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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MICROSOFT CORPORATION,
`Petitioner,
`
`v.
`
`IRON OAK TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Case IPR2019-00106
`Patent 5,699,275
`____________
`
`Record of Oral Hearing
`Held: November 4, 2019
`____________
`
`
`
`
`Before SALLY C. MEDLEY, PATRICK R. SCANLON and
`ARTHUR M. PESLAK, Administrative Patent Judges.
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`Case IPR2019-00106
`Patent 5,699,275
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`
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`JOSEPH MICALLEF, ESQ.
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`ALBERT DEAVER, ESQ.
`McAughan Deaver PLLC
`550 Westcott Drive, #375
`Houston, Texas 77007
`
`
`
`
`The above-entitled matter came on for hearing on Monday, November
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`4, 2019, commencing at 2:45 p.m., at the U.S. Patent and Trademark Office,
`600 Dulany Street, Alexandria, VA, 22314.
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`Case IPR2019-00106
`Patent 5,699,275
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`P R O C E E D I N G S
`- - - - -
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`BAILIFF: All rise.
`
`JUDGE MEDLEY: We’re on the record. Good afternoon. This is
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`the hearing for IPR2019-00106 involving U.S. Patent No. 5,699,275. At this
`time we’d like the parties to please introduce Counsel for the record,
`beginning with Petitioner.
`
`MR. MICALLEF: Thank you, Your Honors. Good afternoon; Joe
`Micallef with Sidley Austin for Petitioner, Microsoft Corporation. With me
`is my partner, Scott Border (phonetic), and my client, Mark Taylor from
`Microsoft.
`
`JUDGE MEDLEY: Thank you; for Patent Owner?
`
`MR. DEAVER: Good afternoon, Your Honors, Al Deaver for Patent
`Owner.
`
`JUDGE MEDLEY: Okay. Each party has 30 minutes, total time, for
`their arguments. Petitioner, you’ll proceed first and you can reserve
`argument time if you’d like, and then Patent Owner you’ll respond to
`Petitioner’s presentation. You may reserve argument time for sur-rebuttal.
`Petitioner, do you wish to reserve some of your time?
`
`MR. MICALLEF: Yes, Your Honor, I’d like to reserve 10 minutes;
`thank you.
`
`JUDGE MEDLEY: Patent Owner?
`
`MR. DEAVER: Fifteen, please.
`
`JUDGE MEDLEY: So, as a reminder, please refer to the slide
`number so that we may follow along. Also, please speak into the
`microphone at the podium so that we all may hear. We’d like to remind the
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`Case IPR2019-00106
`Patent 5,699,275
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`parties that this hearing is open to the public and the transcript will be
`entered into the public record of the proceeding. Petitioner may begin.
`
`MR. MICALLEF: Thank you, Your Honors. Once again, this is Joe
`Micallef for Petitioner, Microsoft. Your Honors, I know you just had a
`hearing on this same patent, this same claim, this same prior art reference;
`and I’ve looked at the papers in that proceeding and it appears to be the
`reading, the analysis on that Sugita prior art reference is very similar, if not
`the same. So, I’m going to try not to go over the things that you just spent
`an hour or so talking about; but I do want to hit a couple of high level points
`in this proceeding. Now, I’d like to start with ours --
`
`JUDGE MEDLEY: Keep in mind though that the transcript for that
`other proceeding will not be going into the record of the ’106 case.
`
`MR. MICALLEF: I certainly understand that, Your Honor.
`
`JUDGE MEDLEY: So, if you want to say something, you should say
`it here.
`
`MR. MICALLEF: I will definitely do that; thank you. I want to start
`with slide 17 of our demonstratives. And Patent Owner’s argument here
`renders down to what, I think, it renders down to in the other proceeding as
`well, a request, a least implicit request, that the Board read a temporal
`limitation into the claim. What’s sort of interesting here is the temporal
`limitation that Patent Owner has asked to be read in, at least in its Patent
`Owner response to the sur-reply is -- and it’s captured, I think, up there on
`our slide number 17, where we have a quote from the Patent Owner response
`at page 7 -- it’s a temporal limitation relating to the functionality of the
`mobile units of the claim.
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`Now, I want to start to make two points about that, that we made in
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`our papers, and that is they’ve never justified reading that kind of limitation
`in. They’ve never explained why the ordinary meaning of the claim
`language requires that, or why there’s something in the specification that
`imposes that spin on it without limitation or pointed to anything in the
`prosecution history or the extrinsic record; they’ve just said it requires it.
`We’ve pointed out -- and by not justifying it, I think they waited, because we
`all know what the law is under Phillips, they have to, if they’re asking for
`something other than the ordinary meaning, they’re going to have to justify
`it on the extrinsic record.
`
`I think we’ve pointed out in our brief that this kind of operability
`language is generally understood as its ordinary meaning includes no
`temporal limitation, at least not in the context of an apparatus claim, like we
`have here. Obviously, I don’t know what Counsel for Patent Owner’s going
`to say when he stands up here; but I did here earlier this afternoon that
`Patent Owner now has a different temporal limitation that they would like to
`have read into this claim, at least in the other proceeding.
`
`And that temporal limitation is a temporal limitation that relates to the
`functionality of the manager host which, of course, is a different component
`of the claim. And that temporal limitation has also not been justified in any
`of the filings here. I heard it was supposedly justified by the portion of the
`claim construction, the phraseology operable to decide; but once again,
`under Parker Vision, that kind of operability language in its ordinary
`meaning doesn’t have any temporal limitation.
`
`I heard him point to passages in the Spec., column 2, lines 23 to 24;
`column 4, lines 12 to 15 of the ’275 Patent. I studied that at the break, and
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`I’m happy to discuss them; but there’s no timing element there; there’s no
`temporal limitation; and even if there were, of course, that would not limit
`the claim. So, what’s happening here, it looks like, is that Patent Owner
`could not justify its first temporal limitation, so he’s shifting gears and he
`asking for a different temporal limitation. Neither of those limitations are in
`the language of the claim, and he hasn’t justified interpretation; so, they
`must be rejected.
`
`However, Sugita satisfies the claim even under that interpretation; and
`I’d like to jump to -- and it does it in two ways, as we pointed out in the
`petition; and I’d like to treat them individually. First of all, as Your Honors,
`I’m sure understand, Sugita discloses transmitting patch messages using a
`Group ID, or more than one Group ID. In fact, Sugita discloses different
`transmissions to different groups, multiple transmissions; where one
`transmission would go to a group involving the first mobile unit in the claim
`and a different transmission addressed to a different group would go to a
`group involving the second mobile unit of the claim.
`
`This is how a person of ordinary skill in the art would understand the
`disclosure of Sugita, and that is the testimony of Dr. White. Dr. White in his
`declaration, Exhibit 1003, at paragraph 151, makes it very plain that that is
`how a person of ordinary skill in the art would understand Sugita. Patent
`Owner has no evidence on the understanding of Sugita. Patent Owner
`declined to provide a declarant, a witness and expert in the field. So,
`Counsel for Patent Owner can get up here and say well, we think it means;
`but that’s just attorney argument, that’s not evidence. It’s entitled to no
`weight, as the Federal Circuit has said time and time again.
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`So that the record before Your Honors in this proceeding is that the
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`evidence says a person of ordinary skill in the art would read Sugita to
`disclose one transmission to a first group, and a different transmission of that
`same patch to a second group. That satisfies the claim -- and all those
`mobile units in those two groups are operable to receive that patch and
`implement it -- that satisfies the claim under what we think is the proper
`interpretation. But it also satisfies the claim under the improper, temporally
`limited claim interpretations that Patent Owner is advancing here.
`
`Now, Sugita satisfies the claim in a wholly alternative separate way
`with its individual transmissions. As you may recall how Sugita works, is it
`-- on an update list -- it puts the mobile units, identifies the mobile units it
`would like to send patches to; and then when some kind of acknowledgment
`comes back from the mobile units saying I got it, everything’s okay; it
`removes those, successfully, patched mobile units from the list; and at the
`end of a certain period, it determines that if there are still individual mobile
`units on that list, they have not successfully received the patch and, at that
`point, it sends individual messages, individually addressed, to each of those
`mobile units.
`
`Importantly, Sugita discloses that it can be more than one mobile unit
`that’s left on that list and must be patched using individual messages. That
`also -- and those mobile units would all be operable to receive that patch,
`and implement it as required by the claim -- that functionality, therefore,
`also satisfies the claim under the proper interpretation or under the more
`limited interpretation Patent Owner has advanced here. In fact, I would
`submit to you -- can we see slide 25. This is our slide 25, and this is just out
`of the Patent Owner’s sur-reply at page 40 -- where they write the same
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`thing. I mean they admit that this is how it works, right. That the terminals
`that are left on that update list, they each get their own separate transmission.
`In other words, the manager host addresses one of those transmissions to one
`of those units and not to the others. So, that language satisfies the claim
`even under the narrow interpretation; and, I think, Patent Owner admits it
`right here in the sur-reply at page 10.
`
`I will make one more point and then take your questions, or reserve
`the rest of my time. And that is, I believe there was a question about --
`earlier today -- about what happens in Sugita if it gets sent the patch a
`second time? The answer to that is set forth, squarely, in Figure 6 of Sugita
`and the description of that figure because that’s what Sugita says happens.
`And the answer is that it will load that patch again; and I say that because
`there is nothing in Figure 6 for the associated description which makes a
`check to determine whether it has already done it. All that Figure 6 says is it
`downloads the appropriate data into an area of memory -- an area of RAM. I
`think it says makes sure it gets all of it; checks for a Group ID to determine
`whether it has to acknowledge; and then it copies the patch into its other
`portion of memory where it executes it.
`
`So, the plain reading of Sugita -- it’s going to do that every time it
`gets that patch. With that, I would like to reserve the rest of my time unless
`there are questions for me.
`
`JUDGE MEDLEY: I have no questions. Do you have questions?
`
`JUDGE PESLAK: I don’t.
`
`JUDGE SCANLON: I do not either.
`
`JUDGE MEDLEY: Okay. So, you used about eleven minutes. You
`can’t reserve more than that.
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`MR. MICALLEF: I understand.
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`JUDGE MEDLEY: So, you have 11 minutes left.
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`MR. MICALLEF: That’s okay.
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`JUDGE MEDLEY: Is that okay?
`
`MR. MICALLEF: Thank you, Your Honor.
`
`MR. DEAVER: Excuse me. Good afternoon, again, Your Honors.
`
`Al Deaver for Patent Owner. Again, this matter comes down to three things:
`the proper construction of the claim, the Patent Owner contends that it’s the
`ordinary customary meaning of the term, each term in the claim, as
`construed by the Board at Petitioner’s request; second, it’s the content of
`Sugita, what it discloses, what it doesn’t disclose; and then third, and
`perhaps most importantly, it’s the content of the petition, in particularly,
`what the petition doesn’t address. And remember, this is a petition where
`the Petitioner presented the claim construction issues that it felt were most
`important and which the Board adopted. And so, they knew going in what
`they had to demonstrate for a successful petition.
`
`Counsel points out that Patent Owner did not present an expert, but an
`expert is not necessary to point out, through attorney argument, what’s not in
`the petition. An expert is not necessary for ordinary meaning of claim terms.
`So, I think, that argument falls a little flat in the context of this case.
`Counsel attempts to describe Patent Owner as changing horses midstream on
`claim construction. That is not true at all. In the response to the Board’s
`decision, we argue that there is a timing issue in this claim the way it’s
`written. The operable to language we’re all familiar with in general; and
`plaintiff, Petitioner likes the Parker Vision case, but when the panel looks at
`the Parker Vision case, and, as cited by Petitioner, there’s a very important
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`phrase in Parker Vision which says -- and this will be slide 20 of Petitioner’s
`slide deck -- similarly, a prior art reference may anticipate or render obvious
`an apparatus claim -- depending on the claim language if the reference
`discloses an apparatus that is reasonably capable of operating.
`
`So, the mantra of operable to in this case is not sufficient to gut this
`claim of the requirement that the manager host has to decide not to send the
`patch message to a second mobile unit that is capable of using that patch
`message before it sends it to the first mobile unit. That’s the way the claim’s
`written. That’s the ordinary and plain construction of the claim. We’re
`asking the panel to give life to every word in the claim.
`
`I would like to go to the ’275 Patent for a moment. This is the ’275
`Patent, at column 5. The ’275 Patent discusses that each mobile unit --
`
`JUDGE MEDLEY: Could you tell us which line, please?
`
`MR. DEAVER: Yes; this is line 5. Beginning in line 5 of column 5,
`each mobile unit, 20 and 22, 24, 26, 28, and 30 is operable to receive the
`patch message. Dropping down to line 7 -- each mobile unit can create
`patch code; and dropping down to line 14 -- manager host can address patch
`messages to mobile units as appropriate for the patch file being transmitted.
`
`So, the ’275 Patent explains claim 1 in the context that there are
`multiple mobile units that are operable to receive; operable to create; and
`operable to switch. And then the ’275 Patent discloses that the manager host
`can address that patch message to mobile units, as appropriate, for the patch
`file.
`Down in line 22, for example, manager host can address a patch
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`message such that it will be transmitted to both mobile units, 23 and mobile
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`unit, 24, with client host, 18. So, that would be an instance when mobile
`units 26, 28, and 30, which are operable, do not receive the patch message.
`
`So, again, the declaration for Mr. White does not address this aspect
`of claim 1. It’s not in the petition; there’s no support for it. Unless there’re
`questions, I’m done.
`
`JUDGE MEDLEY: Okay. I don’t have any questions. Do you,
`Judge Scanlon, or Judge Peslak?
`
`JUDGE SCANLON: No questions from me.
`
`JUDGE PESLAK: No questions from me either.
`
`JUDGE MEDLEY: Okay. So, you used approximately 11 minutes;
`so you have 11 minutes left. Are you ready, Petitioner, Counsel for
`Petitioner, you ready?
`
`MR. MICALLEF: Yes. Thank you, Your Honor. I did not hear any
`argument from Patent Owner’s Counsel that I was wrong when I said that
`Sugita satisfies the claim under his more limited claim interpretation. So, I
`take that as a concession.
`
`I did hear him say that we didn’t say that Dr. White and the petition
`never said anything about the operability of the mobile units. We can walk
`through Exhibit 1003 of the petition; we spent a number of pages on that.
`I’ll let the petition speak for itself, and Dr. White’s testimony speak for itself
`there. I don’t want to waste your time. The only other thing I would say is,
`as far as the content of the prior art, I think Counsel mentioned, I think it
`does need some testimony on that. Otherwise, it’s just -- the plain language
`of Sugita and not the spin he’s putting on it. So, he has no testimony, just
`attorney advocacy, attorney argument which, as I said, is entitled to no
`weight whatsoever. I have no further points, Your Honor.
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`JUDGE MEDLEY: Okay; thank you.
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`MR. DEAVER: We do not concede that Sugita discloses claim 1 in
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`any fashion. Thank you.
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`JUDGE MEDLEY: Okay; thank you. All right; that was very quick.
`Thank you for your presentations. We will issue a final written decision in
`due course. I appreciate your presentations; and we are adjourned.
`(Whereupon, the proceedings at 3:06 p.m. were concluded.)
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`Case IPR2019-00106
`Patent 5,699,275
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`
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`PETITIONER:
`
`Joseph Micallef
`SIDLEY AUSTIN LLP
`jmicallef@sidley.com
`
`
`PATENT OWNER:
`
`Albert Deaver
`Robert McAughan
`Christopher Lonvick
`MCAUGHAN DEAVER PLLC
`adeaver@md-iplaw.com
`bmcaughan@md-iplaw.com
`clonvick@md-iplaw.com
`
`Jeffrey Andrews
`YETTER COLEMAN LLP
`jandrews@yettercoleman.com
`
`
`13
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