Trials@uspto.gov
`571-272-7822
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`Paper # 37
`Entered: November 30, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RESIDEO TECHNOLOGIES, INC. and
`CENTRAL SECURITY GROUP -- NATIONWIDE, INC.,
`Petitioners,
`
`v.
`
`UBIQUITOUS CONNECTIVITY, LP,
`Patent Owner.
`____________
`
`IPR 2019-01335 (Patent 8,064,935 B2)
`IPR 2019-01336 (Patent 9,062,655 B2)
`____________
`
`Record of Oral Hearing
`Held: October 27, 2020
`____________
`
`Before JEAN R. HOMERE, JOHN F. HORVATH, and
`MELISSA A. HAAPALA, Administrative Patent Judges.
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`IPR 2019-01335 (Patent 8,064,935 B2)
`IPR 2019-01336 (Patent 9,062,655 B2)
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`BENJAMIN PLEUNE, ESQUIRE
`CHRISTOPHER T. L. DOUGLAS, ESQUIRE
`ADAM J. DOANE, ESQUIRE
`Alston & Bird LLP
`ben.pleune@alston.com
`christopher.douglas@alston.com
`adam.doane@alston.com
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`STEPHANIE L. SCHONEWALD, ESQUIRE
`PETER A. FLYNN, ESQUIRE
`Choate, Hall & Stewart LLP
`sschonewald@choate.com
`pflynn@choate.com
`
`COURTNEY S. ALEXANDER, ESQUIRE
`DANIEL A. KENT, ESQUIRE
`Kent & Risley LLC
`courtneyalexander@kentrisley.com
`dankent@kentrisley.com
`
`
`
`
`
`
`
`
`The above-entitled matter came on for hearing on Monday,
`October 26, 2020, commencing at 1:00 p.m. EDT, by video/by telephone.
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`IPR 2019-01335 (Patent 8,064,935 B2)
`IPR 2019-01336 (Patent 9,062,655 B2)
`P R O C E E D I N G S
`- - - - -
`JUDGE HORVATH: Good morning, everyone, or afternoon, I
`should say. This is Judge Horvath with the Patent Trial and Appeal Board.
`With me are Judges Homere and Haapala. We are here for a proceeding IPR
`2019-01335 and -01336, captioned Resideo Technologies v. Ubiquitous
`Connectivity. And Central Security Group -- Nationwide has been joined as
`a party to this proceeding -- or to these proceedings.
`If I can ask now that -- well, before I do that let me say that we have
`had -- the parties have requested 60 minutes of oral argument time per side.
`And in addition to that, Resideo Technologies has asked that one of its
`counsel be able to participate as a LEAP participant, which is a program in
`which newer counsel is permitted to -- or given the opportunity to present
`for a party. And because they are new and have not presented previously, or
`have only presented a limited number of times, we extend to them a little
`extra time to present.
`So, Resideo requested that one of their counsel be admitted as a
`LEAP participant. That request was granted, and they are granted 15 extra
`minutes. So, Resideo will have 75 minutes to present their arguments. Or I
`should say the Plaintiffs, being Resideo Technologies and Central Security
`Group, will have 75 minutes. And the Patent Owner, Ubiquitous, will have
`the 60 minutes originally granted.
`So, with that being said, can I ask counsel for -- Petitioner are you on
`the line and can you identify yourself, please?
`MR. PLEUNE: Yes, Your Honor, this is Ben Pleune on behalf of
`Petitioner Resideo. And with me is my colleague, Adam Doane, who is the
`LEAP participant that you just mentioned.
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`IPR 2019-01335 (Patent 8,064,935 B2)
`IPR 2019-01336 (Patent 9,062,655 B2)
`JUDGE HORVATH: Okay, thank you, Mr. Pleune. And counsel for
`Central Security Group -- Nationwide, are you on the line?
`MS. SCHONEWALD: I am, Your Honor. This is Stephanie
`Schonewald.
`JUDGE HORVATH: Thank you, Ms. Schonewald. And you'll
`excuse me, I'm just taking notes here. And counsel for Ubiquitous
`Connectivity are you on the line?
`MR. ALEXANDER: Yes, Your Honor, this is Cortney Alexander
`with Kent & Risley.
`JUDGE HORVATH: Okay, thank you, Mr. Alexander. So, as I said,
`both sides have been granted 60 minutes, and Resideo has been granted an
`extra 15 minutes because of the participation of Mr. Doane as a LEAP
`practitioner.
`First of all, I'd like to thank everyone for -- we apologize for not
`being able to have in-person hearings given the COVID-19 pandemic. So,
`we appreciate everyone's cooperation and these hearings have generally
`gone pretty smoothly. We do have a court reporter on the line. And in the
`event that counsel should have video connection problems or audio
`connection problems, we will hopefully pick that up as, you know, quickly
`and, you know, give everybody the opportunity to try to reconnect. And
`then we have the court reporter who can let us know at what point that
`happened and try to reconstruct where people dropped off. Hopefully, this
`doesn't happen. But, you know, we'll try to handle that situation as best we
`can.
`
`So, with all that being said, Mr. Pleune, I don't know if you're
`planning first or if Mr. Doane is planning on presenting first. But if you can
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`IPR 2019-01335 (Patent 8,064,935 B2)
`IPR 2019-01336 (Patent 9,062,655 B2)
`let us know -- would you like to reserve any time for rebuttal and if so, how
`much?
`MR. PLEUNE: Yes, I'll be presenting first, Your Honor. And we'd
`like to reserve 15 minutes for rebuttal.
`JUDGE HORVATH: Was that 15 minutes?
`MR. PLEUNE: Yes, Your honor.
`JUDGE HORVATH: Okay, thank you. That will give you 60
`minutes total time to present your argument. Again, there are two cases, and
`you can present them in any order you want. If you want to present one case
`and then followed by the other or if you just simply want to present issues,
`it's your time to proceed as you see fit. Let me set my stopwatch here. So,
`you will have -- you've reserved 15 minutes, so you will have 60 minutes to
`present your principal case. I will set my stopwatch here for 60 minutes. I
`will give you a warning when you are 5 minutes about to expire and then a
`second warning when your 2 minutes about to expire, and then we'll let you
`know when your 60 minutes has expired.
`So, just let me set the time here. Give me a few seconds. And you
`may begin.
`MR. PLEUNE: Thank you, Your Honor. The claims of the '935 and
`'655 patents are obvious in light of the cited prior art. For many of the
`claims, Patent Owner concedes that all the limitations are disclosed by the
`prior art. For the others, the additional limitations were well known as of the
`priority date of the '935 and '655 patents. And were well known for the very
`purpose for which those elements are recited in the claims.
`And so, I'd like to begin with our roadmap, which is Slide No. 2.
`And to address the point that you just made, Your Honor, we're going to
`really handle this with issues. We do have those broken up by patent and we
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`IPR 2019-01335 (Patent 8,064,935 B2)
`IPR 2019-01336 (Patent 9,062,655 B2)
`do have slides that cover most of the issues that were raised in the IPR. But
`we had a prehearing conference, and Your Honors identified those specific
`issues that they would like the parties to address. And so, after a brief
`overview, we're going to start with those.
`And so, turning to Slide 4. The '935 and the '655 patents are related
`and share common specifications. So, to that point about addressing issues,
`really the arguments for one of the patents will generally apply to the other.
`Turning to Slide 5, we have the priority date based on a provisional
`application of November 18, 2004.
`And then on Slide 6, I have Figure 1 of the '935 and '655 patents.
`And the Patent Owner made clear that the invention of the '935 and '655
`patents is to employ a direct cellular based communication system. And if
`we turn to Slide 7, this provides a figure from a declaration that was
`provided by Patent Owner's expert, Mr. Zatkovich, in the district court
`proceeding that was before the IPR. And this figure is consistent with the
`specification of the '935 and '655 patents as Mr. Zatkovich argued.
`The specifications state at Column 1, lines 18 to 22, the present
`invention relates to a remote monitoring and control system for environment.
`More specifically, the system relates to on demand bi-directional
`communication between a remote access unit and a multifunctional base
`control unit to a geographically remote location.
`So, we have three devices. We have a remote unit. We have a base
`unit. And an environmental device in the home. And Mr. Zatkovich
`explained that the environmental device detects the condition and
`communicates that condition to the base unit. The base unit communicates
`that second message to the remote unit through the cellular network. The
`remote unit directs the base unit to execute a command, which takes the
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`IPR 2019-01335 (Patent 8,064,935 B2)
`IPR 2019-01336 (Patent 9,062,655 B2)
`form of a third message from the remote unit to the base unit. And then
`finally, the command is communicated from the base unit to the
`environmental device.
`And if we turn to Slide 8, that's what we see in the claims. And so,
`here we have Claim 1 of the '935 patent. And if we turn to Slide 9, we see
`the environmental device highlighted. And on Slide 10, we see the base unit
`that controls the operation of the environmental device. Turning to Slide 11,
`we see a remote unit that is connected wirelessly and that can send and
`receive SMS messages. On Slide 12, we see a wireless connection between
`that base unit and the remote unit. And then finally, on Slide 13, we see that
`there are SMS messages that are sent between the remote unit and the base
`unit. And that's for purposes of controlling the operation of an
`environmental device.
`And so that brings us to Slide 14. And for the claims that we have
`highlighted in Slide 14, Patent Owner offers virtually no argument that the
`prior art fails to disclose one of these limitations. For one of the grounds --
`so that's essentially true for Oinonen and Wu. For one of the grounds, the
`Bielski and Wu ground, Patent Owner argues that the Bielski reference does
`not teach bi-directional messages between the remote unit and the base unit.
`And my colleague, Adam Doane, is going to address those arguments
`shortly.
`But if we turn to Slide 15, I'd like to briefly disclose and discuss the
`prior art. So, Slide 15 has Figure 4 from the Oinonen reference. And as
`depicted in Figure 4, we see that Oinonen is a very basic system. It has TE1
`and TE2. Those are two telecommunication terminals. They are sending
`messages for very simple tasks. So, for example, to lock a door. And the
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`IPR 2019-01335 (Patent 8,064,935 B2)
`IPR 2019-01336 (Patent 9,062,655 B2)
`system as it's described is only capable of communicating with a single
`environmental device.
`Now, turning to Slide 16, we have a drawing of Figure 1 of the
`Whitley reference and that describes connections to multiple environmental
`devices. This is a much more sophisticated system. And we see at the top
`of page 9 of the Whitley reference it states that gateway 20 may couple to a
`remote facility 12. And a monitor control will monitor and control various
`devices within facility 12 such as -- like security sensors, an answering
`machine, and a home computer, et cetera. So, that is Ground 1.
`If we turn to Slide 17, we have an introduction of Ground 2. And
`here we have Figure 2 of the Bielski reference, which describes the system
`with a remote unit. And we see the blue box around what appears to be a
`palm pilot on the right side of Slide 17. And the remote unit is directly
`connected to a base unit, and that's the red box around the control regulation
`unit. And the base unit can send messages via mobile communications to a
`building for purposes of controlling environmental devices. And in the case
`of Figure 2, we have the example of an alarm system.
`So, Bielski discussed mobile communications. And here in Figure 2
`of the Bielski reference we see GSM. We see GPRS and UMTS. But
`Bielski only mentions SMS and it only does so one time. It doesn’t provide
`any details about SMS. And it only explicitly discloses SMS messages that
`are sent from the base unit to the remote unit.
`Which brings us to Slide 18. And this is where we have the Wu
`reference. So, if you look at Figure 1 of Wu, this looks very familiar to what
`we saw in Figure 2 of Bielski. Starting on the right, we have a remote unit, a
`cell phone, or a laptop. It's connected to a base unit, the HNS gateway, and
`environmental devices connected to the home network.
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`IPR 2019-01335 (Patent 8,064,935 B2)
`IPR 2019-01336 (Patent 9,062,655 B2)
`We even have one of the same mobile networks described in Bielski,
`GSM is recited in Figure 1 of the Wu reference. But Wu also gives us Figure
`2. And Figure 2 explicitly discloses that the bi-directional messages
`between the remote unit and the base unit, could be sent by -- one of several
`ways, including WAP, HTTP, and SMS. And so, Wu gives much more
`detail about SMS and the benefits of using SMS messages for this type of
`system.
`And so, that brings us to motivation to combine. And one of the
`issues that the Board asked us to address was the reason we set up our
`combinations the way we did and whether that was proper. And there were
`certainly some case citations from the parties throughout the briefing. And I
`want to start with the PTAB rules. And there's no requirement that the
`motivation to combine somehow identifies a failing in a reference or that a
`certain reference can only be relied on for so many limitations.
`Looking at 35 U.S.C. § 312(a)(3), this system requires that a
`petitioner identify in writing and with particularity each claim challenged,
`the grounds on which the challenge to each claim is based, and the evidence
`that supports the grounds for the challenge to each claim. And there is no
`question that all of that was provided to Ubiquitous in the Petition. There's
`also no question that Petitioner complied with 37 C.F.R. 42.104.
`And the Federal Circuit addressed a very similar issue in Realtime
`Data v. Iancu. This was the situation where one of the two references was
`identified as having the limitations for all of the claims. And that case
`instructs that in such a situation where there is an obviousness argument
`where one of the references identifies all the limitations in a particular claim,
`then it was error not to also consider whether that reference anticipates. And
`according to the Federal Circuit --
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`IPR 2019-01335 (Patent 8,064,935 B2)
`IPR 2019-01336 (Patent 9,062,655 B2)
`JUDGE HAAPALA: Mr. Pleune.
`MR. PLEUNE: Yes.
`JUDGE HAAPALA: Is Petitioners' position that Oinonen anticipates
`the challenged claims?
`MR. PLEUNE: So, our position is that Oinonen describes a very
`simple system that was only capable of connecting to a single environmental
`device. If we turn to Slide 19, what we see there is Patent Owner's expert,
`Mr. Zatkovich, describing the invention of the '935 and '655 patents. And
`there he said that one of the benefits of the invention was an ability to
`connect to multiple environmental devices. We certainly had the concern
`that this would have shown up in one of Patent Owner's arguments that there
`wasn't multiple environmental devices in the primary reference or the
`primary reference disclosed a -- disclosed a base unit that was incapable of
`connecting to multiple environmental devices.
`And so, as it turns out, that was not challenged by the Patent Owner.
`They have conceded that all of those limitations are met. So, I believe that
`all of the limitations of the Oinonen reference have been met. And I believe
`that Patent Owner would agree with that.
`JUDGE HAAPALA: Okay, thank you. So, just to reiterate your
`position is that all of the limitations are met by Oinonen alone, yes?
`MR. PLEUNE: I think that now where we are in this proceeding
`having gone through the briefing, certainly we had concerns that arguments
`would be raised, particularly with respect to the fundamental nature of the
`Oinonen reference and that argument hasn't come up. And so, I think now at
`the end of this proceeding, it has been demonstrated that all of the
`limitations are disclosed in Oinonen.
`JUDGE HAAPALA: Okay, thank you.
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`IPR 2019-01335 (Patent 8,064,935 B2)
`IPR 2019-01336 (Patent 9,062,655 B2)
`JUDGE HOMERE: Counselor.
`MR. PLEUNE: Yes, Your Honor.
`JUDGE HOMERE: This is Judge Homere. If you believe that the
`Oinonen reference anticipates the claim, then what is the basis for the 103?
`Wouldn't that suggest that because -- due to 103, under Graham v. Deere,
`you have to identify the limitation that's missing from the primary reference
`and then bring in the other reference in order to meet that. But from what
`you're saying here is that the primary reference seems to be teaching
`everything, therefore, the argument that this rejection under obviousness
`does not meet the standard under Graham v. Deere. What do you say about
`that? When the challenge itself does not identify a particular limitation that's
`missing from the primary reference in order to bring in the secondary
`reference.
`MR. PLEUNE: So, yes, Your Honor. My understanding a moment
`ago we were talking about motivation to combine. Let me step back and
`address the Graham Factors. So, the Graham Factors instruct that with an
`obviousness combination, that there is -- that the petitioner should show a
`difference between the prior art and the invention of the patent. And that's
`exactly what we did here.
`And so, Patent Owner's expert, Mr. Zatkovich, said that the invention
`is multiple environmental devices. We looked at the claim. We know that
`the environmental device is one or more. We know that that is an element of
`these claims. And so, we pointed out in the Petition that one difference was
`that the Oinonen reference is going through one environmental device. And
`so, we absolutely met that Graham Factor, and we met it in the Petition.
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`IPR 2019-01335 (Patent 8,064,935 B2)
`IPR 2019-01336 (Patent 9,062,655 B2)
`JUDGE HOMERE: No, but did you identify in the claim the
`limitation that's missing? Because looking at the claim, I do not see a
`requirement for multiple devices. Is there?
`MR. PLEUNE: Yes, I don't believe that there is a requirement that it
`be a limitation of the claim necessarily. But, of course, the claims that
`require an environmental device, that of course, can be one or more
`environmental devices. Their expert, Mr. Zatkovich, said that this was a
`fundamental element of their invention this ability to connect to multiple
`environmental devices. And so, that is absolutely the point that we were
`addressing both from the Graham Factors and the motivation to combine. I
`also point out that the Realtime Data case does make the point that
`anticipation is the epitome of obviousness.
`JUDGE HOMERE: Okay.
`JUDGE HORVATH: Going back to the motivation to combine. One
`of the arguments I think that Patent Owner makes in their response was that,
`you know, your rationale for combining the teachings of Oinonen and
`Whitley were -- that as you said, Oinonen really is a fairly simple description
`of controlling one device at a time, such as a door. And the status of a door,
`whether it's open or closed or locked or unlocked, versus Whitley, I think,
`which talks about controlling multiple devices. And that was your rationale
`for the modification.
`You know, Patent Owner -- well, I heard you say two things. One is
`that the environmental device, it's an environmental device, which could be
`actually more than one. But if it was limited to one, then Patent Owner
`makes this argument that the motivation to combine has to be based on a
`limitation in the claim itself. Do you agree with that? And if not, then under
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`IPR 2019-01335 (Patent 8,064,935 B2)
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`KSR, you have to combine references in order to meet a limitation. Do you
`agree with that or not? And why?
`MR. PLEUNE: Okay, then I won't belabor of course. You know, I
`do think that this is a very conventional argument where they certainly could
`have made this point that somehow -- or that multiple environmental devices
`like their expert say it is required. And they did not. They've essentially
`conceded that point. But, no, I don't believe the motivation to combine
`meets defined a basis in the claim.
`And I do believe that there's two cases that are instructive on this
`point. And both of them have been cited. The Realtime Data v. Iancu -- it
`says a motivation to combine may be found explicitly or implicitly in market
`forces, design incentives, the interrelated teachings of multiple patents. Any
`need or problem known in the field of endeavor at the time of invention and
`addressed by the patent. And the background, knowledge, creativity, and
`common sense of the person of ordinary skill.
`Jumping back even further, of course, Realtime Data follows in the
`footsteps of KSR. KSR said, as our precedence made clear, however, the
`analysis need not seek out precise teachings directly to the specific subject
`matter of the challenged claim. And it goes on to say, when a court
`transforms the general principle into a rigid rule that limits the obviousness
`inquiry as the court of appeals did here, the Supreme Court overruled the
`Federal Circuit, it's error.
`And I believe that that is the holding from KSR and I believe that's
`the holding of Realtime Data v. Iancu. The idea is not to employ some rigid
`formula so that we can say, oh, (inaudible), you know, the obviousness
`inquiry's thrown out. I think the idea is to look at what would be known to a
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`IPR 2019-01335 (Patent 8,064,935 B2)
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`person of ordinary skill in the art and determine whether or not the invention
`is obvious.
`And I'll briefly notice that I think that to hold otherwise would be
`somewhat of a bizarre outcome. But I think we have multiple references.
`The parties seem to concede. So, everything is disclosed. We pointed out in
`specificity where each limitation could be found. We have a very detailed
`reason why a person of ordinary skill in the art would combine. And then
`for some reason that's not enough. I think that that's what Realtime and KSR
`is teaching us that we don't employ rigid rules. We try and determine
`whether or not a patent is obvious. Of course, anticipation is the epitome of
`obviousness.
`JUDGE HORVATH: Thank you.
`MR. PLEUNE: No problem.
`Slide 22, Your Honors, I'll briefly discuss Bielski, Wu. I've touched
`on this a bit already. In Bielski, there was a disclosure of SMS messages.
`Again, it didn't provide details. It only explicitly talked about those in terms
`of the remote unit -- or the base unit to the remote unit. And Wu expressly
`discloses the details of SMS and that those can clearly be bi-directional
`between a remote unit and a base unit. Patent Owner here argues that the
`Wu reference is narrow and teaches away from using SMS messages. And I
`just want to point out that it's very clear, Wu's is a scientific paper. If you
`look at that reference, the first several pages are really a description of the
`system that the authors envision. And there's a lot of detail about that
`system. Now, the latter part, as in typical scientific papers, talks about the
`specific implementation. It talks about the testing that they did and the
`specific components that they used. That's where we see the Nokia phone
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`IPR 2019-01335 (Patent 8,064,935 B2)
`IPR 2019-01336 (Patent 9,062,655 B2)
`and the Gnokii network that they use. But certainly, that reference is not so
`narrow.
`So, now, Your Honors, I'd like to turn to Slide 92 of the presentation.
`And I apologize for the big leap, but I want to make sure that we cover the
`items that were identified in the prehearing conference. But if you turn to
`Slide 92, you'll see that this addresses the geo-fence limitation of Claim 1 of
`the '655 patent.
`And so, we turn to Slide 93, I want to start with the claim. Yes,
`certainly, geo-fences are not new. The first part of the claim describes that
`same system that we've been talking about since the beginning of my
`presentation. You have a remote unit. You have a base unit. You have an
`environmental unit. And messages are distributed between the remote unit
`and the base unit for purposes of controlling an environmental device.
`But then we kind of have this (inaudible) on at the end. We have,
`okay, now we're going to talk about a notification and that notification is
`going to be based on a geo-fence. And if we turn to Slide 94, we've broken
`that claim into two parts. And so, the first part is a cellular remote unit and
`it's configured to determine position data of the cellular remote unit. And
`then it determines when the cellular remote unit is outside of a geo-fence.
`We turn to the second part of this limitation. It says, the cellular remote unit
`is configured to transmit a notification via simple message service
`responsive to determining that the cellular remote unit is outside of the geo-
`fence. And so, with the exception of the term, simple message service, this
`is a pretty simple and straightforward description. And for that reason, it
`continues to be Petitioners' position that this term should be given its plain
`meaning.
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`IPR 2019-01335 (Patent 8,064,935 B2)
`IPR 2019-01336 (Patent 9,062,655 B2)
`If we turn to Slide 95, we have Patent Owner's construction. So,
`Patent Owner's construction begins by restating the clause a few lines up --
`that the cellular remote unit is configured to determine that the cellular
`remote unit is outside the geo-fence. So, we have a bit of a duplication issue
`going on here. And then it introduces the term, report this information. So,
`it's not clear exactly what is intended by, report this information. But Patent
`Owner attempts to be narrowing the term, notification. And that brings us to
`the prosecution history that was raised on the preconference call with Your
`Honors. So, again, it's Petitioners' position that this term is entitled to its
`plain and ordinary meaning and that Patent Owner has not sufficiently raised
`any reasons to part from that.
`But the term, notification, was never really discussed during
`prosecution. So, Patent Owner cites to page 476, of Exhibit 1002, which is
`the prosecution history for the '655 patent. And I want to turn to that and I'm
`going to start on the previous page, so 475 of Exhibit 1002. And so, the
`examiner starts at the bottom of page 475 and he recites Claim 38 and the
`particular limitation that wherein the command is received from the cellular
`unit responsive to determining that the remote control unit is within the geo-
`fence. And then it goes on to state: according to the applicant's
`specification, this means that the command regarding the environmental
`device is received by the base unit from the cellular bridge unit -- cellular
`remote unit, when it is determined that the remote unit is within a geo-fence.
`And then the examiner goes on and he starts to talk about the specification
`of the '935 and '655 patent. He states, paragraphs 50 and 52 of the
`applicant's specification are the paragraphs that refer to a geo-fence. And
`none of these paragraphs recite a -- receiving the command regarding the
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`IPR 2019-01335 (Patent 8,064,935 B2)
`IPR 2019-01336 (Patent 9,062,655 B2)
`environmental device responsive to determining that the remote device is
`within a geo-fence.
`And so, he goes on to say, these paragraphs disclose reporting
`information from the remote control unit to the base control unit based on
`the geo-fence. But this information reported by the remote control unit is
`that it has traveled a distance that exceeds a program distance from the base
`control unit. So, sorry for all that reading, and I appreciate you bearing with
`me. But this last part, that's exactly what's disclosing to. And for that
`reason, so it's the -- notification in a broad term and as narrowly defined by
`Patent Owner is met by Coon.
`But, and I'll talk about the Coon reference in a moment. But before I
`get there, I do want to point out that just because the examiner said that there
`was not support for -- says that there was not support for a command, does
`not mean that that somehow modifies the term, notification. There is no
`indication that the term, notification, must be narrowly defined so that it is
`no longer a notification if it also includes a command.
`And I want to point out just a few other issues about the prosecution
`history. In particular, I want to look into two claims. And if we turn to page
`506, I just want to briefly note. So, these are two separate claims. And so,
`we do see Claim 38 here. This is what the examiner was talking about.
`There was an amendment to that claim. But 39 that follows it, that is a
`different claim, and it addresses transmitting a notification via simple
`message service. And so, it's not as if the claim was amended to take out
`command and add notification. These were two separate claims.
`And then one other point I would like to make about the prosecution
`history is that on page 510, you know, we see certainly boilerplate language,
`but I do think that it's instructive. The Patent Owner said, to expedite
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`IPR 2019-01335 (Patent 8,064,935 B2)
`IPR 2019-01336 (Patent 9,062,655 B2)
`prosecution and without conceding to the examiner's positions. And so,
`there doesn't seem to have been any agreement at this time as to what the
`examiner may have been saying, and whether or not the Patent Owner
`agreed with that.
`JUDGE HORVATH: Is that, I mean, let me ask you this. I mean,
`that's frankly -- that's the kind of language I expect a patent prosecutor to
`make, right? That we're making this amendment to expedite prosecution
`without conceding this position. Is that something that, you know, does that
`matter as much as the fact that they actually did amend the claims? I mean,
`in other words, how do you weigh those two different aspects, one versus the
`other.
`
`On the one hand, they did amend the claim, so in some sense, that's
`an implicit concession that they're not going to argue this point with the
`examiner. On the other hand, there's this sort of blanket statement of, well,
`we're only doing this to expedite prosecution. How do you weigh those two,
`you know, positions, which are arguably in tension with one another? Or
`how should we weigh, I guess, is my question?
`MR. PLEUNE: You know, it's a good question. And what I would
`start with is the action and their amendment. And I think the issue there,
`Your Honor, is that this does not raise to the level of a prosecution history
`disclaimer or any explicit statement as to the scope of notification. It is an
`amendment, sure. And with respect to this term, command, and I don't see
`anything in this prosecution history that is true commentary on what a
`notification is or is not. But regardless of this prosecution history, in