Trials@uspto.gov
`571-272-7822
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` Paper 32
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` Entered: February 19, 2020
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2018-00282
`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
`37 C.F.R. § 42.71
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`
`
`
`
`571-272-7822
`
`
`
`
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`
`
` Paper 32
`
`
`
` Entered: February 19, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2018-00282
`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
`37 C.F.R. § 42.71
`
`
`
`
`
`
`IPR2018-00282
`Patent 7,092,671 B2
`
`
`
`I.
`
`INTRODUCTION
`
`Patent Owner, Uniloc 2017 LLC, filed a Request for Rehearing
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`(Paper 31, “Req. Reh’g”) of our Final Written Decision (Paper 30,
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`“Decision” or “Dec.”) addressing the patentability of claims 1–7 and 9–15 of
`
`U.S. Patent 7,092,671 (Ex. 1001, “the ’671 patent”). In its Request, Patent
`
`Owner seeks reconsideration of our Final Written 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
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`party believes the Board misapprehended or overlooked, and the place where
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`each matter was previously addressed.” 37 C.F.R. § 42.71(d). The party
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`challenging a decision bears the burden of showing the decision should be
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`modified. Id.
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`In our Decision, we concluded Petitioner had met its burden of
`
`showing claims 1–6 and 9–14 would have been obvious over Yun and
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`Kikinis and that claims 7 and 15 would have been obvious over Yun,
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`Kikinis, and Inoue. Dec. 24. Petitioner had also shown by a preponderance
`
`of the evidence that claims 1–7 and 9–15 would have been obvious over
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`Harris and Kikinis. Id.
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`Patent Owner raises three arguments in contesting our determination.
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`First, Patent Owner asserts that we misapprehended or overlooked argument
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`and evidence responsive to Petitioner’s claim construction. Req. Reh’g 1.
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`Second, Patent Owner asserts that we overlooked or misunderstood
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`argument and evidence responsive to the application of Yun. Id. at 4. Third,
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`Patent Owner asserts that we overlooked or misunderstood argument and
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`evidence responsive to Petitioner’s Harris mapping. Id. at 7. We disagree.
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`2
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`
`
`IPR2018-00282
`Patent 7,092,671 B2
`
`
`
`As to Patent Owner’s first argument directed to Petitioner’s claim
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`construction, Patent Owner asserts the disputed limitation, “controlling the
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`telephone using the handheld computer system to cause the telephone to dial
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`the specific number,” is separate and distinct from the step of “transferring
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`the specific telephone number from the handheld computer system to the
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`telephone using a wireless communication.” Req. Reh’g 2. Patent Owner
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`reasons that “the recitation of two separate and distinct ‘transferring’ and
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`‘controlling’ steps precludes reliance upon the mere transfer of a telephone
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`number to provide the requisite control.” Id. Patent Owner asserts that the
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`“Board appears to have misunderstood the explanation for why cited
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`intrinsic evidence supports Patent Owner’s position” and that the Board
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`overlooked why the prosecution history supports Patent Owner’s position.
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`Id. at 3–4.
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`Patent Owner’s arguments are not persuasive, because they are best
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`characterized as disagreements with the Board’s Decision rather than
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`identifying anything misapprehended or overlooked. Specifically, we
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`addressed Patent Owner’s argument that “both the Specification and the
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`prosecution history support its ‘separate and apart’ construction,” in the
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`Decision. Dec. 10–11 (“At most, however, the cited passages describe
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`transferring a number and controlling a telephone to dial the number as
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`separate steps, not as separate commands.”). A rehearing request is not an
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`opportunity to reargue issues that the Board already addressed.
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`We likewise addressed Patent Owner’s second argument—that
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`reference to Yun’s “dial request” in support of any finding is improper as
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`being based on “an argument not raised in the petition”—in the Decision.
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`There, we disagreed with Patent Owner’s argument and found that both the
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`3
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`
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`IPR2018-00282
`Patent 7,092,671 B2
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`
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`Petition and the Declaration of Petitioner’s declarant, Dr. Medvidović, cited
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`the Specification’s dial request passage. Dec. 14 n.1 (citing Pet. 12;
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`Ex. 1003 ¶ 66). We also addressed this by stating that “Petitioner’s reliance
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`on Yun’s dial request in its Reply (see Reply 10–13) is permissible because
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`it is responsive to Patent Owner’s claim construction argument.” Id.
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`Further, we addressed Patent Owner’s argument that “Yun is deficient and
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`teaches away” from the “controlling” claim language. Req. Reh’g 6–7.
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`Specifically, we pointed out that “Yun’s on-hook functionality teaches the
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`claimed control feature.” Dec. 14–15. Patent Owner’s disagreements with
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`the Board’s Decision does not identify anything we misapprehended or
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`overlooked.
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`Patent Owner’s third argument as to Harris is similar to the arguments
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`for the claim construction that the “transferring” step is separate and distinct
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`from the “controlling” step. Req. Reh’g 7. We already addressed this
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`argument in the Decision, where we found it unpersuasive because “it relies
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`on Patent Owner’s overly narrow construction of the control limitation,
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`which we decline to adopt for the reasons explained above.” Dec. 20. We
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`also found that Patent Owner’s narrow construction “does not distinguish
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`over Harris because Harris teaches both transmitting a number and
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`commanding a telephone to dial the number.” Id. In short, Patent Owner’s
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`arguments represent a disagreement with the Decision but fail to identify
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`anything we misapprehended or overlooked.
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`III. CONCLUSION
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`Having considered Patent Owner’s Request, Patent Owner has not
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`persuaded us, for the reasons discussed, that we misapprehended or
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`4
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`
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`IPR2018-00282
`Patent 7,092,671 B2
`
`
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`overlooked any matter. Thus, Patent Owner has not demonstrated we should
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`modify our Decision with respect to any of claims 1–7 and 9–15.
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`Accordingly, it is:
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`IV. ORDER
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`ORDERED that Patent Owner’s Request for Rehearing is denied.
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`5
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`
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`IPR2018-00282
`Patent 7,092,671 B2
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`
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`PETITIONER:
`
`Andrew S. Ehmke
`Philip W. Woo
`HAYNES AND BOONE, LLP
`andy.ehmke.ipr@haynesboone.com
`philip.woo.ipr@haynesboone.com
`
`
`PATENT OWNER:
`
`Ryan Loveless
`Sean Burdick
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`ETHERIDGE LAW GROUP
`ryan@etheridgelaw.com
`sean.burdick@unilocusa.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`
`6
`
`
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