Trials@uspto.gov
`571-272-7822
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` Paper 44
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` Entered: February 12, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS, LLC,
`Petitioner,
`
`v.
`UNILOC USA, INC. and UNILOC LUXEMBOURG, S.A.,
`Patent Owner.
`____________
`
`IPR2018-00199
`Patent 7,092,671 B2
`____________
`
`Before MIRIAM L. QUINN, CHARLES J. BOUDREAU, and
`GARTH D. BAER, Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`C.F.R. § 42.71
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 44
`
`
`
` Entered: February 12, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS, LLC,
`Petitioner,
`
`v.
`UNILOC USA, INC. and UNILOC LUXEMBOURG, S.A.,
`Patent Owner.
`____________
`
`IPR2018-00199
`Patent 7,092,671 B2
`____________
`
`Before MIRIAM L. QUINN, CHARLES J. BOUDREAU, and
`GARTH D. BAER, Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`C.F.R. § 42.71
`
`
`
`
`
`
`
`
`IPR2018-00199
`Patent 7,092,671 B2
`
`
`I.
`INTRODUCTION
`Patent Owner Uniloc USA, Inc. and Uniloc Luxembourg, S.A. filed a
`Request for Rehearing (Paper 34, “Req. Reh’g”) of our Final Written
`Decision (Paper 33, “Decision” or “Dec.”) addressing the patentability of
`claims 1–16 of U.S. Patent 7,029,671 (Ex. 1001, “the ’671 patent”). In its
`Request, Patent Owner seeks reconsideration of our Decision. Req. Reh’g 1.
`For the reasons provided below, Patent Owner’s Request is denied.
`
`II. ANALYSIS
`A request for rehearing “must specifically identify all matters the
`party believes the Board misapprehended or overlooked, and the place where
`each matter was previously addressed.” 37 C.F.R. § 42.71(d). The party
`challenging a decision bears the burden of showing the decision should be
`modified. Id.
`In our Decision, we concluded Petitioner had met its burden of
`showing claims 1–6 and 9–14 would have been obvious over Yun, Langlois,
`and Dykes and that claims 7, 8, 15, and 16 would have been obvious over
`Yun, Langlois, Dykes, and Husemann. Dec. 30. Petitioner had also shown
`by a preponderance of the evidence that claims 1–7 and 9–15 would have
`been obvious over Harris, Langlois, and Dykes and claims 8 and 16 would
`have been obvious over Harris, Langlois, Dykes, and Husemann. Id. at 30–
`31.
`
`Patent Owner raises five arguments in contesting our determination.
`First, Patent Owner asserts that we misapprehended or overlooked argument
`and evidence responsive to Petitioner’s claim construction. Req. Reh’g 1.
`Patent Owner asserts also that we overlooked or misunderstood argument
`and evidence responsive to Petitioner’s Yun mapping. Id. at 4. Patent
`
`2
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`IPR2018-00199
`Patent 7,092,671 B2
`
`Owner asserts that we overlooked or misunderstood argument and evidence
`responsive to Petitioner’s Harris mapping. Id. at 5. Patent Owner asserts
`also that we overlooked or misunderstood argument and evidence responsive
`to Petitioner’s combinations with Dykes. Id. at 6. Last, Patent Owner
`asserts that we erred in finding that Petitioner met its burden to prove its
`Petition names all real parties in interest. Id. at 8. We disagree for the
`reasons explained below.
`As to Patent Owner’s first argument directed to Petitioner’s claim
`construction, Patent Owner asserts the disputed limitation, “controlling the
`telephone using the handheld computer system to cause the telephone to dial
`the specific number,” is separate and distinct from the step of “transferring
`the specific telephone number from the handheld computer system to the
`telephone using a wireless communication.” Req. Reh’g 2. Patent Owner
`reasons that “the recitation of two separate and distinct ‘transferring’ and
`‘controlling’ steps precludes reliance upon the mere transfer of a telephone
`number to provide the requisite control.” Id. Patent Owner asserts that the
`“Board appears to have misunderstood the explanation for why cited
`intrinsic evidence supports Patent Owner’s position,” and that the Board
`overlooked why the prosecution history supports Patent Owner’s position.
`Id. at 3–4.
`Patent Owner’s arguments are not persuasive, because they are best
`characterized as disagreements with the Board’s Decision rather than
`identifying anything we misapprehended or overlooked. Specifically, the
`Decision addressed Patent Owner’s argument that “both the Specification
`and the prosecution history support its ‘separate and apart’ construction.”
`Dec. 12–13 (“At most, however, the cited passages describe transferring a
`
`3
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`IPR2018-00199
`Patent 7,092,671 B2
`
`number and controlling a telephone to dial the number as separate steps, not
`as separate commands.”). A rehearing request is not an opportunity to
`reargue issues that the Board already addressed.
`The Decision likewise addressed Patent Owner’s second argument—
`that “Yun’s ‘dial request’ is distinguishable from … [and] also teaches away
`from the ‘controlling’ claim language.” Req. Reh’g 4-5. As we explained,
`we disagreed with Patent Owner’s argument and found that “Yun discloses
`the transfer and controlling limitations even under Patent Owner’s narrow
`construction.” Dec. 16–17. Patent Owner’s disagreements with the Board’s
`Decision do not identify anything we misapprehended or overlooked.
`Patent Owner’s third argument, as to Harris, is similar to the
`arguments for Yun that the “transferring” step is separate and distinct from
`the “controlling” step. Req. Reh’g 6. We already addressed this argument
`in the Decision, where we found it unpersuasive because “it relies on Patent
`Owner’s overly narrow construction of the control limitation, which we
`decline to adopt for the reasons explained above.” Dec. 24–25. We also
`found that Patent Owner’s narrow construction “does not distinguish over
`Harris because Harris teaches both transmitting a number and commanding a
`telephone to dial the number.” Id. at 25.
`As to Patent Owner’s fourth argument, addressing “Petitioner’s
`erroneous combinations with Dykes,” Patent Owner raises two issues. First,
`Patent Owner argues the Board overlooked its argument on page 40 of its
`Response to the Petition (“Resp.”) that “for at least claim 9 and its
`challenged dependent claims, Petitioner has waived any reliance on a
`combination of Yun with Dykes.” Req. Reh’g 6. Second, Patent Owner
`argues that Dykes’s hardwired interconnection does not cure the identified
`
`4
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`IPR2018-00199
`Patent 7,092,671 B2
`
`deficiencies of Harris such that the Board overlooked Patent Owner’s
`assertion that “neither Dykes nor Harris disclose the claimed wireless
`control that is separate and distinct from merely transferring a telephone
`number.” Id. at 6–7.
`Patent Owner’s arguments are not persuasive. Patent Owner’s
`argument on page 40 of the Response to the Petition states: “[i]n addressing
`the ‘controlling’ step of independent claim 9, the Petition (“Pet.”) offers no
`argument or evidence in support of a conclusion that Dykes may be
`combined with Yun. Pet. 33. Indeed, the Dykes reference is not even
`mentioned in that section (§VII.A.7.e) of the Petition.” Resp. 40. Petitioner,
`however, relies on section VII.A.2.f of the Petition to address the
`“controlling” step and to provide an analysis as to why one of ordinary skill
`in the art would have been motivated to combine Yun and Dykes. Pet. 20–
`26. For claim 9 and its dependents, the Petition refers back to Section
`VII.A.2.f. Pet. 33. Our Decision explains that claim 9 “includes similar
`transfer and control limitations” as claim 1. Dec. 11. Under the heading
`“Transfer/Control Limitations and Combining Dykes,” we agreed with
`Petitioner’s argument that “one skilled in the art would have found it
`obvious to combine Dykes’s teaching with Yun.” Dec. 16. That the
`Decision does not repeat its analysis in separate sections for claim 1 and
`claim 9 does not mean that we overlooked Patent Owner’s arguments against
`the combination of Yun and Dykes as to claim 9. Our conclusion applies
`equally to claim 1 and its dependents as to claim 9 and its dependents.
`Patent Owner does not adequately distinguish between the transfer/control
`limitations of claim 1 versus claim 9 in a manner that would require a
`separate analysis. Patent Owner’s argument reflects a disagreement as to the
`
`5
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`IPR2018-00199
`Patent 7,092,671 B2
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`layout of the Decision. This argument, however, does not point to anything
`that the panel misapprehended or overlooked.
`As to Patent Owner’s argument that Dykes’s hardwired phone
`connection does not disclose, and is incompatible with, the claimed wireless
`communication, the Decision addressed this argument. See Dec. 17–18.
`Specifically, we noted that there is no evidence to support the assertion that
`“Dykes’s separate command cannot be applied to a wireless system,” and no
`evidence that “applying Dykes’s teaching to Yun” would be beyond the
`abilities of a skilled artisan. Id. at 18.
`In its fifth argument, Patent Owner asserts, with respect to the issue of
`real party in interest (RPI), that the majority opinion misunderstood the
`relationship between Petitioner and the alleged unnamed RPIs. Req.
`Reh’g 9. Patent Owner argues that the evidence and analysis establishing
`the relationship, as set forth in the concurring opinion, warrant
`reconsideration. Id. at 12.
`As we explained in our Decision, multiple factors determine whether
`an entity is an RPI. Dec. 7. These factors include the relationship with the
`petitioner. Id. The Decision and concurrence addressed the relationship
`between Petitioner and the alleged unnamed RPIs. See Dec. 7–10. Patent
`Owner’s arguments and premise represent a disagreement with the
`majority’s decision, but fail to identify anything misapprehended or
`overlooked.
`
`III. CONCLUSION
`Having considered Patent Owner’s Request, Patent Owner has not
`persuaded us, for the reasons discussed, that we misapprehended or
`
`6
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`IPR2018-00199
`Patent 7,092,671 B2
`
`overlooked any matter. Thus, Patent Owner has not demonstrated we should
`modify our Decision with respect to any of claims 1–16.
`
`IV. ORDER
`
`Accordingly, it is:
`ORDERED that Patent Owner’s Request for Rehearing is denied.
`
`
`
`
`7
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`IPR2018-00199
`Patent 7,092,671 B2
`
`
`PETITIONER:
`
`David Cavanaugh
`david.cavanaugh@wilmerhale.com
`
`Roshan Mansinghani
`roshan@unifiedpatents.com
`
`Jonathan Stroud
`jonathan@unifiedpatents.com
`
`Michael Van Handel
`michael.vanhandel@wilmerhale.com
`
`Ellyar Barazesh
`ellyar.barazesh@wilmerhale.com
`
`Jonathan Bowser
`jbowser@unifiedpatents.com
`
`Dan Williams
`daniel.williams@wilmerhale.com
`
`PATENT OWNER:
`
`Ryan Loveless
`ryan@etheridgelaw.com
`
`Sean Burdick
`sean.burdick@unilocusa.com
`
`Brett Mangrum
`brett@etheridgelaw.com
`
`James Etheridge
`jim@etheridgelaw.com
`
`
`8
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`IPR2018-00199
`Patent 7,092,671 B2
`
`
`Jeffrey Huang
`jeff@etheridgelaw.com
`
`9
`
`
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