
`
`where the argument was previously made, that “[c]laim 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.” Id. at 4–5 (citing Ex. 1001 (the ’948 patent), 12:8–17).
`Although the referenced claim recitation ties the establishment of the
`conference call connection to the conference call request, the recitation does
`not speak to the “single request” from which that conference call request is
`generated. Patent Owner does not explain adequately why the downstream
`“establish[ing]” act justifies the incorporation of a negative limitation into an
`earlier “single request.”
`
`Patent Owner next argues that “[t]he prosecution history confirms the
`plain and ordinary meaning of ‘single request.’” Id. at 4. In this regard,
`Patent Owner contends that arguments made during prosecution serve as a
`disclaimer of claim scope such that the purported negative limitation must be
`present in the language of the claim. See id. at 72. In the Decision, we
`considered and did not find persuasive Patent Owner’s arguments regarding
`
`
`2 As we indicated in the Decision, Patent Owner’s argument appears to be
`internally inconsistent because, “if Patent Owner’s proposed negative
`limitation is set forth explicitly in the claim language, as Patent Owner
`suggests, there would be no need for Patent Owner to argue that there is a
`reduction in scope due to a disclaimer.” Dec. 11 (citing Biogen Idec, Inc. v.
`GlaxoSmithKline LLC, 713 F.3d 1090, 1095 (Fed. Cir. 2013) (“[W]hen the
`patentee unequivocally and unambiguously disavows a certain meaning to
`obtain a patent, the doctrine of prosecution history disclaimer narrows the
`meaning of the claim [relative to the full ordinary and customary meaning]
`consistent with the scope of the claim surrendered.”)).
`5
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`IPR2017-01685
`Patent 7,804,948 B2
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`the prosecution history’s alleged support for the proposed negative
`limitation. See Dec. 15–20.
`
`Patent Owner concedes that we properly noted that the applicant
`attempted to distinguish the application claim over the Haims reference
`based on the combination of several limitations in the claim. See Req. Reh’g
`5–8 (citing Dec. 19). Nonetheless, Patent Owner now argues that we erred
`in “suggesting” and “concluding” that the applicant’s arguments were
`directed to specific limitations other than the “generating” phrase into which
`Patent Owner seeks us to discern a negative limitation. See id. Regardless
`as to whether Patent Owner correctly characterizes the Decision, Patent
`Owner’s argument that we misinterpreted ambiguous aspects of the
`prosecution history does not show error in our ultimate determination
`regarding claim construction, but rather reinforces the correctness of the
`conclusion that the prosecution history is too ambiguous to justify reading
`the requested negative limitation into the claim.
`
`Lastly, Patent Owner argues that, “[f]or 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 [prosecution] history disclaimer.” Req. Reh’g 7–8.
`Patent Owner relies only on its arguments that we have found to be
`unpersuasive for the reasons discussed above.
`
`In the end, Patent Owner’s repeated mantra that the plain language of
`the claim and prosecution history clearly, unambiguously and unmistakably
`support its position does not make it so. E.g., id. at 6 (“The Board
`overlooked that the first two sentences of the argument [made during
`prosecution] . . . unambiguously and unmistakably refer to the ‘generating’
`
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`IPR2017-01685
`Patent 7,804,948 B2
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`limitation, which proposes that the system identify each of the potential
`targets.”), 5–6 n.1 (“the plain language of Claim 1 makes it clear . . . . 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.”), 6–7 (“the subject of the
`applicant’s argument is unmistakable.”), 7–8 (“the prosecution history
`unambiguously and unmistakably confirms the explicit negative limitation in
`the claim language. . . . . This unambiguous and unmistakable
`disclaimer . . . .”). Patent Owner’s Request for Rehearing reflects
`disagreement with our determinations that the evidence does not support
`Patent Owner’s contentions. We are not persuaded that Patent Owner has
`shown that we have overlooked or misapprehended its arguments or
`evidence concerning the construction of the claims. Therefore, we are not
`persuaded of error in our determination that the claims lack the negative
`limitation urged by Patent Owner.
`
`III. CONCLUSION
`Having considered Patent Owner’s Request, Patent Owner has not
`
`persuaded us, for the reasons discussed, that our Decision should be
`modified.
`
`IV. ORDER
`For the foregoing reasons, it is
`ORDERED that Patent Owner’s Request for Rehearing is denied.
`
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`IPR2017-01685
`Patent 7,804,948 B2
`
`
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`PETITIONER:
`Erika H. Arner
`Jason E. Stach
`Daniel C. Cooley
`Kai Rajan
`FINNEGAN, HENDERSON, FARABOW, GARRETT, & DUNNER, LLP
`erika.arner@finnegan.com
`jason.stach@finnegan.com
`daniel.cooley@finnegan.com
`kai.rajan@finnegan.com
`
`PATENT OWNER:
`Brett Mangrum
`Ryan Loveless
`ETHERIDGE LAW GROUP
`brett@etheridgelaw.com
`ryan@etheridgelaw.com
`
`Sean D. Burdick
`UNILOC USA
`sean.burdick@unilocusa.com
`
`8
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`