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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`FACEBOOK, INC., and WHATSAPP INC.,
`Petitioner,
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`v.
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`UNILOC USA, INC., and UNILOC LUXEMBOURG, S.A.,
`Patent Owner.
`____________
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`Case IPR2016-01756
`Patent 8,571,194 B2
`____________
`
`Record of Oral Hearing
`Held: December 12, 2017
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`
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`Before KARL D. EASTHOM, KEN B. BARRETT, and JEFFREY S.
`SMITH, Administrative Patent Judges.
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`Case IPR2016-01756
`Patent 8,571,194 B2
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`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`ANDREW MACE, ESQUIRE
`HEIDI KEEFE, ESQUIRE
`Cooley, LLP
`3175 Hanover Street
`Palo Alto, California 94304-1130
`
`
`ON BEHALF OF PATENT OWNER:
`BRETT A. MANGRUM, ESQUIRE
`Etheridge Law Group
`2600 East Southlake Boulevard
`Suite 120-324
`Southlake, Texas 76092-6634
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`The above-entitled matter came on for hearing on Tuesday,
`December 12, 2017, commencing at 1:00 p.m., at the U.S. Patent and
`Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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`Case IPR2016-01756
`Patent 8,571,194 B2
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`P R O C E E D I N G S
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`JUDGE SMITH: Good afternoon. Welcome to the Patent Trial
`and Appeal Board. We are here this afternoon for a hearing in inter
`partes review matter IPR2016-01756, the case in which Facebook and
`WhatsApp are petitioners and Uniloc USA and Uniloc Luxembourg are
`the patent owners. I would like to start by getting appearances of
`counsel. Petitioner, please step up to the podium and make your
`appearance.
`MS. KEEFE: Thank you, Your Honors. Heidi Keefe and
`Andrew Mace for petitioners Facebook and WhatsApp. I'm lead counsel
`but Mr. Mace will be making the oral arguments today.
`JUDGE SMITH: Welcome. Who do we have on behalf of
`patent owner?
`MR. MANGRUM: Good afternoon, Your Honors. My name is
`Brett Mangrum. I represent the Uniloc entities. I am named as lead
`counsel in this matter for the patent owner.
`JUDGE SMITH: Thank you. I would like to go over a few
`administrative details quickly before we begin just about the structure of
`the hearing today. Our trial hearing order indicated that there would be
`30 minutes of argument for each side. And petitioner, you'll go first
`presenting your case in chief. Patent owner, you will then be allowed to
`respond to petitioner. Petitioner, if you wish, you may reserve time for
`rebuttal. Do you wish to do so?
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`MR. MACE: Yes, Your Honor, 20 minutes for opening and 10
`for rebuttal. Thank you.
`JUDGE SMITH: Ten minutes for rebuttal. Thank you. One
`more administrative detail, when you are referencing your demonstrative
`slides, please keep in mind to reference the particular slide number so
`that we can keep track of which slide you are discussing here during the
`hearing and also it makes the transcript easier to read.
`Petitioner, when you are ready, you may begin.
`MR. MACE: Good afternoon, Your Honor. Andrew Mace,
`counsel for petitioners. Let's go to slide 7. In slide 7 I have underlined
`the disputed claim limitations here in the context of claim 1. It's the two
`without requiring limitations. The two limitations are set forth within the
`larger limitation displayed for the first party and option to automatically
`initiate voice communication within the current participants of the IM
`session, and it continues. So to provide some context for those
`limitations, as far as the claim is concerned, an IM session already exists,
`and there's a display of an option to automatically initiate voice
`communication before the without requiring limitations become
`operative or kick in.
`So for my opening presentation, I'm going to focus on the
`without requiring registration with a conference call server for
`establishing the voice communication by potential members limitation.
`And as we explained in our papers, that limitation is disclosed by Wu,
`and it's also disclosed by Wu in combination with Howard.
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`So now I'm on slide 10 of petitioner's demonstratives, and
`focusing on the without requirement registration claim limitation, it
`imposes at least three separate components of the initiation of voice
`communication, that using the option must not require registration with
`the conference call server by the potential members, including the first
`party and at least one other party. So to give some examples of what that
`means, a system can require registration as long as it's not with a
`conference call server and that system can still meet the claim.
`As another illustration, a system can require registration with a
`conference call server as long as it's not by the potential members and it
`could still meet the claim. And as I'll explain, all of patent owner's
`arguments regarding this limitation ignore one or more of these three
`components.
`So let's first turn to the registration requirement. During
`prosecution -- well, let me back up. The term "registration" and
`"register" is not set forth in the specification or in the patent itself. But
`this term was addressed during prosecution. And during prosecution, the
`examiner remarked that the written description did not support the
`without requiring registration limitation because the patent application
`plainly describes a requirement of prior registration. And the examiner
`pointed to paragraphs 56 and 57 of the application. As you can see, these
`excerpts are on slide 12 from the application.
`So now I'm on slide 13, and this shows those two paragraphs
`that were referenced by the examiner, paragraphs 56 and 57. And you
`can see that they discuss whether a user is a subscriber and has set up an
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`associated account in order to get access to a server. So for example, in
`paragraph 56, it describes whether a user is a subscriber to a service
`provided in the conference call server. Then it goes on to talk about
`associating the charge account with a subscriber. Then in paragraph 57 it
`explains that the charge information associated with the account is used
`in order for the user to get access to the computer system. And on the
`right side of slide 13, you can see that the same language appears in the
`issued patent. For the record, the published application, I believe, is
`Exhibit 1009.
`So this intrinsic record evidence that the examiner pointed to
`regarding registration is consistent with the meaning of registration in the
`telecommunications context. So for example, the Newton's Telecom
`Dictionary, which is Exhibit 1008, provides a definition of registration in
`the telecommunications context as the process of supplying the personal
`information needed to establish a subscriber account and get access into a
`network or a server. And as I mentioned, that's the process -- that's the
`process that's described in the passages that the examiner pointed to
`during prosecution.
`So as we set forth in our papers, we proposed a construction of
`registration in accordance with the plain and ordinary meaning of
`registration as set forth by Newton's Telecom Dictionary to be the
`process of supplying personal information needed to establish a
`subscriber account and get access to a network or server. I'll talk more
`about registration in the context of the other components I mentioned
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`above or earlier without -- other components of the without requiring
`registration limitation.
`So that's the first component that I referred to before. The
`second component is the registration cannot be with a conference call
`server.
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`JUDGE SMITH: Could you mention which slide number you
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`are on.
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`MR. MACE: So I was just on slide 14 discussing Newton's
`Telecom Dictionary. Now I have moved to slide 15 which introduces the
`conference call server. So the intrinsic record, including the claims
`themselves and the prosecution history make clear that a conference call
`server is a server that establishes the conference call or server that
`establishes the voice communication. The claim language itself recites a
`conference call server for establishing a voice communication. And
`during prosecution the applicants discussed the conference call server
`and described it as the server establishing a conference call. They said
`that repeatedly. This is slide 16, and it's -- those statements are in
`Exhibit 1010 at pages 10 to 11.
`So as I mentioned before, petitioner primarily relies on the Wu
`reference for the without requiring registration limitation. And as we
`explained in our papers, Wu describes a system in which there's a
`separate login server that's separate from what it refers to as an IM host
`complex. The user will log in to a login server. If login is successful, the
`user will be essentially redirected to a particular server within the IM host
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`complex and in order for the user to subsequently carry out IM
`functionality, including voice communication.
`And as I have indicated in paragraph 34 of Wu, Wu makes clear
`that the IM host complex contains multiple machines and is not a single
`monolithic entity. And as we explained in our papers, there is nothing in
`Wu that suggests that potential members have to register with anything,
`with any server other than the login server in order to subsequently
`initiate or establish voice communication.
`So as we explained in our papers, again, just want to illustrate
`that Wu makes clear that the login server that the user logs in to is
`physically and functionally separate from servers within the IM host
`complex that the user will subsequently connect to in order to carry out
`the voice communication.
`JUDGE SMITH: Is this slide 18?
`MR. MACE: This is slide 18, Your Honor, yes. I'm referring
`to paragraph 51 of Wu on slide 18. And Wu states that the login server
`570 provides the client system 505 with an IP address of the particular
`IM server and gives the client system 505 an encrypted key and breaks
`the connection. So what this is describing is the user will attempt to log
`in at the login server. If login is successful, it will provide information
`about a different server that the user needs to connect to and break the
`connection that the user has with the login server.
`Wu goes on to say that the client system then uses the
`information in the IP address that the login server provides to establish a
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`connection with a particular IM server to subsequently carry out any IM
`functionality that the user intends to carry out.
`So again, there's no suggestion in Wu that the login server has
`any role in establishing voice communication, whether directly or
`indirectly. By the time the user has entered into an IM session, which is
`the time at which they could opt to enter into voice communication, the
`user's interaction with the login server is out of the picture. It's long
`gone.
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`JUDGE EASTHOM: Where in the patent do they disclose how
`they log in? Are you saying there's no written description for the
`conference call or is there some other place that they use another server?
`MR. MACE: So paragraph 51 is one example of where Wu
`describes --
`JUDGE EASTHOM: I'm sorry, I should be more clear. I'm
`talking about the challenged patent. How does that get accomplished?
`How do they log in? Do they go through another server to access the
`conference call server?
`MR. MACE: So the way that the '194 patent works is
`essentially there's a conference call server that the user will log into, and
`the user will provide identification information of the potential
`participants and send that to the server. The conference call server will
`then either directly or indirectly by requesting a conference call establish
`the conference call.
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`JUDGE SMITH: So how does the '194 patent do it without -- if
`you still log in in the '194 patent, you are still logging in to the
`conference call server. How does it --
`MR. MACE: So during prosecution, the examiner identified an
`embodiment that described that, as I said before plainly, discloses the
`registration. In response to that, the petitioner -- the applicants did not
`dispute that those embodiments disclosed a registration. Instead, they
`pointed to what they say was a separate embodiment which basically
`entailed a user providing -- connecting to a conference call server,
`providing information about the users that they wanted to connect to for
`the conference call and sending that information to the server, and the
`server would then initiate a conference call using that information.
`JUDGE SMITH: I see.
`JUDGE EASTHOM: So anybody could call in? You don't
`have to log in; is that correct?
`MR. MACE: So there is no sort of -- in the embodiment that
`was pointed to by the applicants during prosecution, there was no user
`name and password that was supplied to the server that established the
`voice communication. And that's the same as in Wu. Though there is a
`login, it's to a login server, which is separate from the server that
`establishes the voice communication. So again, the claim recites without
`requiring registration with a conference call server by the potential
`members. And so the login step that we discussed in Wu is not a
`registration with a conference call server because the login server doesn't
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`provide any of that functionality. It's totally out of the picture by the time
`a voice communication could potentially be established.
`JUDGE EASTHOM: Do you recall what embodiment in the
`challenged patent that the examiner relied on or applicants relied on?
`JUDGE SMITH: It may have been, correct me if I'm wrong,
`but it may have been the paragraph immediately above the paragraph that
`you just showed us. And this is in the issued patent column 7, the
`paragraph that you showed us in column 7 starting at line 53 and the
`paragraph right above that starting at line 35 talks about a user
`determining --
`MR. MACE: So let me take you to slide 24 where this is
`discussed. And so this was the applicant's response to the examiner when
`the examiner had pointed out the prior registration taking place, and the
`applicants replied that what the examiner had pointed to were alternate
`embodiments. And the applicants pointed to paragraphs 22 to 23, 50 to
`53 of the application as disclosing an embodiment that did not require
`registration with a conference call server by potential members of a voice
`communication. And that passage, among other things, states that the
`conference server can simply strip telephone numbers from the
`conference request message sent from the instant messaging service.
`And so on slide 25 now, there's a paragraph 52, which is among
`the paragraphs that was identified by the applicants during prosecution,
`and on the right side of slide 25, we can see that that same disclosure is
`provided in the issued patent that describes -- that discloses what the
`applicants identified as without requiring registration.
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`JUDGE SMITH: What do you think about interpreting the
`claim in light of this embodiment rather than the embodiment where you
`register by logging in with a user name and password?
`MR. MACE: Well, this embodiment is instructive for the Wu
`prior art reference because what it's talking about is you have a
`conference call server, and all that the user is doing is providing
`information identifying the potential members of the conference call to
`the server that's going to initiate the voice communication.
`Wu is different because it describes a separate login server that
`is physically and functionally separate from the server and the IM host
`complex that will ultimately initiate the voice communication. So the
`users are logging in to, in Wu, a login server. There's a separate server in
`Wu that simply receives a list of potential members, essentially exactly
`like the embodiment that the applicants identified during prosecution.
`And that will allow that user to initiate the voice communication with
`those identified members.
`JUDGE SMITH: So if I understand what patent owner is
`saying correctly, the idea is that would require registration for
`participants to establish the call, the idea is if a person wants to request a
`call with ten different people, all that person has to do is click a button
`and then the server can call those ten people without those ten people
`providing their phone number to the server. So that would be without
`registering meaning without registering their phone number to the server,
`and you are saying Wu does that?
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`MR. MACE: Yes, Your Honor, Wu works exactly like that.
`So if I can take you to slide 8, here is a figure from Wu that has the
`interface for a user to initiate a voice communication with other potential
`members. And the way that Wu works is beforehand the user sets up an
`IM session with other participants. If those users have voice
`communication capability, this start talk button 710 will become visible.
`It will become displayed. And the user can simply click that button.
`They don't need to afterward specify who the members of the voice
`communication are going to be. They don't need to enter information
`about themselves. As far as the user is concerned, the voice
`communication will begin automatically as a result of clicking that start
`talk button.
`And that's completely consistent with the requirements of the
`plain language of the claim which, as I mentioned before, already
`contemplated an IM session exists. And all that the user has to do is
`simply press the start talk button or the call now button, as is described in
`the '194 patent, and information will be sent to the conference call server
`to allow the voice communication to be established.
`JUDGE SMITH: You have about a minute left. The lights
`aren't working.
`MR. MACE: I would like to briefly discuss the Howard
`reference. That's, as I mentioned before, a combination with the Wu
`reference. The Howard reference discloses an authentication server that
`would be completely outside of the Wu system. So I have illustrated on
`slide 29, here is Figure 1 from the Howard reference. And it explains
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`that you authenticate with -- you register one time with an authentication
`server. After that there's no subsequent registration that's required with
`any other servers or services that use that authentication server. And as
`we explain in our papers, Wu confirms that its technique is widely
`applicable. So there's amble rationale on motivation to combine Wu and
`Howard. Howard explains that any type of web server or other
`computing device that acts as a centralized authentication system to
`authenticate a user is relevant or applicable to Howard's teachings.
`JUDGE SMITH: Okay. Thank you.
`MR. MANGRUM: Good afternoon, again, Your Honors and
`esteemed counsel and friends. I want to circle back to some questions
`that were asked by Your Honors, in particular one asked by Judge
`Easthom about where in the patent does it talk about logging in. I think
`that's an important question because the '194 patent makes a distinction
`between a process of logging in and a process of registration. Now, this
`is a very important point because the intrinsic evidence confirms there's a
`difference between logging in and the registration in question.
`Now, the claims don't recite without requiring registration in
`the abstract. It's a very specific registration. It's without requiring
`registration with a conference call server. That's very important, and
`we'll see why the patent distinguishes and clarifies what that means. And
`also during the prosecution history you see some clarification of that. So
`I'm going to back up to Judge Easthom's question. If you look, Judge
`Easthom, and the rest of Your Honors, at column 6, lines 30 through 40,
`there's a discussion about how the NAD, the network access device, may
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`be connected to a network to which a conference call service connected
`as well as to an instant messaging service adapted to communicate a call
`request to the conference call server.
`So here we have a discussion of a distributed system in which a
`user -- they may never use the conference call service. They may log in
`and only have access to the instant messaging service. And then you
`learn as you move forward in the specification that there's a more robust
`embodiment. And I'm --
`JUDGE SMITH: Why does that mean registering, now?
`MR. MANGRUM: It doesn't. That's my point. It does not
`mean registering.
`JUDGE SMITH: What means registering?
`MR. MANGRUM: Okay. Well, that's another good question
`and I'm going to fast-forward now because I think the patent discusses
`that in column 7 and in lines 55, 56 and 57. Incidentally, when you look
`at petitioner's slide 13, they have a slide 13 that says registration. This is
`the portion of the specification they talk about for registration. It's not
`logging in. It's not a question of logging in. Here, let me read into the
`record what it says and what they have highlighted and underlined in
`their slide: A first step may be to determine whether user A is a
`subscriber to a service --
`JUDGE SMITH: I'm sorry, which line?
`MR. MANGRUM: Column 7, lines 55, 56 and 57. This is also
`underlined in petitioner's slide 13. A first step may be to determine
`whether user A is a subscriber to a service providing the conference call
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`server. This is not a question of logging in. It's not even asking the user
`to provide a user name and password to log in.
`JUDGE SMITH: Couldn't you determine that by asking for the
`user name? Wouldn't that be one way of determining whether somebody
`is a subscriber? How would you determine whether somebody is a
`subscriber?
`MR. MANGRUM: That's a good question, Your Honor. If you
`go to -- the Figure 3A has a corresponding diagram for this description.
`And if you look at Figure 3A, and it's on page 4 of Exhibit 1001, there is
`a decision box that says user setting - conferences, okay, question mark.
`That doesn't say is the user logged in.
`JUDGE SMITH: Which box is it?
`MR. MANGRUM: Box 314. It's a diamond box in the middle
`of that figure. So it's a user setting here. It's looking to see not is the user
`logged in, but does the user have access as a subscriber to a conference
`call service. Not all users, not even all logged in users will have access
`to the conference call service as a subscriber. So it's looking to see if the
`settings is checked. Is this -- when you go back to the description, users
`A, B and C may be communicating in a shared session, but that doesn't
`necessarily mean that the requesting user, user A, is a registered
`subscriber to the conference call service. He may be logged in, but he
`might not have conference call service privileges. 314 is a check for that.
`Now, that is exactly what Hamberg does. It is also exactly
`what Wu does. It performs a check to see if someone is a registered
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`subscriber to a conference call service. That is what registration means
`in the context of this disclosure, also in the context of Wu.
`So if you fast-forward again to the slides they presented --
`JUDGE SMITH: Why does the claim mean that? You are
`having us interpret this line 55 to line 57 by looking at a box in Figure 3A
`that just is not even a sentence. It's just a phrase. And then you are
`saying that's what the claim language means.
`MR. MANGRUM: Yes. And we know that from the
`prosecution history, Your Honor. Now, the examiner looked at this
`particular disclosure, what I just read into the record, and said, wait a
`minute, you have amended the claims to say without requiring
`registration. But as I read the spec, and he pointed specifically to this
`sentence, I see here that there's a registration requirement. So when the
`examiner considered what registration meant, the examiner looked to this
`portion of the spec and said, hey, here you have to look to see if someone
`is a subscriber to the service. In my eyes that's a registration.
`The applicant responded, disclaimed that embodiment and said
`it's an alternative embodiment. This is not the embodiment that we are
`claiming. We've disclaimed this embodiment by saying without
`requiring registration.
`So there can be no question with reference to the intrinsic
`record a POSITA looking at the intrinsic record would go, This must be
`what registration means because the applicant and the examiner both
`pointed to the same section. Incidentally, so did the petitioner.
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`JUDGE BARRETT: What I understand you to be saying is
`that's what registration is not. You just said it was disclaimed. So what
`is the embodiment that is the claimed invention?
`MR. MANGRUM: That's a good question. And in the
`prosecution history, there's a citation to, if memory serves, paragraphs 21,
`22 earlier in the specification of where there's disclosure of the
`alternative embodiment for not requiring subscription with the
`conference call server. And incidentally, this is described as just an
`alternative embodiment that you could look to see if one is subscribed to
`the service. Or you can just say if they are part of the IM session, allow
`them into the conference call server without checking to see if they have
`paid an additional fee as a subscriber to a service.
`But I think the prosecution history answers your question
`because applicants specifically --
`JUDGE SMITH: Why does the prosecution history answer it?
`We are using broadest reasonable interpretation here. So we are going to
`give the claims their normal English meaning, and the petitioner gave us
`the normal English meaning of this term. You are saying, no, we
`shouldn't look to the normal English meaning of this term. We should
`look to some meaning that's not exclusively defined in the spec and is not
`recited in the claim.
`MR. MANGRUM: What I'm saying, Your Honors, is that there
`was a question in the prosecution history as to whether or not registration
`was even -- there was a 112.
`JUDGE SMITH: Do you understand what I'm asking you?
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`MR. MANGRUM: Yes.
`JUDGE SMITH: What am I asking you?
`MR. MANGRUM: The definition for registration.
`JUDGE SMITH: I'm asking you why should we, for the
`broadest reasonable interpretation standard, why should we look beyond
`the plain and ordinary meaning of the term?
`MR. MANGRUM: What I'm saying is, no, we shouldn't. It
`should be the broadest reasonable interpretation in light of the intrinsic
`evidence. All I'm saying is --
`JUDGE SMITH: But the prosecution history is not -- we look
`first to the claim. It's not in the claim. We look then to the spec. It's not
`in the spec. Then we look to what one of ordinary skill in the art would
`understand it to mean.
`MR. MANGRUM: I guess what I'm positing to the Board is
`that it is in the spec. And in view of the prosecution history --
`JUDGE SMITH: A limiting definition in the spec. Where does
`the spec define registration --
`MR. MANGRUM: I would say it's right here in 56, 57, in this
`embodiment that requires --
`JUDGE SMITH: So line 55, a first step may be determined
`when the user A may -- it's using "may."
`MR. MANGRUM: Right, because this is an alternative
`embodiment. But a user may determine whether user A is a subscriber to
`a service providing the conference call server. So what I'm saying is --
`JUDGE SMITH: But that doesn't define registration.
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`MR. MANGRUM: I'm saying in light of what the examiner
`said, the examiner said this was the registration.
`JUDGE SMITH: Where did the examiner say that? Read to
`me what the examiner said.
`MR. MANGRUM: Let's go to slide 12 of the petitioner's
`slides, if you go to slide 12, the examiner pointed to paragraph 56 of
`applicant's published application describes checking to see whether user
`is or is not already a subscriber to the conference call service. That's
`what -- so the examiner pointed to paragraph 56, which is what I just
`read. If you go to slide 13 of their -- they have the two paragraphs side
`by side. So the examiner looked at paragraph 56 and said I'm seeing this
`as a registration. All I'm saying --
`JUDGE SMITH: One type of registration. He's not saying
`registration is limited to only this.
`MR. MANGRUM: Well, I would agree with that. But the
`problem with the petition is that it pulls in a dictionary definition that has
`a whole bunch of extraneous limitations that aren't supported by the
`intrinsic record. I'm pointing to what's in the intrinsic record.
`JUDGE BARRETT: Counselor, let's make a hypothetical
`assumption that the prosecution history disclaimer theory doesn't fly. So
`you seem to be construing it in terms of what's excluded from the claims.
`Help us understand what is included by the claims and what the intrinsic
`evidence, how it defines the term.
`MR. MANGRUM: I would say if you look at the broadest
`reasonable interpretation and offer a definition that's consistent with what
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`both experts, at least petitioner's expert has indicated is how a POSITA
`would view registration. We'll get that in a slide. I would say
`determining if a user is a subscriber to a two-way requested conference
`call service. That's what it states in the spec.
`And when you look at the general definition, I want to go to
`slide -- I'm going to quote now from Mr. Klausner's testimony on Exhibit
`1002, paragraph 28. He said the term registration to a person of ordinary
`skill in the art, generally first a process by which a user provides needed
`information in order to gain access to a service. That's very similar to
`saying what the spec says, which is providing -- determining if a user is a
`subscriber to a requested conference call service. That's what happens in
`that particular embodiment. There's a step, 314, that says is this user a
`subscriber
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