IPR2018-01093
`U.S. Patent 7,944,353 B2
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC.
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`Petitioner
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`v.
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`UNILOC 2017 LLC
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`Patent Owner.
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`IPR2018-01093
`PATENT 7,944,353 B2
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`PATENT OWNER RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.120
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`IPR2018-01093
`U.S. Patent 7,944,353 B2
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`I.
`II.
`III.
`IV.
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`Table of Contents
`INTRODUCTION .................................................................................... 3
`THE ’353 PATENT .................................................................................. 3
`RELATED PROCEEDINGS .................................................................... 3
`APPLE MAY BE CONTRACTUALLY ESTOPPED FROM
`MAINTAINING THIS PROCEEDING ................................................... 3
`A PERSON OF ORDINARY SKILL IN THE ART................................ 4
`PROSECUTION HISTORY ..................................................................... 4
`PETITIONER FAILS TO MEET ITS BURDEN OF PROOF ................ 5
`A.
`Claim Construction ......................................................................... 5
`B.
`Claim 1 ............................................................................................ 5
`1.
`Petitioner’s reliance on Lemelson’s “medical
`alert” is deficient. ................................................................. 6
`Petitioner’s alternative reliance on Lemelson’s
`audio word matching is deficient. ........................................ 8
`Claims 6 and 7 .............................................................................. 11
`C.
`Claim 12 ........................................................................................ 12
`D.
`Claim 13 ........................................................................................ 13
`E.
`Claim 16 ........................................................................................ 14
`F.
`Claim 18 ........................................................................................ 15
`G.
`Claim 19 ........................................................................................ 16
`H.
`VIII. THE CONSTITUTIONALITY OF IPR PROCEEDINGS IS
`UNDER REVIEW .................................................................................. 19
`CONCLUSION ....................................................................................... 19
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`2.
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`V.
`VI.
`VII.
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`IX.
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`IPR2018-01093
`U.S. Patent 7,944,353 B2
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`I.
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`INTRODUCTION
`Uniloc 2017 LLC (“Uniloc” or “Patent Owner”) submits this Response to
`Petition IPR2018-01093 for Inter Partes Review (“Pet.” or “Petition”) of United
`States Patent No. 7,944,353 B2 (“the ’353 Patent” or “EX1001”) filed by Apple, Inc.
`(“Petitioner”). The Petition is defective for at least the reasons set forth herein.
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`II. THE ’353 PATENT
`The ’353 patent is titled “System and Method for Detecting and Broadcasting
`a Critical Event.” The ʼ353 patent issued May 17, 2011, from U.S. Patent
`Application No. 12/130,471 filed May 30, 2008, and is related to U.S. application
`11/968,772 filed January 3, 2008, entitled “Method and Apparatus For digital Life
`Recording and Playback,” which is incorporated by reference in the ’353 patent.
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`III. RELATED PROCEEDINGS
`Patent Owner is unaware of any currently pending judicial or administrative
`proceedings involving the ’353 patent.
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`IV. APPLE MAY BE CONTRACTUALLY ESTOPPED FROM
`MAINTAINING THIS PROCEEDING
`Upon information and belief, Apple may be a licensee of the ’353 patent. If
`Apple is bound by a license agreement that forbids Apple to challenge the validity
`of the ’353 patent, Apple has an affirmative duty to disclose at least this fact, if not
`also the license itself. Apple will be afforded the opportunity in its reply to either
`offer sworn testimony denying the existence of such a license, or, instead, to explain
`why additional Board resources should needlessly be consumed even if Apple has
`possibly violated license terms by bringing this Petition in the first place.
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`IPR2018-01093
`U.S. Patent 7,944,353 B2
`V. A PERSON OF ORDINARY SKILL IN THE ART
`The Petition alleges that a person of ordinary skill in the art (“POSITA”)
`would have had “at least a bachelor’s degree in mechanical engineering, electrical
`engineering, or a similar field with at least two years of experience in event
`monitoring device design or in biometric tracking. More direct industry experience
`can accommodate less formal education in the field and more formal education in
`the field can accommodate less direct industry experience.” Pet. 12-13. Without
`conceding as to the correctness of this definition, to simplify the issues before the
`Board, and given that Petitioner fails to meet its burden of proof when purportedly
`applying its own definition of a person of ordinary skill in the art, Patent Owner does
`not offer a competing definition for purposes of this proceeding.
`VI. PROSECUTION HISTORY
`In offering an incomplete summary of the prosecution history, the Petition
`curiously states that “the Applicant broadly argued that Lloyd does not teach any of
`repeatedly analyzing a ‘digitized stream of signature data,’ determining an ‘event
`context,’ assessing a ‘criticality’ or ‘urgency’ of the event context, and determining
`a reporting response.” Pet. 6 (citing EX1002 at 105-106) (emphasis added). It is
`unclear why Petitioner used the word “broadly” to characterize certain arguments
`successfully raised during prosecution. To the extent those arguments have any
`effect on claim scope, they can only be narrowing. At a minimum, those arguments
`concede that each one of the identified claim limitations are distinguishable from,
`and therefore do not encompass, the cited references (including Lloyd).
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`IPR2018-01093
`U.S. Patent 7,944,353 B2
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`VII. PETITIONER FAILS TO MEET ITS BURDEN OF PROOF
`The Petition presents a single ground of obviousness that relies primarily on
`Lemelson1 and, for only certain limitations, a combination of Lemelson in view of
`Zhou.2 Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
`§ 42.108(c) (“review shall not be instituted for a ground of unpatentability unless
`. . . there is a reasonable likelihood that at least one of the claims challenged . . . is
`unpatentable”). The Petition should be denied as failing to meet this burden.
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`A. Claim Construction
`The Petition includes a section that proposes claim constructions for the terms
`“signature data,” “glossary,” “configuration data,” and “configuration setting.” Pet.
`9-12. In its Institution Decision, the Board declined to adopt Petitioner’s express
`constructions, finding no construction of any term was necessary. Paper 8 at 8. The
`Board need not resolve whether Petitioner’s proposed constructions are correct
`because the Petition fails to articulate any invalidating theory that supposedly
`applies Petitioner’s proposed claim constructions.
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`B. Claim 1
`The Petition fails to prove obviousness of claim 1. To simplify the issues
`before the Board, Patent Owner focuses deficiencies in the Petition with respect to
`the limitation, “assessing a criticality of the determined event context,” as recited in
`claim 1. Claim 1 expressly distinguishes this limitation from the antecedent step,
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` 1
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` EX1003, U.S. Patent No. 6,028,514 to Lemelson
`2 EX1004, U.S. Patent No. 6,847,892 to Zhou et al.
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`U.S. Patent 7,944,353 B2
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`“repeatedly analyzing the input data to determine an event context.” There can be
`no question, therefore, that “determining an event context” and “assessing a
`criticality of the determined event context” are not one and the same. The Petition,
`however, erroneously conflates these expressly-distinguished limitations.
`In addressing the “assessing” step of claim 1, the Petition presents two
`alternative theories that both rely exclusively on Lemelson. First, the Petition points
`to a passage in Lemelson allegedly disclosing what Petitioner refers to as
`“determining . . . an event context” of “an abnormal medical condition.” Pet. 29
`(citing EX1003 at 4:29-41) (emphasis added). Second, the Petition points to a
`separate discussion in Lemelson allegedly disclosing what Petitioner refers to as
`“determining … an event context of an audio-indicated emergency condition.” Id.
`at 31 (emphasis added). Neither theory meets Petitioner’s burden of proof.
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`1. Petitioner’s reliance on Lemelson’s “medical alert” is deficient.
`Regarding Petitioner’s first unavailing theory, Petitioner argues through its
`declarant, Dr. Fyfe, that “monitoring for a variance of a ‘predefined degree’ assesses
`the ‘criticality’ of the user’s current “abnormal medical condition.” Pet. 30. Neither
`the Petition nor the attached declaration, however, explain how the same alleged
`“monitoring” could possibly satisfy both “repeatedly analyzing the input data to
`determine an event context” and “assessing a criticality of the determined event
`context,” as recited in claim 1.
`It is significant and dispositive here that the Petition identifies no determined
`“event context” under this theory apart from Lemelson’s “abnormal medical
`condition.” See Pet. 29 (“Lemelson describes determining an ‘abnormal medical
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`U.S. Patent 7,944,353 B2
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`condition’ event context of an emergency event.”). Lemelson expressly defines its
`“abnormal medical condition” as being “a variance of a predefined degree . . .
`between the person’s current and normal medical conditions.” EX1003 at 4:32-41;
`see also id. at 7:46-51. Thus, Petitioner admits there is no alleged “event context”
`unless and until there is a determination of an “abnormal medical condition” as
`defined in Lemelson. But if the “variance of the predefined degree” determines an
`“event context,” as Petitioner argues, it cannot also satisfy the expressly-
`distinguished requirement “assessing a criticality of the determined event context,”
`as recited in claim 1.
`This deficiency of the Petition is further revealed in the remainder of the same
`passage in Lemelson. Lemelson states that after the medical monitoring system
`alerts the remote command control center of the user’s condition, “the command
`control center determines the severity of the emergency and dispatches the proper
`emergency assistance.” EX1003 at 4:38-39 (emphasis added).
`By expressly locating the “severity” analysis at the centralized command
`control center and performing that analysis only after receiving the alleged “report,”
`Lemelson itself reveals the “abnormal medical condition” is not determined and
`then assessed locally3 (at the warning unit 12) for criticality, all before determining
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` The word “locally” is used to distinguish the local subsystems that determine an
`event context at the data source, perform the criticality assessment, and determine a
`reporting response, from the distinct subsystem that receives the reported response.
`This interpretation is consistent not only with the express language of claim 1, but
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`U.S. Patent 7,944,353 B2
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`a reporting response. This further confirms the claim language is distinguishable.
`See, e.g., EX1001 at 11:47-55 (“A computer-implemented method of reporting a
`critical event, the method comprising: . . . assessing a criticality of the determined
`event context; and responsive to the assessment of criticality, determining a
`reporting response.”) (emphasis added).
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`2. Petitioner’s alternative reliance on Lemelson’s audio word
`matching is deficient.
`Regarding Petitioner’s second unavailing theory, Petitioner argues through its
`declarant, Dr. Fyfe, that Lemelson teaches assessing the criticality of what Petitioner
`refers to as “an audio-indicated emergency condition” ostensibly because
`“Lemelson further teaches that ‘fuzzy logic inference rules’ may be used to
`‘compute a degree of danger index for the person carrying the portable warning
`unit.’” Pet. 31 (citing EX1003 at 5:26-28). The reference speaks for itself and states
`otherwise.
`The quotation from Lemelson does not describe an “audio-indicated
`emergency.” On the contrary, the passage quoted in the Petition further states that
`the “fuzzy logic inference rules” that are used to “compute a degree of danger index
`. . . include fuzzy variables defining the distance between the portable warning unit
`and the dangerous situation, vulnerability of the person carrying the portable
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`also, for example, with independent claim 12 and its dependent claims, which
`expressly distinguish the “analysis” and “reporting” subsystems from the “public
`safety subsystem” that “receive[s] reported events.” See, e.g., EX1001 at 12:24-35.
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`U.S. Patent 7,944,353 B2
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`warning unit to the dangerous situation, and the relative velocity between the
`portable warning unit and the dangerous situation.” EX1003 at 5:28-35. None of
`these location-based “fuzzy variables” are defined as having anything to do with an
`audio-based alert. Indeed, neither the Petition nor its attached declaration offer any
`explanation for how the “fuzzy logic inference rules” that Lemelson expressly
`applies to its location-based “fuzzy variables” have anything whatsoever to do with
`the separate and unrelated description of audio information.
`It is telling that Petitioner opted to not cite Lemelson’s separate description
`expressly attributed, instead, to audio information. There, Lemelson states different
`“fuzzy logic” is applied by the centralized command control system only after the
`audio information has been transmitted from the portable wearing unit. See EX1003
`at 5:4-7. By expressly locating the “fuzzy logic” analysis at the centralized
`command control center and performing that analysis only after it receives the
`alleged “report,” Lemelson itself (again) reveals that the so-called “audio-indicated
`emergency condition” is distinguishable from the ordered process set forth in
`claim 1.
`Apart from erroneously attributing the description of one embodiment in
`Lemelson to another, the Petition offers no other explanation for how or why its
`analysis of “Claim 1 at limitation [b]” purportedly also applies to the subsequent
`“assessing” step of claim 1 (Pet. 31). The PTAB should not be expected or even
`permitted to play archeologist with the record and guess as to what Petitioner may
`have meant or could have argued in the Petition. Trial Practice Guide, Fed. Reg.
`Vol. 77, No. 157 (Aug. 14, 2012) (citation omitted); In re Magnum Oil Tools Int’l,
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`Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (“[W]e find no support for the PTO’s
`position that the Board is free to adopt arguments on behalf of petitioners that could
`have been, but were not, raised by the petitioner.”).
`In any event, a review of the cross-referenced analysis in the Petition only
`further confirms that the Petition erroneously conflates the expressly-distinguished
`“repeatedly analyzing” and “assessing” steps. In addressing the “repeatedly
`analyzing” step (1[b]), the Petition focuses its “audio data” theory exclusively on
`Lemelson’s alleged comparison of “audio data . . . with a speech library of words
`and phrases in order to determine an emergency event context.” Pet. 24-25. Nothing
`in that analysis even purports to address the distinct and subsequent requirement of
`“assessing a criticality of the [already] determined event context,” let alone doing
`so before “determining a reporting response,” as required by claim 1.
`A review of the example descriptions in the ’353 patent corresponding to the
`“assessing” step further confirms the distinction between Lemelson and the claim
`language. The ’353 patent distinguishes matching audio data with certain signatures
`(e.g., a gunshot or broken glass) from the distinct and subsequent process of locally
`assessing whether a determined event context is critical before reporting it as such
`(e.g., before reporting to a centralized public safety subsystem). See, e.g., EX1001,
`Fig. 4 and accompanying description, 7:43-48, dependent claim 5 (11:64-12:7).
`In one disclosed example, “a configuration setting may disable the reporting
`of any gunshot event alerts for a two[-]hour period of time while a movie or
`television show is being viewed.” Id. at 7:59-62. This example confirms, consistent
`with the claim language, that there is a distinction between merely determining a
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`IPR2018-01093
`U.S. Patent 7,944,353 B2
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`gunshot event context and, only thereafter, assessing the criticality of that
`determined event context before reporting it as such. The Petition fails to provide a
`cognizable theory that proves obviousness for each of these two expressly-
`distinguished limitations.
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`C. Claims 6 and 7
`In addition to the example deficiencies addressed above for claim 1, the
`Petition fails to prove obviousness of the limitations recited in claims depending
`therefrom. As non-exhaustive examples, dependent claims 6 and 7 respectively
`recite, “[t]he method of claim 1, wherein the assessing a criticality comprises
`determining whether the event data meets a threshold setting, the threshold setting
`being part of a configuration data,” and “[t]he method of claim 6, wherein
`responsive to the event data meeting a threshold setting, filtering the event data
`based on a configuration setting.”
`The Petition relies on a combination of Lemelson and Zhou that, according
`to Petitioner, reports a response only if it meets a threshold (e.g., only if temperature
`is greater than or equal to 100° F and heart rate is greater than or equal to 90). Pet.
`46; see also id. at 2 (arguing that under the proposed combination, “alerts are sent
`only when a user’s heart-rate is above a user-defined threshold”) (underlining
`added). This fails to disclose, and indeed teaches away from, “filtering the event
`data” “responsive to the event data meeting a threshold setting,” as recited in
`dependent claims 6 and 7 (emphasis added).
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`IPR2018-01093
`U.S. Patent 7,944,353 B2
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`D. Claim 12
`At a minimum, the Petition fails to prove obviousness of the requirement in
`independent claim 12 that the “reporting subsystem” is both “communicatively
`coupled to the analysis system” and “receives the event context” from the analysis
`subsystem. The Petitioner attempts to advance an inherency argument (stylized as
`alleged “common sense”), which suggests that “Lemelson’s reporting subsystem
`‘receives’ the event context from the analysis subsystem” merely because the
`component Petitioner identifies as the “reporting subsystem” transmits what
`Petitioner identifies as the “event context.” Pet. 52. The Petition is deficient at least
`in that it erroneously reduces the claim language down to certain respective
`functions of the “analysis subsystem” and the “reporting subsystem,” without
`explaining why the remainder of the claim language, including the explicit
`communicative interrelationship between those subsystems, is inherent in the
`teachings of Lemelson.
`The claim language itself refutes such an inherency argument. If the claimed
`requirement that the “reporting system” must “receive[] the event context
`determined by the analysis subsystem” necessarily means that those subsystems are
`communicatively coupled together, which the Petition argues is alleged “common
`sense,” then the additional requirement that the reporting subsystem must be
`“communicatively coupled to the analysis subsystem” would be rendered
`superfluous. The Board has previously rejected a similar attempt by Apple to
`advance an invalidity challenge that would render claim language superfluous. See,
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`e.g., Apple Inc. v. ContentGuard Holdings, Inc., IPR2015-00353, Paper No. 9,
`(P.T.A.B. June 25, 2015).
`There is a simple explanation for why the Petition attempts to eliminate
`certain claim requirements as mere “common sense” in view of other claim
`requirements—Lemeleson does not disclose them. Indeed, the Petition provides no
`argument or evidence to prove that Lemelson expressly or inherently discloses a
`communicative interconnection between Lemelson’s “medical monitor” and its
`“radio 48 and antenna system 50 of FIG. 2” (i.e., the components that the Petition
`relies upon as allegedly disclosing the claimed “analysis subsystem” and “reporting
`subsystem,” respectively).
`For at least the foregoing reasons, the Board should deny the Petition with
`respect to claim 12 as failing to meet Petitioner’s evidentiary burden.
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`E. Claim 13
`Dependent claim 13 requires (in addition to the limitations of claim 12) “a
`public safety subsystem interfaced to the analysis subsystem and the reporting
`subsystem, the public safety subsystem enabled to receive reported events and
`broadcast an alert.” EX1001 at 12:32-35 (emphasis added). The Petition only
`reproduces this claim language, without providing any argument or theory as to how
`the cited references render this claim language obvious. Pet. 52. The Petition,
`therefore, is deficient on its face. Accordingly, the Petition should be denied with
`respect to claim 13 and claim 14 depending therefrom.
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`U.S. Patent 7,944,353 B2
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`F. Claim 16
`Dependent claim 16 requires (in addition to the limitations of claim 12) that
`“the reporting subsystem configures an alarm based on the event context and
`broadcasts the alarm notice.” The sole argument in the Petition is the conclusory
`statement that “Lemelson in view of Zhou teaches this limitation” and a vague
`reference to “claim 9.” Pet. 53. The Petition is deficient on its face.
`In addressing the “reporting subsystem” element of claim 12, the Petition only
`expressly identifies Lemelson’s “radio 48 and antenna system 50 of FIG. 2.” Pet. 51
`(quoting EX1003 at 11:60-12:2). However, the referenced analysis of claim 9 offers
`no argument or evidence that this same “radio 48 and antenna system 50 of FIG. 2”
`also “configures an alarm based on the event context and broadcasts the alarm
`notice.”
`In addition, the only explanation offered in the Petition for the mapping of
`Lemelson’s “radio 48 and antenna system 50 of FIG. 2” onto the claimed “reporting
`subsystem” is that “[t]his subsystem is used by Lemelson to transmit . . . to the
`command control center.” Pet. 52 (citations omitted). The Petition offers no
`argument or evidence in support of a conclusion that a single, point-to-point
`transmission (e.g., between Lemelson’s “radio 48 and antenna system 50 of FIG. 2”
`and its “command control center”) renders obvious, “broadcasts the alarm notice,”
`as recited in claim 16. On the contrary, the Petition elsewhere appears to advance
`the construction that the “broadcasts” term connotes a point-to-many transmission.
`See, e.g., Pet. 5 (“When the reporting subsystem 330 determines a reported event is
`critical it will require an alert to be broadcast to family, friends, emergency services,
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`or any other user-defined entity.”) (internal quotations and citation omitted); id. at
`53 (Lemelson further teaches that ‘[t]he command center also includes a transmitter
`for transmitting signals to emergency response units and centers,’ which satisfies
`‘broadcasting an alert.’”) (quoting EX1003 at 3:34-37).
`
`G. Claim 18
`The Petition fails to prove obviousness of independent claim 18. For example,
`the Petition primarily relies on Lemelson for the limitation “a prioritizing
`mechanism that grades the urgency of the received reported event . . . .” Pet. 58.
`The sole argument offered in the Petition, however, is the conclusory statement that
`“[a] PHOSITA would have understood that ‘determining the severity of an
`emergency’ satisfies the limitation of “grading the urgency” of the received reported
`event at the command control center.” Id. (citing EX1005 ¶51). The Petition points
`to no explanation in Lemeleson for what is allegedly meant by the opaque statement,
`“determines the severity of an emergency.” EX1003 4:48-49. The Petitioner could
`not, because Lemelson offers no explanation.
`The cited paragraph of the declaration is also unavailing because it simply
`parrots back the same conclusory attorney argument: “A PHOSITA would have
`understood that ‘determining the severity of an emergency’ is equivalent to ‘grading
`the urgency’ of an emergency event.” EX1005 ¶ 51. Absent from the Petition and
`its attached declaration is any argument or evidence explaining why Lemeleson’s
`unexplained statement “determining the severity of an emergency” is purportedly
`equivalent to the claim language. Nor does the Petition expressly attribute any
`alleged meaning to the “grades” claim term that would support its position. This is
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`not enough to meet Petitioner’s burden of proof. See Magnum Oil, 829 F.3d at 1380
`(“[A] petitioner cannot employ mere conclusory statements” and “must instead
`articulate specific reasoning, based on evidence of record . . . .”).
`The Petition also argues, in the alternative, that its analysis of dependent claim
`6 applies equally to the distinct language of independent claim 18. Not so.
`Dependent claim 6 adds limitations that further define the step “assessing a
`criticality,” as recited in claim 1. Due at least to the ordered process set forth in
`claim 1, including the repeated use of antecedent references, the “criticality”
`assessment recited in claim 1 must be performed in advance of the subsequent step,
`“responsive to the assessment of criticality, determining a reporting response.”
`By way of contrast, claim 18 requires “a prioritizing mechanism that grades
`the urgency of the received reported event.” In other words, the “prioritizing
`mechanism” of claim 18 grades the urgency of a reported event that has already
`been received. The Petition’s unexplained reliance on the analysis of claim 6 fails
`to address this express distinction between the claims. For at least this additional
`reason, Petitioner’s (erroneous) analysis of claim 6 is inapplicable and unavailing to
`the distinct context recited in claim 18.
`
`H. Claim 19
`Dependent claim 19 further requires, in addition to the limitations of
`independent claim 18, “a filtering mechanism that determines a validity of a
`received reported event.” The Petition attempts to construe this limitation as “a
`mechanism that ‘filters out’ an invalid received reported event (or otherwise inhibits
`a particular action in response to the reported event).” Pet. 59 (emphasis added).
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`Neither the Petition nor its attached declaration provide any analysis or offer any
`evidence to defend such an untethered and unreasonably broad construction.
`There can be no question that, at a minimum, the claimed “filtering
`mechanism” must determine “the validity of received reported event.” This explicit
`requirement cannot be circumvented or replaced through claim construction, let
`alone one that offers the “otherwise” alternative relied upon in the Petition. The ’353
`patent describes an example of determining the validity of a received reported event
`with reference to Figure 7, copied below.
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`EX1001 at Fig. 7; see also id. at 9:21-52. With reference to the “YES” or “NO”
`validity determination shown in Figure 7 (block 720), the ’353 patent discloses the
`following:
`
`An alert or alarm may not be valid because a false alarm has been
`triggered. It is also possible that an alert or alarm may not be
`considered valid because a setting in the configuration database
`has disabled the alarm. The public safety subsystem processing
`terminates at a block 730 if the alert is not considered valid.
`EX1001 at 9:26-31. In view of this disclosure and the claim language itself, there
`can be no question that the claimed validity determination requires exactly what it
`states—an affirmative determination of whether the “received reported event” is
`either valid or invalid. Contrary to what the Petition suggests, without any
`supportive argument or evidence, this claim language is not met simply by filtering
`out an alleged “received reported event” for any reason, without having first
`affirmatively made a determination as to its validity in particular.
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`Relying on its overbroad, untethered, and undefended construction, the
`Petition argues Zhou teaches this claim language ostensibly because it uses what
`Petitioner refers to as a “two-stage” filtration. In doing so, Petitioner essentially
`attempts to reduce the language “a filtering mechanism that determines a validity of
`a received reported event” down to “a filtering mechanism” that filters, regardless
`whether a specific determination has been made as to validity in particular. The
`Petition points to nothing in Zhou that discusses a validity determination, or that
`even mentions the word “validity.” The Petition also fails to even attempt to
`analogize its cited threshold analysis in Zhou (allegedly used to determine whether
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`a sufficient threshold has been reached before an alert is even generated) to the
`plainly distinguishable examples in the ’353 patent of receiving what is already
`classified as an alert/alarm and, only thereafter, performing a distinct validity
`determination.
`
`For at least the forgoing reasons, the Petition fails to prove obviousness of
`claim 19 and claim 20 depending therefrom.
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`VIII. THE CONSTITUTIONALITY OF IPR PROCEEDINGS IS UNDER
`REVIEW
`In a pending appeal to the Federal Circuit, Polaris Innovations Ltd. v.
`Kingston Tech., No. 18-01768, the patent owner, Polaris, argued that the Board’s
`appointments of administrative patent judges violate the Appointments Clause of
`Article II, and that their decisions must be set aside, because administrative patent
`judges are “appointed by the Secretary of Commerce, in consultation with the
`Director” of the USPTO, but without appointment by the President and confirmation
`by the Senate in violation of Article II, Section 2, Clause 2 of the Constitution.
`Patent Owner hereby adopts this constitutional challenge.
`
`IX. CONCLUSION
`For at least the reasons set forth above, Uniloc respectfully requests that the
`Board deny all challenges in the instant Petition.4
`
`
`
`
`
` 4
`
` Patent Owner does not concede, and specifically denies, that there is any legitimacy
`to any arguments in the instant Petition that are not specifically addressed herein.
`
`19
`
`

`

`IPR2018-01093
`U.S. Patent 7,944,353 B2
`
`
`
`
`
`Date: February 7, 2019
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /s/ Brett A. Mangrum
`Brett A. Mangrum; Reg. No. 64,783
`Attorney for Patent Owner
`
`20
`
`

`

`IPR2018-01093
`U.S. Patent 7,944,353 B2
`CERTIFICATE OF COMPLIANCE
`
`
`
`Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies that the foregoing
`
`RESPONSE complies with the type-volume limitation of 37 C.F.R. § 42.24(b)(1)
`
`because it contains fewer than the limit of 14,000 words, as determined by the word-
`
`processing program used to prepare the brief, excluding the parts of the brief
`
`exempted by 37 C.F.R. § 42.24(a)(1).
`
`Date: February 7, 2019
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`By: /s/ Brett A. Mangrum
`Brett A. Mangrum; Reg. No. 64,783
`Attorney for Patent Owner
`
`i
`
`

`

`IPR2018-01093
`U.S. Patent 7,944,353 B2
`CERTIFICATE OF SERVICE
`
`
`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that an electronic
`copy of the foregoing Response was served, along with any accompanying exhibits
`not previously served, via the Patent Review Processing System (PRPS) and/or via
`email to Petitioner’s counsel at the following addresses identified in the Petition’s
`consent to electronic service:
`
`Adam P. Seitz (Reg. No. 52,206); adam.seitz@eriseip.com; ptab@eriseip.com
`Paul R. Hart (Reg. No. 59,646); paul.hart@eriseip.com; ptab@eriseip.com
`
`
`
`Date: February 7, 2019
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /s/ Brett A. Mangrum
`Brett A. Mangrum; Reg. No. 64,783
`Attorney for Patent Owner
`
`
`
`ii
`
`