Paper No. 29
`Entered: May 12, 2021
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2020-00441
`Patent 8,949,954 B2
`____________
`
`Record of Oral Hearing
`Held Virtually: April 21, 2021
`____________
`
`
`
`Before PATRICK M. BOUCHER, STACY B. MARGOLIES, and
`MICHAEL T. CYGAN, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`Entered: May 12, 2021
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2020-00441
`Patent 8,949,954 B2
`____________
`
`Record of Oral Hearing
`Held Virtually: April 21, 2021
`____________
`
`
`
`Before PATRICK M. BOUCHER, STACY B. MARGOLIES, and
`MICHAEL T. CYGAN, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-00441
`Patent 8,949,954 B2
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`NAVEEN MODI, ESQ.
`JOSEPH PALYS, ESQ.
`DANIEL ZEILBERGER, ESQ.
`Paul Hastings LLP
`2050 M Street NW
`Washington, DC 20036
`(202) 551-1700
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`BRIAN KOIDE, ESQ.
`Etheridge Law Group P.C.
`2600 East Southlake Boulevard
`Suite 120-324
`Southlake, TX 76092
`
`
`
`
`The above-entitled matter came on for hearing on Wednesday, April
`
`21, 2021, commencing at 1:00 p.m. EST, by video/by telephone.
`
`
`
`
`
`
`
`
`
`
`
`2
`
`
`
`IPR2020-00441
`Patent 8,949,954 B2
`
`
`P R O C E E D I N G S
`- - - - -
` JUDGE BOUCHER: Good afternoon. This is a trial hearing for IPR
`2020-004441, which concerns
`U.S. Patent number 8,949,954. Google is the petitioner and the
`patent owner is Uniloc 2017. I am Patrick Boucher and also
`joining us by video are Judges Margolies and Cygan. At this
`time we'd like counsel to introduce yourselves as well as
`anyone else you might have with you today. Petitioner, if you
`could introduce yourself please.
` MR. MODI: Sure, Your Honor. Naveen Modi on behalf
`of petitioner Google with the law firm of Paul Hastings.
`With me I have my colleagues Joseph Palys and Daniel
`Zeilberger and Mr. Zeilberger will be presenting the argument
`for Google today.
` JUDGE BOUCHER: Okay. And for the patent owner.
`If counsel would go ahead and introduce yourself please.
` MR. KOIDE: Good morning, Your Honor. This is
`Brian Koide of the Etheridge Law Group for patent owner
`Uniloc 2017.
` JUDGE BOUCHER: Okay. And you have no one else
`with you, Mr. Koide?
` MR. KOIDE: There may be in-house counsel on the
`telephonic line or some of my colleagues. I'm not sure who
`is. But no one is presenting today on video or talking today
`besides me.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`3
`
`
`
`IPR2020-00441
`Patent 8,949,954 B2
`
` JUDGE BOUCHER: Okay. Thank you. Before we begin
`I do want to note, as Mr. Koide just mentioned, that for the
`record -- I want to note for the record that a public audio
`line was requested and granted for the hearing. Our
`understanding is that we're not going to be discussing any
`confidential information today, but if that understanding
`happens to be incorrect and we do get into something
`confidential, I just want to make sure the parties understand
`that is incumbent upon the parties to let us know if we get
`into something confidential so that we can take some
`appropriate action.
` Ultimately a full transcript of the hearing will
`become part of the record for this proceeding. Because this
`is an entirely video hearing we ask generally that people
`keep themselves on mute unless speaking to minimize
`disruptions. Also, to help the court reporter, we ask that
`you try to remember to identify yourself before speaking. If
`you encounter technical or other difficulties during the
`hearing, particularly that you feel might undermine your
`ability to represent your client adequately, please let us
`know immediately. And if you do disconnect, the best way to
`do that is to contact the team members who provided you with
`contact information. In my experience though, these video
`hearings have gone fairly smoothly.
` Every member of the panel has a copy of the
`demonstrative exhibits that were filed by both sides, and in
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`4
`
`
`
`IPR2020-00441
`Patent 8,949,954 B2
`
`addition to copies of the demonstratives, each member of the
`panel has access to the entire record of the proceeding in
`case you want to refer to something that's in the record but
`is not on one of your slides.
` When conducting your presentation please take care
`to refer to the slide number, exhibit, or page number that
`you're discussing for the record. Not only will this make it easier for us to
`follow your
`presentation but it will help with clarity in the transcript.
` As you know from our trial order, each party has a
`total of 45 minutes to present its argument. Because
`petitioner has the burden to show unpatentability of the
`claims, petitioner will proceed first followed by patent
`owner. And both parties may reserve rebuttal time. So I
`just want to confirm and see if there are any questions from
`either party at this time.
` Mr. Modi or Mr. Zeilberger as appropriate, do you
`have any questions as the petitioner?
` MR. ZEILBERGER: No, Your Honor. Thank you.
` JUDGE BOUCHER: Okay. Mr. Koide, do you have any
`questions?
` MR. KOIDE: No, Your Honor. Thank you very much.
` JUDGE BOUCHER: Okay. Thank you. In that case
`we'll begin with the petitioner. And I will set my clock
`here. If you can let me know how much time you would like to
`reserve for rebuttal I will try to give you a warning at
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`5
`
`
`
`IPR2020-00441
`Patent 8,949,954 B2
`
`about five minutes before that.
` MR. ZEILBERGER: Thank you, Your Honor. I'd like
`to reserve 15 minutes.
` JUDGE BOUCHER: Okay. So I'm going to set my timer
`here for 30 minutes. Okay. Whenever you're ready go ahead
`and proceed please.
` MR. ZEILBERGER: May it please the board, Daniel
`Zeilberger on behalf of petitioner Google. As demonstrated
`in the petition for inter partes review, the prior art
`renders each of the challenged claims of the 954 patent
`obvious. Patent owner has not disputed most of what the
`petition demonstrated and in fact it has only really raised a
`single argument. According to patent owner, a user cannot
`specify a cellphone by identifying the phone number of that
`cellphone. As I'll discuss today, all of the evidence says
`otherwise and in fact the 954 patent specification itself
`says otherwise.
` If we could please turn to slide 4. Claim 1 of the
`954 patent is directed to a system for authorizing a request
`for remote access to customer account information. It
`recites many operations that are indisputably in the prior
`art. The dispute between the parties focuses on the
`highlighted language which requires that a notification of
`the request be sent to an address of a separate device
`specified by the customer.
` As an initial matter, patent owner has argued that
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`6
`
`
`
`IPR2020-00441
`Patent 8,949,954 B2
`
`our petition was keyed to erroneous claim constructions and
`it specifically seems to find problematic us advocating for
`certain claim constructions including for the phrase from
`claim 1 highlighted in the previous slide different from the
`constructions adopted by the district court. What this
`argument misses however is that our IPR petition addressed
`both our alternative constructions as well as the district
`court's constructions.
` And if you turn to slide 6, you can see in these
`excerpts from our petition pages 10 to 11 with respect here
`to the determinative issue, an address of a separate device
`specified by the customer, that we explicitly provided both
`our construction which was an address specified by the
`customer where the address is for a separate device and
`provided the district court's construction which was an
`address of a separate device, the separate device having been
`specified by the customer. And we indicated that we would
`provide analysis under both constructions and we in fact
`provided analysis under both constructions. And just for
`additional context, if we turn to slide 7, as Your Honors
`know the institution decision at page 18, at least that
`institution adopted the same construction as the district
`court.
` Now I'd like to turn to Steinberg's disclosures and
`then I'll circle back to the key guidance provided by the 954
`patent specification about how a customer specifies a
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`7
`
`
`
`IPR2020-00441
`Patent 8,949,954 B2
`
`separate device to receive notification. So if you would
`please turn to slide 8.
` JUDGE BOUCHER: Just to be clear, Mr. Zeilberger,
`the petitioner is still maintaining that our preliminary
`construction was incorrect; is that right?
` MR. ZEILBERGER: We still stand by the construction
`we advocated for in our petition. From our perspective, as I
`think will be apparent today, it's really a dispute that
`doesn't make a difference. We think Steinberg clearly needs
`the construction that the board adopted and in fact, as I'll
`explain today, for practical purposes the construction that
`the board adopted is broader than the one that we advocated
`for and so it doesn't -- it's not really a dispute that makes
`a difference and it's probably not a dispute that the board
`needs to resolve, but we do still stand by our construction.
` JUDGE BOUCHER: Okay. Would you concede that
`Steinberg does not meet the limitation under our preliminary
`construction with respect to email? We only really need to
`talk today about cellphones?
` MR. ZEILBERGER: I think a phone number perhaps
`most clearly shows that it meets the board's construction I
`think and I can address this in my presentation today. I
`think in light of the guidance in the 954 patent, even an
`email address in certain contexts, including in the context
`of Steinberg, would work to identify a specific device. I
`don't think it's necessarily an issue the board needs to
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`8
`
`
`
`IPR2020-00441
`Patent 8,949,954 B2
`
`resolve because a phone number clearly does meet the board's
`construction and so for that reason it's, as I said, a
`dispute the board probably doesn't need to resolve.
` JUDGE BOUCHER: Okay. Thank you.
` MR. ZEILBERGER: So in slide 8 we have figure 8 of
`Steinberg and figure 8 shows the user enrollment process
`where the user provides an email and cellphone number where
`they want warning messages to be sent. And I'll just note
`that while patent owner hasn't challenged this disclosure in
`Steinberg, we do have an alternative obviousness position
`based on Oberheide for the proposition that such information
`would have been specified by the user during your user
`registration to receive notifications.
` If you could turn to slide 9 please.
` JUDGE BOUCHER: Actually, can you clarify that for
`me please because you have no ground that relies just on
`Steinberg, right? I mean all of your grounds rely on the
`combination of Steinberg and Oberheide. But you just said
`that --
` MR. ZEILBERGER: That is correct, Your Honor.
` JUDGE BOUCHER: But you just said that the
`combination of Steinberg and Oberheide was an alternative
`ground.
` MR. ZEILBERGER: Let me clarify that, Your Honor.
`I apologize. In our -- in addressing this particular
`limitation we begin by explaining how Steinberg itself meets
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`9
`
`
`
`IPR2020-00441
`Patent 8,949,954 B2
`
`this limitation. Steinberg itself in the sense of the
`limitation specifically. We do rely on Oberheide for other
`limitations of the claim as well, but in addressing this
`specific limitation we also offer an alternative argument
`that brings in additional disclosures from Oberheide. It is
`a single ground. It's not a different ground. It's an
`additional analysis we provide based on Oberheide.
` JUDGE BOUCHER: Okay. Thank you.
` MR. ZEILBERGER: So if we look at slide 9 which
`provides an excerpt from paragraph 53 of Steinberg, Steinberg
`discloses that a warning message, which can be in the form of
`a one-time password, is sent when access is attempted from an
`unrecognized device and it explains that that warning message
`can be sent, for example, using SMS or email which ties back
`to the phone number or email address that the user provided.
` And then turning to slide 10. In paragraph 14,
`similarly Steinberg discloses that the warning message can be
`sent via email or SMS and it specifically describes it as an
`out of band communication to the user. And then in
`Steinberg's subsequent disclosures, which I'll turn to in a
`moment, it specifically explains how the device that receives
`warning messages is a separate device specified by the
`customer as required by the construction adopted in the
`institution decision.
` So starting at slide 11, which is an excerpt from
`paragraph 45 of Steinberg, Steinberg specifically refers to
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`10
`
`
`
`IPR2020-00441
`Patent 8,949,954 B2
`
`the device that receives the one-time password via SMS or
`email as a pre-agreed cellphone. Not a pre-agreed cellphone
`number or a pre-agreed cellphone email. It refers to it as a
`pre-agreed cellphone, the actual device.
` Turning to slide 12, paragraph 48 of Steinberg.
`Steinberg explains that the device that receives the one-time
`password is a cellphone in the user's possession as
`previously identified to the owner of the system. Again
`referring to the device itself as having been prespecified.
` Slide 13, from paragraph 49 of Steinberg. Again,
`it refers to the cellphone in the user's possession as
`previously identified to the owner of the system. That's the
`device that receives the one-time password after the
`requesting computer is detected as not being known to be
`trusted.
` I think it's also relevant, if we turn to slide 14,
`that it's not just the notification that relies on the device
`having been specified in advance by the user. Steinberg in
`paragraph 45 makes use of the location of the device to help
`provide for authentication by comparing the secondary device
`to the requesting device's location. So we have Steinberg
`again and again making clear that the device itself has been
`specified by the user.
` JUDGE BOUCHER: But to be fair though, if we look
`at the way Steinberg actually operates, although it does sort
`of refer to sending notifications to a specific device,
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`11
`
`
`
`IPR2020-00441
`Patent 8,949,954 B2
`
`wouldn't you agree that what it really does is send
`notifications to a cellphone number with the presumption that
`that's going to get to the device? So that if, for example,
`the device had been cloned or something it might not actually
`get to the device enough though the presumption that I think
`is underlying Steinberg's disclosure is that sending it to a
`cellphone number is going to get it to a cellphone.
` MR. ZEILBERGER: I think what these disclosures in
`Steinberg are telling us is that a person of ordinary skill
`in the art at the time would have understood that when a user
`specifies a phone number or an email address -- and we need
`to remember this is ten years ago. It's not contemporaneous.
`2011 is the relevant date here. At that time, a person of
`skill would have understood that that is a specification of
`the device. And as we'll see in a moment, I think that's
`exactly like the 954 patent which treats device specification
`in exactly the same way. And of note, the 954 patent says
`nothing about device cloning or any other fraudulent
`activities that could perhaps break a system.
` JUDGE BOUCHER: Okay. Would you at least agree
`that when Steinberg says it sends a notification to a
`particular cellphone device that the way it's actually
`operating is that it's sending a cellphone notification to a
`particular cellphone number --
` MR. ZEILBERGER: I think --
` JUDGE BOUCHER: -- with the presumption that it's
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`12
`
`
`
`IPR2020-00441
`Patent 8,949,954 B2
`
`going to reach the device ultimately?
` MR. ZEILBERGER: I believe that's the -- those are
`the examples that Steinberg provides with perhaps one or two
`other examples, but I think the primary examples it provides
`are sending the notification through SMS or email.
` JUDGE BOUCHER: Okay. Thanks.
` MR. ZEILBERGER: Turning to slide 15. I think it's
`also significant from an evidentiary perspective that the
`only expert testimony in this proceeding supports our
`position. Dr. Monrose explains that a person of ordinary
`skill in the art would have understood that the cellphone in
`Steinberg is a separate device and has been specified by the
`user in order for the user to receive out of band
`communication. That's from paragraph 145 of his declaration.
`And despite the institution decision's suggestion at page 27
`that Uniloc could explore the testimony through cross-
`examination, Uniloc chose not to depose Dr. Monrose nor did
`it come forward with any expert testimony to support its
`position.
` We turn to slide 16 please. In its patent owner
`response I think it's also notable, this is from page 29,
`that patent owner in fact acknowledged that the petition
`showed that in Steinberg the cellphone in the user's
`possession is previously identified to the owner of the
`system which is directly contrary to their argument. Now it
`did go on to say that the cellphone is only identified by a
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`13
`
`
`
`IPR2020-00441
`Patent 8,949,954 B2
`
`cellphone number or an email address, but the claims here do
`not call for any particular mechanism for identifying a
`device. And what's more, as I'll talk to now, the 954 patent
`specifically discloses and in fact only discloses specifying
`a device by specifying an address for that device, just like
`in Steinberg.
` If you'll turn to slide 17 please. So in Slide 17
`we have different excerpts from the 954 patent and I'd like
`to focus in on the first one which is perhaps the most
`significant. It's from column 8, lines 30 to 32 of the 954 patent
`and here the 954 patent says, quote, The customer-specified
`system (106) is a system located at or associated with the
`customer's specified address. The customer-specified system
`is a system located at or associated with the customer-
`specified address.
` So taking the example of a phone number of a
`cellphone, a cellphone is a device that is located at or
`associated with a phone number. In other words, if a
`customer specifies a phone number, the customer's cellphone
`that is located at or associated with that phone number is
`the customer's specified device. And just to go back to Your
`Honor's question about email, as I said, I think it's an
`issue that Your Honors don't need to resolve, but in view of
`this guidance from the 954 patent I think, especially in the
`context of Steinberg, the device -- the cellphone device
`itself is a device that is located at or at least associated
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`14
`
`
`
`IPR2020-00441
`Patent 8,949,954 B2
`
`with the email address.
` Then looking on to the middle excerpt here from
`column 4, lines 61 to 62, we see that the 954 patent
`specifically says as the only two examples, The customer-
`specified address can be, for example, a telephone number or
`an email address. Just like in Steinberg. Then in column 9,
`lines 35 to 41, the 954 patent explains that the customer-
`specified address can be a telephone number and then the
`customer-specified system can include a mobile phone and a
`computer.
` So while the claims might not be limited under the
`adopted claim construction to only specifying a device by
`specifying that device's address, the 954 patent clearly
`contemplates a device being specified by its address. And
`there's nothing to suggest these embodiments, which provide
`the only examples of how a customer specifies a device,
`should be read out of the claims.
` If we turn to slide 18 please.
` JUDGE MARGOLIES: Actually if we could stay on that
`slide. That last quote that you have where it says, For
`example, when the customer-specified address is a telephone
`number, the customer-specified system can include a mobile
`phone and a computer. I think patent owner is relying on
`that passage to say there's no one-to-one correspondence.
`Can you respond to that argument please?
` MR. ZEILBERGER: Yes. Absolutely, Your Honor, and
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`15
`
`
`
`IPR2020-00441
`Patent 8,949,954 B2
`
`I think that actually takes me to my next slide.
` JUDGE MARGOLIES: Okay.
` MR. ZEILBERGER: If you'll indulge me for 30
`seconds. So in patent owner's response they actually pick
`out a response to that argument. In their surreply they say
`that we actually passed that last example from column 9 in
`the 954 patent as a hypothetical design of a system where a
`customer-specified phone number does not specify a cellphone.
`And that's not at all our response to the argument, Your
`Honor, just flagged from patent owner.
` And so turning to slide 19, this will address Your
`Honor's question and also respond to the point patent owner
`made. In the top half of this slide, this goes to how we
`responded to that question which is we explain that this
`example from the 954 patent does indeed provide an example
`where more than one device may be specified, but that
`supports us. That shows that the 954 patent itself
`contemplates situations where a user picks an address and
`that specifies more than one device. Nothing in the claims,
`as we explained in our reply, precludes a customer from
`specifying more than one device. In Steinberg I'll note it
`only envisions a single device, Steinberg doesn't speak to
`more than one device, but here the 954 patent itself
`recognizes that you can specify more than one device and the
`claims don't preclude that.
` Then we went on to point out in our reply, on the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`16
`
`
`
`IPR2020-00441
`Patent 8,949,954 B2
`
`bottom half of slide 19 it's excerpted that even if one could
`hypothetically design a system where a customer-specified
`phone number does not specify a cellphone, Steinberg is not
`such a system nor does the 954 patent describe or contemplate
`such a system. So what Uniloc did in its surreply is really
`cobble together these two separate arguments we made and
`present them as something that we didn't argue.
` If we turn to slide 22 please.
` JUDGE BOUCHER: Actually, can I follow up on that a
`little bit? Because you haven't -- when I asked you didn't
`concede that there wouldn't be specification of a device
`through an email address. So for example, I could have email
`being sent to my phone and my iPad so that if something is
`sent to my email address I get it on both devices. But I
`think the patent owner makes the point that that position is
`inconsistent with the one that you took before the district
`court when the court asked about email and the response was
`that email wasn't -- at least as I understand it -- was that
`email was not within that scope because there was no one-to-
`one correspondence. So I'm wondering whether or not you can
`resolve what seems to be an inconsistent position today with
`the position that was taken before the district court.
` MR. ZEILBERGER: Yes, Your Honor. And I'm happy
`you raised that point. I was planning on turning to it. If
`we could actually go back one slide, I think if we focus in
`on the Markman hearing transcript -- this is slide 21 so
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`17
`
`
`
`IPR2020-00441
`Patent 8,949,954 B2
`
`we're all on the same page -- we didn't concede what Uniloc
`suggested we did. If you look at the -- I suppose about one,
`two, three -- starting at line 6 of this excerpt, we said
`that in the case of email, an email address could arguably be
`an address of a device if your email is only on your device.
`Because again, as I said, we're talking about ten years ago
`here. You weren't in this kind of dynamic world where email
`might be everywhere. At that time I think people of skill in
`the art understood that a user may only have their email on a
`single device.
` The other point I think with this one-to-one issue,
`the way I understood it from the transcript and the way we
`understand it today is that as long as you have an address
`that corresponds to a device, even if you have that address
`corresponding to more than one device, what's key is that you
`have that correspondence of the address corresponds to the
`device so it tells the system I want the notification to go
`to this device or I want the notification to go to these
`devices, but it's key that you're specifying some particular
`devices as opposed to something that isn't a device.
` And then I'll note, which is contrary to patent
`owner's representation, with respect to a telephone number we
`did specifically indicate that that will go to the device
`unequivocally. So it is the address of the device for
`purposes of where the message goes.
` JUDGE BOUCHER: Judge Margolies, you appear to be
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`18
`
`
`
`IPR2020-00441
`Patent 8,949,954 B2
`
`speaking but I'm not hearing you.
` JUDGE MARGOLIES: Thank you. Sorry. If I can go
`to the claim language to follow up on this one a little bit
`further. So the language that we're talking about I believe
`is a notification of the request to an address of a separate
`device specified by the customer. So what I'm hearing you
`say is that even if the telephone number is associated with more
`than one device, you're still specifying the separate device.
`And it seems like maybe patent owner's argument would be
`adding the word uniquely in there, uniquely specified. Is
`that kind of what your position is—that the claim language
`doesn't require a one-to-one correspondence because all
`what's necessary is that, yes, you're specifying this device,
`you may be specifying more than one device, but at least
`you're specifying one device? Is that your position?
` MR. ZEILBERGER: Yeah. So when I hear one-to-one
`correspondence, I guess when I think of that I think of you
`need a mapping of an address to a device but you could have
`more than one one-to-one correspondence. What I think the
`claim requires is simply a user -- a specification of a
`separate device. You wouldn't necessarily need to identify a
`device and only that device. It doesn't say identify one
`device, although again I'll note in Steinberg -- this might
`be a bit of a non-issue because Steinberg only contemplates a
`single mobile device. It only refers to one.
` I think what patent owner has essentially done is
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`19
`
`
`
`IPR2020-00441
`Patent 8,949,954 B2
`
`because there's a theoretical possibility of the phone number
`corresponding to more than one device that means a phone
`number in and of itself can't operate to specify a device
`when their specification only points to an email address or a
`phone number as being used to specify devices and gives the
`specific example where a user picks a phone number and
`specifies two devices. So we're basically in a world,
`according to them, where you need to do something that their
`own specification doesn't describe and it's contrary to their
`specification.
` Turning to slide 22. Patent owner accuses us of,
`using their words, eviscerating the distinction between
`specifying a separate device and an address of the separate
`device and that's simply not so.
` If you turn to slide 23 please. As we pointed out
`in our reply, it's possible for a device to be specified in
`ways other than through an identification of an address
`associated with it and there could be times where an address
`of a device is specified for some purpose other than to
`specify the device. But just because the claims have been
`interpreted not to require the specification of an address
`for a device does not mean that a device cannot be specified
`by specifying that device's address.
` As we saw before, specifying a device by using an
`address is exactly what the 954 patent contemplates. In
`fact, I'll just note that when the district court rejected
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`20
`
`
`
`IPR2020-00441
`Patent 8,949,954 B2
`
`our claim construction, it actually considered our
`construction as being overly narrow in requiring the
`specification of the device to be through an address of the
`device. In other words, nowhere in the district court's
`opinion did it say that a device cannot be specified by
`specifying its address, and that's at Exhibit 2001, page 64.
` If we turn to slide 24 please.
` JUDGE MARGOLIES: Can you just stop? I just want
`to look at that page that you just cited.
` MR. ZEILBERGER: Of course, Your Honor.
` JUDGE MARGOLIES: Because -- and I guess this is
`going to your point earlier that the construction is broader.
`This is I guess --
` MR. ZEILBERGER: That's right, Your Honor. And if
`you pull it up I can even direct you to a few quotations from
`that exhibit. For example, the district court said that
`rather than necessarily an address, and it said weigh against
`the narrow reading of the claim language proposed by the
`defendant, and it said the disclosures regarding a customer-
`specified system still weigh in favor of finding that
`specified by the customer does not necessarily refer to
`specifying an address. So again and again the criticism of
`our construction was that it was too narrow in requiring the
`specification of the device to necessarily be through
`specification of an address.
` JUDGE MARGOLIES: Thank you.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`21
`
`
`
`IPR2020-00441
`Patent 8,949,954 B2
`
` MR. ZEILBERGER: So turning to slide 24. Uniloc
`suggests in their response that the 954 patent teaches that a
`device fingerprint can be used to specify the separate
`device. And they cite three passages in particular: column
`2, line 21; column 4, line 59; and column 11, lines 41 to 46.
`None of those passages show what they suggest.
` If we could turn to slide 25 please. Now here we
`have --
` JUDGE BOUCHER: You've got -- sorry. I was just
`going to let you know you have about five minutes until
`you're in your rebuttal time.
` MR. ZEILBERGER: I appreciate that. Thank you.
` So here on slide 25 we have the first two passages
`that patent owner cites along with some surrounding context
`lines. And in both examples all the 954 patent is describing
`is using device fingerprints to detect a mismatch. There's
`nothing about using a device fingerprint to identify a device
`to receive notifications.
` If we look at slide 26, here we have the excerpt
`from column 11 and we expanded it because Uniloc actually
`expanded its citation in its surreply beyond what it cited in
`its response. But here again, all the 954 patent is
`describing is a process for storing the requesting device's
`fingerprint after the process is otherwise comp
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
