Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 9
`Entered: May 11, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`UNIFIED PATENTS, INC.,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`_______________
`
`Case IPR2018-00057
`Patent 6,110,228
`_______________
`
`
`Before MIRIAM L. QUINN, ROBERT J. WEINSCHENK, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 9
`Entered: May 11, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`UNIFIED PATENTS, INC.,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`_______________
`
`Case IPR2018-00057
`Patent 6,110,228
`_______________
`
`
`Before MIRIAM L. QUINN, ROBERT J. WEINSCHENK, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`
`
`IPR2018-00057
`Patent 6,110,228
`
`
`INTRODUCTION
`I.
`Unified Patents, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`requesting an inter partes review of claims 1, 6, 7, 10, 18, 25, 26, 29, 67, 68,
`70 and 71 (“the challenged claims”) of U.S. Patent No. 6,110,228 (Ex. 1001,
`“the ’228 patent”). Uniloc Luxembourg S.A. (“Patent Owner”) filed a
`Preliminary Response (Paper 7, “Prelim. Resp.”) to the Petition. An inter
`partes review may not be instituted unless “the information presented in the
`petition . . . and any response . . . shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition.” 35 U.S.C. § 314(a).
`For the reasons set forth below, Petitioner does not demonstrate a
`reasonable likelihood of prevailing in showing the unpatentability of any of
`the challenged claims of the ’228 patent. Accordingly, the Petition is
`denied, and no trial is instituted.
`A.
`Related Proceedings
`The parties indicate that the ’228 patent is the subject of several
`district court cases. Pet. 1–2; Paper 3, 2.
`B.
`The ’228 Patent
`The ’228 patent relates to “software support in distributed systems.”
`Ex. 1001, 1:6–8. Specifically, the ’228 patent describes a computer network
`system that includes a software maintenance facility at a central site. Id. at
`2:47–52. According to the ’228 patent, a customer at a remote location
`initiates servicing of a software program product by composing a service
`request through a front end. Id. at 2:52–57. The front end permits the
`customer to specify a range of operations, including service research,
`requesting service, applying service, providing fixes, and installing serviced
`
`1
`
`
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`
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`IPR2018-00057
`Patent 6,110,228
`
`products or fixes at the remote location. Id. at 2:58–61. A service machine
`at the central site then performs the requested service, and the results are
`provided back to the customer at the remote location. Id. at 2:61–63.
`C.
`Illustrative Claim
`Claims 1, 18, and 67 are independent. Claim 1 is reproduced below.
`1. A method of applying service to a computer program
`that is to be executed at a remote location connected to a central
`computer site of a computer network, the method comprising the
`steps of:
`interactively receiving a request for a computer program
`service from a customer at a remote location interface with
`optional service incorporation instructions of the remote location
`customer;
`providing the received request for service over the
`computer network to a service facility at the central computer
`site;
`
`determining the components of the requested service at the
`central computer site; and
`providing the results of the requested service over the
`computer network back to the customer at the remote location
`interface.
`Ex. 1001, 25:39–55.
`D.
`Evidence of Record
`Petitioner submits the following references and declaration (Pet. 3–5):
`Reference or Declaration
`Exhibit No.
`Declaration of Dr. Ethan L. Miller (“Miller Declaration”)
`Ex. 1003
`Crawford, U.S. Patent No. 7,080,051 B1 (filed Mar. 12,
`Ex. 1004
`2002, issued July 18, 2006) (“Crawford”)
`Reisman, U.S. Patent No. 5,694,546 (filed May 31, 1994,
`issued Dec. 2, 1997) (“Reisman”)
`Frye, U.S. Patent No. 6,038,586 (filed May 2, 1997, issued
`Mar. 14, 2000) (“Frye”)
`
`Ex. 1006
`
`Ex. 1005
`
`2
`
`
`
`IPR2018-00057
`Patent 6,110,228
`
`
`Reference(s)
`Crawford and Reisman
`
`E.
`Asserted Grounds of Unpatentability
`Petitioner asserts that the challenged claims are unpatentable on the
`following grounds (Pet. 5):
`Claim(s)
`Basis
`1, 6, 7, 10, 18, 25,
`35 U.S.C. § 103(a)
`26, 29, 67, 68, 70
`and 71
`1
`
`Frye
`35 U.S.C. § 103(a)
`II. ANALYSIS
`A. Claim Construction
`The parties agree that the ’228 patent has expired. Pet. 8; Prelim.
`Resp. 9. As a result, we construe the claims of the ’228 patent pursuant to
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R.
`§ 42.100(b); see also In re Rambus, Inc., 694 F.3d 42, 46 (Fed. Cir. 2012)
`(holding, on appeal from a reexamination decision by the Board of Patent
`Appeals and Interferences, that “the Board’s review of the claims of an
`expired patent is similar to that of a district court’s review”). Under Phillips,
`we generally give claim terms their “ordinary and customary meaning” as
`understood by a person of ordinary skill in the art in question at the time of
`the invention. Phillips, 415 F.3d at 1312–13. We consider the intrinsic
`evidence, namely, the claim language, the specification, and the prosecution
`history, if in evidence. Id. at 1314–17. We also can consider extrinsic
`evidence, but it is “less significant than the intrinsic record in determining
`‘the legally operative meaning of claim language.’” Id. at 1317.
`1.
`“optional service incorporation instructions”
`Each of the challenged independent claims recites “optional service
`incorporation instructions.” Ex. 1001, 25:45, 27:26–27, 32:23. Petitioner
`acknowledges (Pet. 7–8) that during prosecution of the application that
`
`3
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`IPR2018-00057
`Patent 6,110,228
`
`issued as the ’228 patent, the Board of Patent Appeals and Interferences
`(“BPAI”) construed the term “optional service incorporation instructions” to
`mean that “the customer specifies a range of optional instructions including
`‘service research, requesting service, applying service, providing fixes, and
`installing serviced products or fixes at the remote location’” (Ex. 1002, 256–
`257). The BPAI explained that its construction was supported by the
`specification and prosecution history. Id. For example, the specification
`states that “the front end permits the customer to specify a range of
`operations, including service research, requesting service, applying service,
`providing fixes, and installing serviced product or fixes at the remote
`location.” Ex. 1001, 2:58–61. Likewise, during prosecution, the applicant
`stated that “[t]he invention provides a computer network system in which a
`customer at a remote location can request software service . . . through a
`local software interface ‘front-end’ that permits the remote location
`customer to specify a range of optional service incorporation instructions,
`including service research, requesting service, applying service, providing
`fixes, and installing serviced products or fixes at the remote location.”
`Ex. 1002, 173.
`Petitioner does not identify any specific error in the BPAI’s previous
`construction of the term “optional service incorporation instructions.” See
`Pet. 11–13. Nor does Petitioner contend that the BPAI’s previous
`construction under the broadest reasonable interpretation standard is
`incorrect under the Phillips standard. See id. Nonetheless, Petitioner
`proposes a different construction in this proceeding. Id. at 13. Specifically,
`Petitioner proposes construing the term “optional service incorporation
`instructions” to mean “instructions arising from selection of an option by a
`
`4
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`IPR2018-00057
`Patent 6,110,228
`
`customer related to updating a computer program to repair or maintain the
`computer program.” Id. Thus, Petitioner’s proposed construction does not
`recite the specific options set forth in the BPAI’s previous construction.
`Compare id., with Ex. 1002, 256–257.
`In sum, the BPAI’s previous construction is supported by the
`specification and prosecution history of the ’228 patent, Petitioner does not
`identify any specific error in the BPAI’s previous construction, and
`Petitioner does not contend that the BPAI’s previous construction under the
`broadest reasonable interpretation standard is incorrect under the Phillips
`standard. As a result, although we apply a different claim construction
`standard in this proceeding than the BPAI applied during prosecution, we
`are not persuaded that we should adopt a different construction in this
`proceeding. See Facebook, Inc. v. Pragmatus AV, LLC, 582 Fed. App’x
`864, 869 (Fed. Cir. 2014) (“The broadest reasonable interpretation of a claim
`term may be the same as or broader than the construction of a term under the
`Phillips standard. But it cannot be narrower.”) Therefore, we similarly
`construe the term “optional service incorporation instructions” to mean that
`the customer specifies a range of optional instructions, including service
`research, requesting service, applying service, providing fixes, and installing
`serviced products or fixes at the remote location.
`2.
`Remaining Claim Terms
`Petitioner also proposes construing the terms “interactively receiving
`a request” and “service.” Pet. 9–11. On this record and for purposes of this
`Decision, we determine that those claim terms do not require express
`construction to address the asserted grounds of unpatentability in this
`proceeding. See infra Section II.B; Vivid Techs., Inc. v. Am. Sci. & Eng’g,
`
`5
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`
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`IPR2018-00057
`Patent 6,110,228
`
`Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be
`construed that are in controversy, and only to the extent necessary to resolve
`the controversy.”).
`B.
`Asserted Grounds of Unpatentability
`Each of the challenged independent claims recites “optional service
`incorporation instructions.” Ex. 1001, 25:45, 27:26–27, 32:23. During
`prosecution of the application that issued as the ’228 patent, the prior art
`applied by the Examiner taught providing a user with the options of
`“Install,” “Configure,” “Remove,” “Exit,” and “Help.” Ex. 1002, 255. The
`BPAI acknowledged that the prior art applied by the Examiner “clearly
`[gave] the user ‘options.’” Id. at 256. But as discussed above, the BPAI
`construed the term “optional service incorporation instructions” to mean that
`“the customer specifies a range of optional instructions including ‘service
`research, requesting service, applying service, providing fixes, and installing
`serviced products or fixes at the remote location.’” Id. at 256–57. The
`BPAI determined that the prior art applied by the Examiner did not
`“disclose[] or suggest[] any optional service incorporation instructions
`including these specific options.” Id. at 257. Thus, we understand the
`BPAI’s previous construction to require providing a user with specific
`options for service research, requesting service, applying service, providing
`fixes, and installing serviced products or fixes at the remote location.
`For each asserted ground of unpatentability in this proceeding,
`Petitioner explains how the asserted prior art teaches “optional service
`incorporation instructions” under Petitioner’s proposed construction of that
`term. Pet. 29–30, 63–64. As noted above, Petitioner acknowledges that the
`BPAI previously construed the term “optional service incorporation
`
`6
`
`
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`IPR2018-00057
`Patent 6,110,228
`
`instructions” differently (id. at 7–8), but Petitioner does not explain
`specifically how the asserted prior art in this proceeding teaches “optional
`service incorporation instructions” under the BPAI’s previous construction
`(see id. at 29–30, 63–64).
`With respect to the proposed combination of Crawford and Reisman,
`Petitioner asserts that Reisman teaches providing a user with options relating
`to “the number of updates requested,” “whether to initiate the update
`‘immediately or at a subsequent date, or time,’” and/or “whether to perform
`file maintenance functions relevant to the software update.” Id. at 29–30.
`However, Petitioner does not explain how those options teach or suggest
`providing a user with options for service research, requesting service,
`applying service, providing fixes, and installing serviced products or fixes at
`the remote location. See id. With respect to Frye, Petitioner asserts that
`Frye teaches providing a user with options relating to “a group with which
`the remote workstation is associated and how often the SUDS system should
`gather information about the remote workstation.” Id. at 63–64. Again,
`though, Petitioner does not explain how those options teach or suggest
`providing a user with options for service research, requesting service,
`applying service, providing fixes, and installing serviced products or fixes at
`the remote location. See id.
`For the reasons discussed above, we adopt the BPAI’s previous
`construction of the term “optional service incorporation instructions.” See
`supra Section II.A.1. Because Petitioner does not explain specifically how
`the asserted prior art teaches “optional service incorporation instructions”
`under that construction (see Pet. 29–30, 63–64), Petitioner has not shown
`sufficiently that the asserted prior art teaches the limitations of the
`
`7
`
`
`
`IPR2018-00057
`Patent 6,110,228
`
`challenged claims. Therefore, Petitioner does not demonstrate a reasonable
`likelihood of prevailing in showing the unpatentability of any of the
`challenged claims.
`
`III. CONCLUSION
`Petitioner does not demonstrate a reasonable likelihood of prevailing
`in showing the unpatentability of any of the challenged claims of the ’228
`patent.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied, and no trial is instituted.
`
`
`
`8
`
`
`
`IPR2018-00057
`Patent 6,110,228
`
`PETITIONER:
`
`Roberto Devoto
`Walter Renner
`David Holt
`Charles Shulman
`FISH & RICHARDSON P.C.
`devoto@fr.com
`axf-ptab@fr.com
`holt2@fr.com
`ces@fr.com
`
`Jonathan Stroud
`Roshan Mansinghani
`UNIFIED PATENTS, INC.
`jonathan@unifiedpatents.com
`roshan@unifiedpatents.com
`
`
`PATENT OWNER:
`
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`ETHERIDGE LAW GROUP
`ryan@etheridgelaw.com
`bret@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`
`Sean Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`9
`
`
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