UNILOC 2017 LLC (PATENT OWNER) et al.

Patent Trials and Appeals BoardJun 30, 2021

2021002134 (P.T.A.B. Jun. 30, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 90/014,281 04/03/2019 6446127 RE-01-IT-127 1440 165878 7590 06/30/2021 Burdick Patents, P.A. 2537 W. State Street Suite 220 Boise, ID 83702 EXAMINER SORRELL, ERON J ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 06/30/2021 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) Appeal 2021-002134 Reexamination Control 90/014,281 Patent 6,446,127 B1 1 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte UNILOC 2017 LLC Patent Owner and Appellant ____________ Appeal 2021-002134 Reexamination Control 90/014,281 Patent 6,446,127 B1 Technology Center 3900 ____________ Before MARC S. HOFF, ERIC B. CHEN, and miriam l. quinn, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2021-002134 Reexamination Control 90/014,281 Patent 6,446,127 B1 2 Pursuant to 35 U.S.C. §§ 134(b) and 306, Patent Owner appeals from the final rejection of claims 15–17, 20–24, 26–28, 30, and 31. Claims 1–14 were not subject to reexamination. Claims 18, 19, 25, and 29 have been determined to be patentable. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE Reexamination Proceedings A request for ex parte reexamination of U.S. Patent No. 6,446,127 B1 (“the ’127 patent”) was filed on April 03, 2019, and assigned Reexamination Control No. 90/014,281. The ’127 patent, titled “System and Method for Providing User Mobility Services on a Telephony Network,” issued September 3, 2002 to Guido M. Schuster, Ikhlaq S. Sidhu, Jerry J. Mahler, Frederick D. Dean, Jacek A. Grabie, and Ismail Dalgic, based on Application No. 09/451,388, filed November 30, 1999. Claimed Subject Matter The claims are directed to providing user mobility services on a data network telephony system. (Abstract.) Related Litigation The ’127 patent has been asserted in Uniloc USA, Inc. v. Apple Inc., No. 2: l7-cv-00535 (E.D. Tex. July 12, 2017). On January 12, 2018, the case was transferred to the Northern District of California, Uniloc USA, Inc. v. Apple Inc., No. 5:18-cv-572 (N.D. Calif. Jan. 26, 2018). The ’127 patent was also the subject of a petition for inter partes review in Apple Inc. v. Uniloc Luxembourg S.A., No. IPR 2018- Appeal 2021-002134 Reexamination Control 90/014,281 Patent 6,446,127 B1 3 00456 (PTAB July 31, 2019), in which claims 15, 21–24, 27, 28, and 30 were shown to be unpatentable and claims 1–5 and 8 were not shown to be unpatentable. The Claims Claim 27 is illustrative of the claimed subject matter, and is reproduced below with disputed limitations in italics: 27.A method for providing user mobility services at a voice communication device in a network, comprising the steps of: receiving user attributes from a portable information device at the voice communication device, wherein the user attributes are associated with a user of the portable information device; and transmitting a registration request from the voice communication device to a registration server, wherein the registration server registers the user to the voice communication device in a registration database. REFERENCES Name Reference Date Bartholomew et al. US 5,724,417 Mar. 3, 1998 Yee et al. US 5,781,723 July 14, 1998 Hohle et al. US 6,101,477 Aug. 8, 2000 Chang et al. US 6,198,738 B1 Mar. 6, 2001 Szlam US 6,359,892 B1 Mar. 19, 2002 Gerszberg et al. US 6,424,646 B1 July 23, 2002 The Rejections A. Claims 27, 28, and 31 stand rejected under 35 U.S.C. § 102 as being anticipated by Bartholomew. B. Claims 15, 20, 21, and 26 stand rejected under 35 U.S.C. § 103 as being unpatentable over Bartholomew and Hohle. Appeal 2021-002134 Reexamination Control 90/014,281 Patent 6,446,127 B1 4 C. Claim 30 stands rejected under 35 U.S.C. § 103 as being unpatentable over Bartholomew and Yee. D. Claims 16 and 17 stand rejected under 35 U.S.C. § 103 as being unpatentable over Bartholomew, Hohle, and Chang. E. Claims 22–24 stand rejected under 35 U.S.C. § 103 as being unpatentable over Bartholomew, Hohle and Szlam. F. Claims 27, 28, and 31 stand rejected under 35 U.S.C. § 103 as being unpatentable over Bartholomew and Gerszberg. G. Claims 15, 16, 20, and 21 stand rejected under 35 U.S.C. § 103 as being unpatentable over Bartholomew, Hohle, and Gerszberg. H. Claim 30 stands rejected under 35 U.S.C. § 103 as being unpatentable over Bartholomew, Gerszberg and Yee. Opinion § 102 Rejection—Bartholomew We are unpersuaded by Patent Owner’s arguments (Appeal Br. 23–26; see also Reply Br. 3) that Bartholomew does not disclose the limitation “a voice communication device . . . receiving user attributes from a portable information device at the voice communication device,” as recited in independent claim 27. The Examiner found that RF transceiver 11, microprocessor 13, smart card reader/writer 15, and remote telephonic device 17 of Bartholomew collectively correspond to the limitation “a voice communication device . . . receiving user attributes from a portable information device at the voice communication device.” (Ans. 52; see also Final Act. 18.) We agree with the Examiner’s findings. Bartholomew “relates generally to telephonic communications systems, and more specifically to call forwarding techniques.” (Col. 1, ll. 7–9.) Figure 1 of Bartholomew, which illustrates a hardware block diagram of an automatic call forwarding system (col. 3, ll. 44–43), including communications unit RF transceiver 11, Appeal 2021-002134 Reexamination Control 90/014,281 Patent 6,446,127 B1 5 microprocessor 13, smart card reader/writer 15, remote telephonic device 17, and smart card 37, is reproduced below: Bartholomew explains that “[s]ubscribers are each provided with a smart card [37] adapted to store a subscriber telephone number and an RF jacket transceiver [39] adapted to partially and removably encase the smart card [37]” and “[i]n response to input received from the smart card reader/writer [15] the remote telephonic device [17] instructs the communications system to forward incoming telephone calls for the subscriber telephone number to the remote telephonic device [17] associated with this smart card reader/writer [15].” (Col. 2, ll. 55–66.) Moreover, Bartholomew explains the following: [T]he smart card reader/writer 15 signals microprocessor 13 that a smart card has been read, and microprocessor signals remote telephonic device 17 to place an outgoing call to call controlling system with subscriber database 23 via public or private network 21 and remote CO or PBX 19. When the outgoing call is answered by the call control l ing system with subscriber database 23 (here inaf ter , ca l l cont ro l l ing sys tem 23) , the microprocessor 13 downloads a first data block 501 from the smart card reader/writer 15 to the call controlling system 23. (Col. 8, ll. 34–43 (citations omitted).) In addition, Figure 1 of Bartholomew illustrates that “remote telephonic device 17 is coupled to a smart card reader/writer 15” (col. 2, ll. 3, ll. 63–64) and Bartholomew further explains that “it is possible to integrate microprocessor 13 into smart card reader/writer 15 and/or communications unit RF transceiver 11” (col. 6, ll. 15–17). Because Bartholomew explains that smart card 37 stores the subscriber telephone number and calls from the subscriber telephone are forwarded to remote telephonic device 17 associated with smart card 37, Bartholomew discloses the limitation “a voice communication Appeal 2021-002134 Reexamination Control 90/014,281 Patent 6,446,127 B1 6 device . . . receiving user attributes from a portable information device at the voice communication device.” Patent Owner argues that “Bartholomew does not teach that the remote telephonic device [17] itself receives the ‘input from the smartcard reader/writer – only that in the chain of events: (1) input is received (somewhere) from the smartcard reader/writer; then (2) the remote telephonic device instructs the communications system to forward calls to the remote telephonic device.” (Appeal Br. 23.) Similarly, Patent Owner argues that “Bartholomew . . . expressly teaches that remote telephonic device 17 serves only as a conduit to open a communication channel between microprocessor 13 and call controlling system 23” and “[t]he ‘input’ from the smartcard 37 is received by the smartcard reader/writer 15 (not by the remote telephonic device 17).” (Id. at 24; see also id. at 16.) However, the Examiner did not cite solely to remote telephonic device 17 of Bartholomew for disclosing the limitation “voice communication device.” Instead, the Examiner cited to RF transceiver 11, microprocessor 13, smart card reader/writer 15, and remote telephonic device 17 of Bartholomew collectively, for disclosing the limitation “voice communication device.” (Ans. 52.) Second, Patent Owner argues that [t]he absence of an express teaching in Bartholomew to integrate the remote telephone device 17 with the other components forecloses any interpretat ion that Bartholomew teaches a “voice communication device” capable of receiving user attributes from a PID, because, as demonstrated above, it is the smartcard reader/writer 15 . . . that receives user attribute input from the smartcard 37. (Appeal Br. 26.) Similarly, Patent Owner argues that “each use of the term ‘device’ appears ostensibly with an article ‘a’ denoting its Appeal 2021-002134 Reexamination Control 90/014,281 Patent 6,446,127 B1 7 integrated singularity” and “a POSITA would understand the ‘voice communication device’ to be an integrated singular unit and not a plurality of components mapped that collectively allege a single device.” (Reply Br. 3.) However, even if Patent Owner is correct that “a voice communication device” should be interpreted as an integrated singular unit, Bartholomew explains that: (i) microprocessor 13, smart card reader/writer 15, and communications unit RF transceiver 11 can be integrated; and (ii) remote telephonic device 17 is coupled to a smart card reader/writer 15. (Col. 6, ll. 15–17.) Accordingly, Bartholomew explains that RF transceiver 11, microprocessor 13, smart card reader/writer 15, and remote telephonic device 17 can be an integrated singular unit. Therefore, we agree with the Examiner that Bartholomew describes the limitation “a voice communication device . . . receiving user attributes from a portable information device at the voice communication device.” Accordingly, we sustain the rejection of independent claim 27 under 35 U.S.C. § 102. Claims 28 and 31 depend from claim 27, and Patent Owner has not presented any additional substantive arguments with respect to these claims. Therefore, we sustain the rejection of claims 28 and 31 under 35 U.S.C. § 102, for the same reasons discussed with respect to independent claim 27. § 103 Rejection—Bartholomew and Hohle Independent claims 15 and 21 recite limitations similar to those discussed with respect to claim 27, and claims 20 and 26 depend from claims 15 and 21. Although Patent Owner nominally argues the rejection of claims 15, 20, 21, and 26 separately (Appeal Br. 27–29), the arguments presented do not explain why the limitations of these dependent claims are separately patentable. Instead, Patent Owner Appeal 2021-002134 Reexamination Control 90/014,281 Patent 6,446,127 B1 8 argues that “Bartholomew does not disclose voice communication device of claim 15” and “Hohle does not cure Bartholomew’s deficiency.” (Id. at 27.) Similarly, Patent Owner argues that “Bartholomew does not disclose nor suggest a voice communication device” and “Hohle does not contemplate a voice communication device much less disclose a voice communication device that cures Bartholomew’s deficiencies.” (Id. at 29.) We are not persuaded by these arguments for the reasons discussed with respect to independent claim 27. Accordingly, we sustain this rejection. § 103 Rejection—Bartholomew and Yee Although Patent Owner nominally argues the rejection of dependent claim 30 separately (Appeal Br. 29–30), the arguments presented do not explain why the limitations of this dependent claim are separately patentable. Instead, Patent Owner argues that “Bartholomew fails to disclose or suggest a voice communication device” and “Yee does not cure Bartholomew’s deficiencies.” (Id. at 30.) Patent Owner also argues that “[t]o the extent that Bartholomew does not appreciate the claimed voice communication device, the reference also does not disclose the [claimed] synchronization step.” (Id.) We are not persuaded by these arguments for the reasons discussed with respect to independent claim 27. Moreover, Patent Owner has not presented sufficient substantive arguments with respect to this claim. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[T]he Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”) Accordingly, we sustain this rejection. Appeal 2021-002134 Reexamination Control 90/014,281 Patent 6,446,127 B1 9 § 103 Rejection—Bartholomew, Hohle, and Chang Although Patent Owner nominally argues the rejection of dependent claims 16 and 17 separately (Appeal Br. 30–31), the arguments presented do not explain why the limitations of this dependent claim are separately patentable. Instead, Patent Owner argues that “claim 15 is deemed patentable over Bartholomew in view of Hohle for at least the reason that the references fail to disclose or suggest the voice communication device of claim 15” (id.) and “Chang does not cure Bartholomew and Hohle’s deficiencies” (id. at 31). We are not persuaded by these arguments for the reasons discussed with respect to independent claim 15. Accordingly, we sustain this rejection. § 103 Rejection—Bartholomew, Hohle and Szlam Although Patent Owner nominally argues the rejection of claims 22–24 separately (Appeal Br. 32–35), the arguments presented do not explain why the limitations of these dependent claims are separately patentable. Instead, Patent Owner argues that “Szlam does not teach nor suggest a voice communication device as claimed in [independent] claim 21” (id. at 34) and “Bartholomew and/or Hohle do not cure Szlam’s deficiencies (id. 34–35). We are not persuaded by these arguments for the reasons discussed with respect to independent claim 21. Accordingly, we sustain this rejection. Remaining § 103 Rejections We do not reach the additional cumulative rejections of claims 15, 16, 20, 21, 27, 28, 30, and 31 under 35 U.S.C. § 103 as unpatentable over various combinations of Bartholomew, Gerszberg, Appeal 2021-002134 Reexamination Control 90/014,281 Patent 6,446,127 B1 10 Schuster, Hohle, and Yee. Affirmance of the anticipation and obviousness rejections discussed previously renders it unnecessary to reach the remaining rejection, as claims 15–17, 20–24, 26–28, 30, and 31 have been addressed and found unpatentable. Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching additional obviousness rejections). Appeal 2021-002134 Reexamination Control 90/014,281 Patent 6,446,127 B1 11 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Ba sis Affirmed Reversed 27, 28, 31 102 Bartholomew 27, 28, 31 15, 20, 21, 26 103 Bartholomew, Hohle 15, 20, 21, 26 30 103 Bartholomew, Yee 30 16, 17 103 Bartholomew, Hohle, Chang 16, 17 22–24 103 Bartholomew, Hohle, Szlam 22–24 27, 28, 31 103 Bartholomew, Gerszberg 15, 16, 20, 21 103 Bartholomew, Hohle, Gerszberg 30 103 Bartholomew, Gerszberg, Yee Overall Outcome 15–17, 20–24, 26–28, 30, 31 REQUESTS FOR EXTENSIONS OF TIME Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). affirmed PATENT OWNER: Appeal 2021-002134 Reexamination Control 90/014,281 Patent 6,446,127 B1 12 Burdick Patents, P.A. 2537 W. State Street Suite 220 Boise, ID 83702 THIRD PARTY REQUESTER: HAYNES AND BOONE, LLP 2323 Victory Avenue, Suite 700 Dallas, TX 75219