[00:00:00] Speaker 03:
argument.

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We have four arguments we'll be hearing today.

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The first one is field number 21-2302, UNOAC 2017 LLC versus Google LLC.

[00:00:12] Speaker 03:
Mr. Jackson, whenever you're ready.

[00:00:16] Speaker 03:
You've reserved five minutes for rebuttal, is that right?

[00:00:19] Speaker 03:
Yes.

[00:00:25] Speaker 02:
The board erred in its application of the stated claim construction to the prior art Steinberg reference.

[00:00:32] Speaker 02:
Excuse me.

[00:00:34] Speaker 02:
The board and the district court before it correctly construed the phrase, an address of a separate device specified by the customer.

[00:00:41] Speaker 02:
And that construction is an address of a separate device, the separate device having been specified by the customer.

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The debate, as Your Honor knows below, was whether the address had to be specified by the customer or whether it was the device.

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And the claims shed a lot of light on that.

[00:01:02] Speaker 02:
Claim 20, for example, specifically recites the customer-specified separate device.

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The antecedent basis for that is back in Claim 1.

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the phrase a separate device specified by the customer.

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So that's obviously very, very powerful evidence.

[00:01:20] Speaker 00:
Council, let's say that we agree with the board's claim construction.

[00:01:24] Speaker 00:
Okay.

[00:01:25] Speaker 00:
It doesn't require a reference teaching anyway because it says specifically that, well it shows in the figure that a user puts in a cell phone number and then the reference itself says that, you know, the previously, I think it's previously identified cell phone

[00:01:42] Speaker 00:
identified by the user is referred to in identifying a cell phone.

[00:01:48] Speaker 00:
The cell phone number seems pretty, that seems like not unreasonable for a fact finder to conclude.

[00:01:55] Speaker 02:
I think the difference, Your Honor, is in the vernacular of the 954 patent.

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that an address is distinct from specifying a device, the device specifier.

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And the board acknowledged that.

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That was the debate.

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Google wanted to have the claims construed such that the address had to be specified, not the device.

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And the board below recognized that dispute

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And frankly, the difference is there and acknowledged that those were distinct items in the 954 patent and went with the fact that the device had to be specified, not an address.

[00:02:34] Speaker 02:
Claim 17, that one of the dependent claims, I think also underscores

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the distinction because in claim 17, it states that wherein the address of the separate device specified by the customer is selected from the group consisting of a telephone number and an email address.

[00:02:52] Speaker 00:
What about the language in the patent itself that says, for example, when the customer's specified address is a telephone number, the customer's specified system can include a mobile phone and a computer?

[00:03:06] Speaker 00:
What about that sentence?

[00:03:07] Speaker 00:
Why isn't that

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saying that in some circumstances, for example, the cell phone number, that could identify not only the address, but also the devices.

[00:03:17] Speaker 02:
Well, I think this gets to the issue of clearly the specification says that an address can be associated with the device.

[00:03:24] Speaker 02:
And that's one of the arguments that the board and Google made below.

[00:03:28] Speaker 02:
But just because those two items can be associated with each other doesn't mean that the address necessarily is the device specifier.

[00:03:39] Speaker 02:
I think that claim and also claim 15, which was not one of the claims subject to the IPR, but claim 15.

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says that a notification of the request is sent to a customer-specified address.

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So when the patentee wanted to claim the customer-specified address, they did that in claim 15.

[00:04:01] Speaker 02:
But claim 1, it's the specifier of the device, not the address.

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So I'm still lost as to what does Steinberg

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lack.

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I mean, just figure 11A, if the claim says you send the password to the cell phone.

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And so that seems to suggest that it's just doing what the claim wants.

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There's a specified device that the notification is being sent to.

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So again, that is correct.

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That is the way Steinberg writes it.

[00:04:37] Speaker 03:
If you could tell me

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How would Steinberg have to be modified such that it would meet your claim?

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Maybe I would better understand what your argument is.

[00:04:48] Speaker 02:
And this is an example out of the 954 patent itself.

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This 954 patent talks about.

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Let's just talk about Steinberg.

[00:04:54] Speaker 02:
OK.

[00:04:55] Speaker 03:
How could Steinberg have been rewritten in a way that would make it clear, aha, oh, Steinberg does in fact meet this limitation about sending a notification to a device specified by a customer to an address of the device?

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To a device specifier.

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So if Steinberg, for example, used

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the what the 954 patent calls the device fingerprint as as the way of identifying the the device to which the notification is to be sent then that would be that would be consistent with the claims the fingerprint the device fingerprint yes okay a fingerprint is okay but a phone number is not correct your honor

[00:05:46] Speaker 03:
Correct.

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But the claim doesn't say fingerprint, nor does the claim exclude phone numbers.

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So that's why I'm trying to understand why are we doing something that feels a little arbitrary at the moment, fingerprints good, phone numbers bad.

[00:06:04] Speaker 02:
Right.

[00:06:04] Speaker 02:
And again, Your Honor, that's based on the language of the claims themselves.

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So in claim 17, it clearly says the address can be a telephone number, for example, or an email address.

[00:06:16] Speaker 02:
But in the claims themselves, they talk about the device specifier.

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And those in the specification are described as being- Claim 17 says the address can be a phone number.

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That's a dependent claim on claim one.

[00:06:29] Speaker 02:
Yes, Your Honor.

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Doesn't claim one have to encompass that embodiment described in claim 17?

[00:06:35] Speaker 02:
Yes, but this is saying the address of the device is a phone number, this claim.

[00:06:42] Speaker 02:
It's not saying that the specifier of the device can be a phone number.

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You're saying that claim one is reciting an address of the device and then a specifier of the device?

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Claim one, Your Honor, says that sending ellipses

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the notification of the request to an address of a separate device specified by the customer.

[00:07:10] Speaker 02:
Right.

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And we know from Claim 17 that the address can be a phone number.

[00:07:13] Speaker 03:
That's right.

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OK.

[00:07:14] Speaker 03:
But now it sounds like to me you're saying that Claim 1 has two separate limitations.

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One is an address of the separate device, and the other one is a specifier of the specified device.

[00:07:26] Speaker 02:
That's right, Your Honor.

[00:07:26] Speaker 02:
And again, where does it say that?

[00:07:29] Speaker 02:
That comes out of the board's construction and the district court's construction before that.

[00:07:33] Speaker 02:
So the construction was, we're considering that phrase from the claim, and they said the construction was an address of a separate device, comma, the separate device having been specified by the customer.

[00:07:44] Speaker 02:
Well, the question is, how do you specify, how does the customer specify the device?

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That's the question.

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Maybe by giving the address.

[00:07:52] Speaker 02:
Well, but the address is not

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described in the claims or the specification as a mechanism of specifying the device.

[00:08:01] Speaker 00:
Well, what if the claim doesn't say how it's specified, which seems to be what the case is here.

[00:08:06] Speaker 00:
It says, to an address of a separate device specified by the customer.

[00:08:11] Speaker 00:
It doesn't say how it's specified in this claim.

[00:08:17] Speaker 00:
Did you say correct?

[00:08:18] Speaker 02:
I said what I was going to say is the claim language.

[00:08:22] Speaker 02:
That's right.

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But in the construing this phrase below,

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The board recognized that there were two distinct items described in the specification, the address and the specifier of the device.

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And this was the claim construction debate.

[00:08:36] Speaker 00:
But even the specification doesn't say a specifier of the device.

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It says an address of a separate device, the separate device having been specified by the customer.

[00:08:47] Speaker 00:
It doesn't say how it's specified.

[00:08:49] Speaker 02:
And we look in the specification, and we can see the examples, for example, using the device fingerprint as a way of specifying the device, which is described as being distinct in the specification.

[00:09:00] Speaker 00:
One of the problems I'm having with your claim construction there, saying it has to be a device fingerprint, is obviously you knew how to claim that, because you've got element 1E that refers to a fingerprint and a device fingerprint.

[00:09:12] Speaker 00:
But that's not anywhere mentioned with respect to element C.

[00:09:19] Speaker 00:
So if that's what you intended to claim, or what your client intended to claim, I don't know why they didn't do it so expressively.

[00:09:25] Speaker 00:
How do you respond to that?

[00:09:26] Speaker 02:
Well, I think they were... I'm speculating, obviously, but I suspect that perhaps they wanted this to be a little more broad, not necessarily limited to a device fingerprint, but still has to be specific to that device fingerprint.

[00:09:41] Speaker 02:
I think we've described in the briefing how a telephone number is not necessarily specific to a particular device.

[00:09:48] Speaker 00:
It's interesting you say not necessarily, which again, your standard of review here is substantial evidence.

[00:09:54] Speaker 00:
And you've got those references in the prior art that talk about the cell phone number and specifying the device.

[00:10:02] Speaker 00:
And when you look at figure eight, the user actually puts in the phone number to identify the cell phone device.

[00:10:08] Speaker 00:
And then also, there's expert testimony

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under abutted expert testimony to support the board's fact conclusion.

[00:10:16] Speaker 00:
So I don't understand how that the substantial evidence ganger isn't met here.

[00:10:20] Speaker 02:
Well, Your Honor, respectfully, we think that for the board to have considered whether the address had to be specified by the customer or whether the device had to be specified by the customer in choosing the device specifier as opposed to an address.

[00:10:36] Speaker 02:
And then to read the claims in the end on an address is

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inherently contradictory.

[00:10:46] Speaker 03:
The address is the specifier.

[00:10:49] Speaker 02:
Is the specifier.

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That's right, Your Honor.

[00:10:51] Speaker 02:
There's no example of that.

[00:10:53] Speaker 02:
It refers to an address being associated with the device, but that isn't necessarily uniquely specifying a device as opposed to an address that can be associated with the device.

[00:11:03] Speaker 02:
So a phone number, for example, the specification and the claims also talk about an address can be an email address.

[00:11:08] Speaker 02:
Well, an email address, if I pull up my email on my phone or my laptop or

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my desktop at work, I'm accessing the same email account.

[00:11:20] Speaker 02:
But it isn't specific.

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It isn't unique to a particular device.

[00:11:24] Speaker 02:
I've exceeded my time.

[00:11:37] Speaker 01:
Morning, Your Honors.

[00:11:38] Speaker 01:
May it please the Court.

[00:11:39] Speaker 01:
Uniloc has two big problems in this case.

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The first problem under the board's construction is that while the board construed the claim to require that a customer specify a device, there's no limitation on how that specification be done.

[00:11:52] Speaker 01:
Steinberg has a device, a cell phone, and in Steinberg, the cell phone is identified by the customer via the phone number.

[00:12:00] Speaker 01:
And Dr. Monrose, Google's expert, testified that one of ordinary skill in the art would read Steinberg as disclosing a separate device, the cell phone, which was specified by the user.

[00:12:11] Speaker 01:
That's more than enough evidence to support the board's decision.

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And that brings me to their second problem.

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There is no evidence that Steinberg could be read in a different way.

[00:12:21] Speaker 01:
They don't have their own expert, and they didn't choose to depose Dr. Monrose.

[00:12:27] Speaker 01:
And so the only evidence in this case about how a person of ordinary skill in the art would read Steinberg is the evidence consistent with the board's decision.

[00:12:37] Speaker 01:
Now, we recognize that there's a distinction between a cell phone and a cell phone number.

[00:12:42] Speaker 01:
But just there is a distinction between a person and the person's name.

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That does not mean that a person cannot be identified with their name, even recognizing the two are distinct things.

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So yes, a cell phone and a cell phone number may be different.

[00:12:56] Speaker 01:
But that doesn't mean that providing a cell phone number doesn't at the same time identify the cell phone.

[00:13:01] Speaker 03:
Mr. Jackson's making an argument that in view of the board's claim construction, the claim limitation has really two separate

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and distinct elements.

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One is the address of the device, and then there's a second thing, which is the specifier of the device.

[00:13:20] Speaker 03:
And through that distinction, we should understand that the specifier of the device has to be something different than the quote unquote address of the device.

[00:13:32] Speaker 01:
So to the extent I understand that argument, it doesn't work because the claim is to

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a method or the claims to a system, but in this step of the claim there's a notification and it is sent to an address.

[00:13:47] Speaker 01:
So the only thing the system has, the only piece of information it needs is the address it's going to send the notification to.

[00:13:54] Speaker 01:
There is no separate identifier of the device that's discussed in the claim or that's discussed in the specification.

[00:14:03] Speaker 01:
Well, Your Honor, a fingerprint is not a means of specifying a device.

[00:14:08] Speaker 01:
It's a means of validating a device.

[00:14:11] Speaker 01:
So yes, the system, the 954 patent, describes that a fingerprint is taken.

[00:14:15] Speaker 01:
But just like you have to have a suspect in custody before you can get their fingerprints, you have to have the device that already has to be known to you.

[00:14:23] Speaker 01:
So the way the 954 patent operates is that when a remote device tries to get to the data, tries to get to the banking information,

[00:14:32] Speaker 01:
And at that point, its fingerprint is taken and compared to valid fingerprints.

[00:14:38] Speaker 01:
And if there is not a match, then that's when the notification is sent to this separately identified device.

[00:14:45] Speaker 01:
The identification of the separately identified device has nothing to do with the fingerprint.

[00:14:50] Speaker 01:
The fingerprint is an authentication scheme for the device attempting to get the banking information.

[00:14:56] Speaker 01:
And in fact, if that device's fingerprint matched an authorized fingerprint, the claim doesn't even move forward because no notification is ever sent out.

[00:15:10] Speaker 01:
And in fact, you can see this in the claim itself, because in claim one, it discusses the separately identified device.

[00:15:18] Speaker 01:
And then later in limitation, I think it is 1E, it discusses this fingerprint issue.

[00:15:23] Speaker 01:
So in other words, it's not only a separate concept, it's separately described and called out in the claim.

[00:15:33] Speaker 03:
Do you have a backup claim construction argument?

[00:15:36] Speaker 03:
Is there some reason outside the scope of this claim?

[00:15:44] Speaker 01:
This court needn't reach that construction.

[00:15:46] Speaker 01:
And I think based on the evidence that the board relied on, there is no reason for this court to reach that construction, because there is more than enough evidence to support the board.

[00:16:00] Speaker 01:
And unless there are any further questions, I'll take my seat.

[00:16:07] Speaker ?:
OK, thank you.

[00:16:07] Speaker 02:
Thank you.

[00:16:07] Speaker 02:
So Your Honor, if I could pick up where my opposing counsel left off.

[00:16:13] Speaker 02:
And again, I just want to step back a little bit and look at the scheme that's described here in the patent.

[00:16:19] Speaker 02:
The remote device, and I'll try to refer to the figure numbers, 104 makes a request to access, for example, banking information.

[00:16:27] Speaker 02:
And that request goes to the server's 102.

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If 102 doesn't have the fingerprint of 104 stored as an authorized device, that's when this notification gets sent out.

[00:16:37] Speaker 02:
And the notification gets sent out to a

[00:16:40] Speaker 02:
predefined device that the customer had set up as a security mechanism.

[00:16:46] Speaker 02:
That's where, in the patent specification, it talks about registering those devices.

[00:16:52] Speaker 02:
So at column 11, lines 24 to 27, for example, it talks about how the notification, the server 102

[00:17:01] Speaker 02:
determines whether the reply to the notification, that is the bounce back, the response back from the specified device, is valid or invalid based on the device fingerprint 516 of the customer specified system 106.

[00:17:15] Speaker 02:
So 102 has the fingerprint of the customer specified system and that's what it looks at in the response to the notification to determine whether it's a valid response or not.

[00:17:26] Speaker 02:
Also at column five lines 46 to 50, and I'll try to shorten this up, the specification says there may be one or more administrator fingerprints associated with a customer account so that a customer may transmit a legitimate authorization, that's the response, from any number of customer specified devices that have been registered with the server.

[00:17:47] Speaker 02:
So that registration, that's the customer pre-registers this device in their account and then

[00:17:55] Speaker 02:
That's, for example, up above in column, or up above my notes here, but down below in column 11, lines 24 to 27, it talks about storing that fingerprint, and that's how the server 102 verifies whether the response to the notification is valid or not.

[00:18:09] Speaker 02:
So the registrations occurred ahead of time.

[00:18:13] Speaker 02:
An account set up, or maybe the customer wants to enhance the security of their account.

[00:18:17] Speaker 02:
They set that up.

[00:18:19] Speaker 02:
That's how the response to the notification is verified to be

[00:18:26] Speaker 02:
valid or not.

[00:18:27] Speaker 02:
And so when it says in the claim the separate device specified by the customer, that specification is that unique identifier for the device, distinct from an address.

[00:18:38] Speaker 02:
Now the claim says the notification is sent to an address.

[00:18:41] Speaker 02:
Clearly it has to be sent to an address.

[00:18:43] Speaker 02:
But what makes it a customer-specified device?

[00:18:46] Speaker 02:
That's the question it issued here.

[00:18:48] Speaker 02:
And it's something distinct from the address.

[00:18:54] Speaker 02:
And with no other questions, I'll take my seat.