UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC.,
`Petitioner
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
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`
`
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`IPR2017-00220
`PATENT 7,535,890
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`APPLE, INC.,
`Petitioner
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
`
`
`
`
`
`
`
`
`IPR2017-00220
`PATENT 7,535,890
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`
`
`
`
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
`
`
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`
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`
`
`1
`INTRODUCTION
`3
`BACKGROUND OF THE '890 PATENT
`3
`Priority and Patent Family of the '890 Patent
`
`5
`Overview of the '890 Patent
`
`8
`III. THE PETITION PRESENTS REDUNDANT GROUNDS
`8
`Redundant and Cumulative Grounds Asserted in two Petitions
`
`9
`The Redundant Challenges Are Not Entitled to Consideration
`10
`1.
`The '220 and '221 Petitions Are Horizontally Redundant
`2.
`Petitioner Compounds Its Error with Vertical Redundancies 13
`Petitioner’s Abusive Pattern of Redundancy is Improper
`15
`
`IV. NO REASONABLE LIKELIHOOD THAT AT LEAST ONE OF THE
`CHALLENGED CLAIMS IS UNPATENTABLE
` No Claim Construction Needed for “External Network”
`Ground 1: Independent Claims 1, 14, 28, 40, 51 and 62 are Not
`
`Obvious Over the Proposed Vuori-Väänänen Combination 20
`Overview of Applicable Law
`20
`No prima facie case for claim limitations involving
`“a packet-switched network”
`The Dependent Claims Challenged in Ground 1 are not
`Obvious
`Grounds 2 through 4 Only Challenge Claims Which Depend From
`Nonobvious Independent Claims
`CONCLUSION
`
`
`I.
`II.
`
`V.
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`
`
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`
`
`1.
`2.
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`3.
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`IPR2017-00220
`U.S. Patent 7,535,890
`
`Tables of Contents
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`17
`18
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`22
`
`35
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`35
`36
`
`ii
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`
`
`IPR2017-00220
`U.S. Patent 7,535,890
`
`I.
`
`INTRODUCTION
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107(a), Uniloc Luxembourg
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`S.A. (“Patent Owner”) submits this Preliminary Response to the Petition for Inter
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`Partes Review (“the Petition” or “the '220 Petition”) of U.S. Patent No. 7,535,890
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`(“the '890 Patent”) filed by Apple, Inc. (“Petitioner”). The Board should deny the
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`Petition in its entirety because of procedural and substantive defects.
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`Petitioner follows the same impermissible strategy in challenging the '890
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`Patent that it uses in each one of the six concurrently-filed petitions (IPR2017-00220
`
`through IPR2017-00225), which collectively challenge a total of sixty-five (65)
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`claims of four related patents. Petitioner consistently presents at least a pair of
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`redundant obviousness theories for every challenged claim. As an apparent
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`afterthought, Petitioner then offers an illusory justification that is applicable, if at
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`all, to only a mere fraction of those redundant challenges.
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`The present '220 Petition, for example, primarily relies on the Vuori reference
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`(Ex. 1005), while the co-pending petition (IPR2017-002211) redundantly challenges
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`the same claims and relies, instead, primarily on Malik (Ex. 1007). Petitioner’s
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`alleged justification for its redundancy, at best, applies to only three of the twenty-
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`nine claims redundantly challenged in both the '220 and '221 Petitions. Because
`
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`1 Apple Inc. v. Uniloc Luxembourg S.A., No. IPR2017-00221, Petition for Inter
`Partes Review (P.T.A.B. Nov. 14, 2016), Paper 2 (“the '221 Petition”).
`
`1
`
`
`
`IPR2017-00220
`U.S. Patent 7,535,890
`Petitioner at least tacitly concedes that the present '220 Petition is substantively
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`stronger than the co-pending '221 Petition for the vast majority of claims, it is
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`anticipated that the Board will find the redundant challenges based on Malik are not
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`entitled to consideration.
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`Another disturbing pattern of the six related petitions is that Petitioner does
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`not bother to provide even one claim chart for any of the redundant obviousness
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`theories asserted against sixty-five (65) patent claims in total. To make matters
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`worse, each petition primarily relies on ambiguous and unexplained citations to the
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`art, without providing an accompanying explanation or argument as to why the
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`reference(s) render(s) obvious the limitation in question. Cf. In Fontaine Engineered
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`Prods., Inc. v. Raildecks, (2009), Inc., No. IPR2013-00360 (P.T.A.B. Dec. 13,
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`2013), Paper 9 (denying a petition for IPR brought on obviousness grounds because
`
`the petitioner’s claim charts only cited to disclosure of the alleged invalidating
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`reference without any accompanying explanation or argument as to why the
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`reference discloses or teaches the recited element).
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`The declaration attached to each of the six petitions is of no moment because
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`it simply parrots back the same citations and the same unexplained and conclusory
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`statements presented in the corresponding petition. Cf. In Kinetic Technologies, Inc.
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`v. Skyworks Solutions, Inc., No. IPR2014-00529 (P.T.A.B. Sept. 23, 2014), Paper 8
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`(denying the petition because the expert’s declaration did not provide any facts or
`
`2
`
`
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`IPR2017-00220
`U.S. Patent 7,535,890
`data to support the underlying opinion of obviousness, but rather was substantially
`
`identical to the conclusory arguments of the petition).
`
`In addition to the procedural defects identified herein, Patent Owner further
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`identifies two overarching substantive defects. First, Petitioner overlooks various
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`claim limitations, including those involving a packet-switched network(s), and thus
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`fails to “specify where each element of the claim is found in the prior art patents or
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`printed publications relied upon.” 37 C.F.R. § 42.104(b)(4). Second, Petitioner
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`applies impermissible hindsight reasoning in a futile attempt to consolidate disparate
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`and expressly-distinguished teachings of Vuori, the primary asserted reference.
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`In view of the reasons presented herein, the Petition should be denied in its
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`entirety as failing to meet the threshold burden of proving there is a reasonable
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`likelihood that at least one challenged claim is unpatentable.2
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`II. BACKGROUND OF THE '890 PATENT
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`Priority and Patent Family of the '890 Patent
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`The '890 Patent is titled “SYSTEM AND METHOD FOR INSTANT VOIP
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`MESSAGING.” Ex. 1001 at [54]. The '890 Patent issued from U.S. Patent
`
`
`2 Should the Board institute proceedings in this matter, Patent Owner does not
`concede the legitimacy of any arguments in the Petition that are not specifically
`addressed herein. Patent Owner expressly reserves the right to rebut any such
`arguments in its Patent Owner Response.
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`3
`
`
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`IPR2017-00220
`U.S. Patent 7,535,890
`Application No. 10/740,030, which has a filing date of December 18, 2003. The
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`'890 Patent issued on May 19, 2009, after over six years of thorough examination.
`
`During prosecution, the inventor, Michael Rojas, filed a declaration pursuant
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`to 37 C.F.R. § 1.131. Ex. 1002 (Rojas Declaration). In this document, the inventor
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`declares “I completed the invention disclosed and claimed in United States Patent
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`Application No. 10/740,030, prior to August 15, 2003.” Id. at 89.
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`The '890 Patent is the ultimate parent in a chain of continuation applications,
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`as shown in the illustration of the family tree below, which also maps each of the six
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`co-pending petitions to the respective patent it challenges.
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`Challenged by Petitioner in
`IPR2017-00220 and IPR2017-00221
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`
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`IPR2017-00222
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`IPR2017-00223 &
`IPR2017-00224
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`IPR2017-00225
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`4
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`
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`IPR2017-00220
`U.S. Patent 7,535,890
`
` Overview of the '890 Patent
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`The
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`'890 Patent
`
`recognized
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`that
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`conventional
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`circuit-switched
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`communications enabled traditional telephony yet had a variety of technical
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`disadvantages that limited developing other forms of communication over such
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`networks. According
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`to
`
`the
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`'890 Patent, “[c]ircuit switching provides a
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`communication path (i.e., dedicated circuit) for a telephone call from the telephone
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`terminal to another device 20 over the [public switched telephone network or] PSTN,
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`including another
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`telephone
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`terminal. During
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`the
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`telephone call, voice
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`communication takes place over that communication path.” (Ex. 1001, 1:18-23.)
`
`The '890 Patent expressly distinguishes circuit-switched networks from
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`packet-switched networks (e.g., the Internet) at least in that the latter routes
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`packetized digital information, such as “Voice over Internet Protocol (i.e., “VoIP”),
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`also known as IP telephony or Internet telephony.”3 (1:24-26.) Because legacy
`
`
`3 Consistent with the '890 Patent specification, the USPTO has also recognized there
`are significant differences between circuit-switched and packet-switched networks
`during the relevant timeframe. See, e.g., U.S. Application No. 90/012,728, Notice of
`Intent to Issue Ex Parte Reexamination Certificate, dated April 10, 2014, where the
`Examiner adopted the following argument:
`
`Ethernet packet switching protocol, including TCP/IP, are very specific
`connectionless/packet switched protocols. In contrast to connection-
`oriented protocols, connectionless/packet switched protocols do not
`need to set up a dedicated path in advance. Rather, routers send
`fragmented messages or “packets” to their destination independently.
`Connectionless protocols have a number of advantages over
`
`5
`
`
`
`IPR2017-00220
`U.S. Patent 7,535,890
`circuit-switched devices were unable to communicate directly over packet-switched
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`networks, media gateways (114) were designed to receive circuit-switched signals
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`and packetize them for transmittal over packet-switched networks, and vice versa.
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`(1:54-2:10.) The conversion effected by media gateways (e.g., 114 and 118)
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`highlights the fact that packetized data carried over packet-switched networks (e.g.,
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`IP network 102) are different from and are incompatible with an audio signal carried
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`over a dedicated packet-switched circuit. (1:18-23.)
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`The '890 Patent further recognized that, notwithstanding the advent of instant
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`text messages, at the time of the claimed invention there was no similarly convenient
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`analog to leaving an instant voice message over a packet-switched network. (2:11-
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`43.) Rather, “conventionally, leaving a voice message involves dialing the
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`recipient’s telephone number (often without knowing whether the recipient will
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`answer), waiting for the connection to be established, speaking to an operator or
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`navigating through a menu of options, listening to a greeting message, and recording
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`the message for later pickup by the recipient. In that message, the user must typically
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`identify himself or herself in order for the recipient to return the call.” (2:15-22.)
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`The inventor observed, therefore, that “notwithstanding the foregoing
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`advances in the VoIP/PSTN voice communication and voice/text messaging, there
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`connection-oriented protocols, including better use of available
`bandwidth.
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`6
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`
`
`IPR2017-00220
`U.S. Patent 7,535,890
`is still a need in the art for providing a system and method for providing instant VoIP
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`messaging over an IP network.” (2:36-42.) In certain disclosed embodiments the
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`'890 Patent addressed that need, in part, by providing a user-accessible client (208)
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`that is specially configured for instant voice message (IVM) and for direct
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`communication over a packet-switched network (e.g., through an Ethernet card)
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`(12:4-5.) More specifically, the '890 Patent teaches that certain clients (208) are
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`specially configured to “listen[] to the input audio device 212,” “record[] the user’s
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`speech into a digitized audio file 210 (i.e., instant voice message) stored on the IVM
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`client 208,” and “transmit[] the digitized audio file 210” as packetized data (e.g.,
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`using TCP/IP) over a packet-switched network (e.g., network 204) “to the local IVM
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`server 202.” (7:65-8:1.)
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`The challenged claims include six sets of claims. Claims 1, 14, 28, 40, 51, and
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`62 are the challenged independent claims. For the convenience of the Board, Claim
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`1 is reproduced below:
`
`An instant voice messaging system for delivering
`1.
`instant messages over a packet-switched network, the
`system comprising:
`a client connected to the [packet-switched] network,
`the client selecting one or more recipients, generating an
`instant voice message therefor, and transmitting the
`selected recipients and the instant voice message therefor
`over the [packet-switched] network; and
`a server connected
`to
`the [packet-switched]
`network, the server receiving the selected recipients and
`the instant voice message therefor, and delivering the
`
`7
`
`
`
`IPR2017-00220
`U.S. Patent 7,535,890
`instant voice message to the selected recipients over the
`[packet-switched] network, the selected recipients enabled
`to audibly play the instant voice message, and the server
`temporarily storing the instant voice message if a selected
`recipient is unavailable and delivering the stored instant
`voice message to the selected recipient once the selected
`recipient becomes available.
`
`
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`While the independent claims recite similar claim language, there are
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`significant enough differences between claim sets to preclude the argument that
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`Claim 1 is perfectly representative of all claims. Nevertheless, Patent Owner has
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`endeavored to show how Petitioner has not met its threshold burden at least with
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`respect to certain claim language that appears in all the challenged claims.
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`III. THE PETITION PRESENTS REDUNDANT GROUNDS
` Redundant and Cumulative Grounds Asserted in two Petitions
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`As shown in the table below, Petitioner has filed two inter partes review
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`petitions that collectively challenge the patentability of the claims of the '890 Patent
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`under 35 U.S.C. § 103(a) over the following redundant and cumulative combinations
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`of references:
`
`
`
`
`
`8
`
`
`
`IPR2017-00220
`U.S. Patent 7,535,890
`
`Reference(s)
`Vuori4 and Väänänen5
`
`Vuori and Väänänen, and Deshpande6
`
`Vuori and Väänänen and Abburi7
`
`Claims
`1-3, 5, 14, 15,17,
`19, 28, 29, 31, 33,
`40, 42, 51, 53, 62,
`and 64
`4, 18, 52, and 63
`
`6, 20, 34, 43, 54,
`and 65
`68
`
`Vuori and Väänänen and Abburi and
`Daniell8
`Malik9 and Väänänen
`
`1-3, 5, 14, 15,17,
`19, 28, 29, 31, 33,
`40, 42, 51, 53, 62,
`and 64
`4, 18, 52, and 63 Malik and Väänänen, and Deshpande
`
`
`
`Petition Ground
`IPR2017-
`1
`00220
`
`IPR2017-
`00220
`IPR2017-
`00220
`IPR2017-
`00220
`IPR2017-
`00221
`
`IPR2017-
`00221
`IPR2017-
`00221
`IPR2017-
`00221
`
`2
`
`3
`
`4
`
`5
`
`6
`
`7
`
`8
`
`6, 20, 34, 43, 54,
`and 65
`68
`
`Malik and Väänänen and Abburi
`
`Malik and Väänänen and Abburi and
`Daniell
`
`
`
`The Redundant Challenges Are Not Entitled to Consideration
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`The Board has long held that multiple grounds for unpatentability for the
`
`same claim will not be considered unless the petition itself explains the relative
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`strengths and weaknesses of each ground. See Liberty Mut. Ins. Co. v. Progressive
`
`
`4 Ex. 1005, U.S. Patent Application Publication No. 2002/0146097 (“Vuori”).
`5 Ex. 1008, U.S. Patent No. 7,218,919 (“Väänänen”).
`6 Ex. 1009, U.S. Patent Application Publication No. 2003/0046273 (“Deshpande”).
`7 Ex. 1015, U.S. Patent Application Publication No. 2003/0147512 (“Abburi”).
`8 Ex. 1010, U.S. Patent Application Publication No. 2004/0068545 (“Daniell”).
`9 Ex. 1007, U.S. Patent No. 7,123,695 (“Malik”).
`
`9
`
`
`
`IPR2017-00220
`U.S. Patent 7,535,890
`Cas. Ins. Co., No. CBM2012-00003 (P.T.A.B. Oct. 25, 2012), Paper 7; see also
`
`Ford Motor Co. v. Paice LLC et al., No. IPR2014-00570 (P.T.A.B. Nov. 26, 2014),
`
`Paper 17 (“[T]he proper focus of a challenge based on multiple grounds is not
`
`simply whether a difference exists between the grounds. Rather, the petitioner must
`
`explain some meaningful advantage for proceeding on multiple grounds in terms of
`
`their variant strengths and weaknesses as applied to the challenged claim.”). This is
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`because “numerous redundant grounds would place a significant burden on the
`
`Patent Owner and the Board, and would cause unnecessary delays,” contrary to 37
`
`C.F.R. §42.1(b), which calls for the “just, speedy, and inexpensive resolution of
`
`every proceeding.” Id. The Board has recognized at least two types of impermissible
`
`redundancy: horizontal and vertical. Id. at 3. The Petition presents multiple
`
`unjustified instances of both types of redundancy; and those redundant challenges
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`are not entitled to consideration.
`
`1.
`The '220 and '221 Petitions Are Horizontally Redundant
`Petitioner chose to file two consecutive inter partes review petitions
`
`(IPR2017-00220 and IPR2017-0022110) which challenge the same claims of the
`
`same '890 Patent under redundant theories of obviousness. Even the accompanying
`
`exhibits of both petitions are identical. The redundant petitions only differ in that
`
`the present '220 Petition relies on Vuori (Ex. 1005) as the primary reference, while
`
`
`10 See note 1, supra.
`
`10
`
`
`
`IPR2017-00220
`U.S. Patent 7,535,890
`the redundant '221 Petition relies, instead, on Malik (Ex. 1007) as the primary
`
`reference (even though Malik appears on the face of the '890 Patent as a reference
`
`cited by the Examiner during prosecution). Such redundancy is impermissible
`
`because Petitioner fails to explain “why each ground has strength and weakness
`
`relative to the other should both grounds be asserted for consideration.” Liberty
`
`Mutual, CBM2012-00003, Paper 7 at 3 (emphasis original).
`
`Petitioner impermissibly seeks what the Board refers to as horizontal
`
`redundancy. Horizontal redundancy occurs when multiple references are relied upon
`
`to “provide essentially the same teaching to meet the same claim limitation, and the
`
`associated arguments do not explain why one reference more closely satisfies the
`
`claim limitation at issue in some respects than another reference, and vice versa.”
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`Liberty Mut., CBM2012-00003, Paper 7 at 3 (emphasis original).
`
`The Board’s unwillingness to consider references presented in a horizontally
`
`redundant manner demonstrates its aversion to art that is cumulative of other art
`
`presented to it, where the multiple references are essentially interchangeable and
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`used to allegedly disclose the same claim features.
`
`The Board recently exercised this discretion to deny redundancy appearing
`
`within separate petitions in the “informative” decision Medtronic, Inc. v. NuVasive,
`
`Inc., No. IPR2014-00487 (Sept. 11, 2014), Paper 8. The petitioner had previously
`
`filed two IPR petitions challenging the same patent. The Board denied one petition
`
`11
`
`
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`IPR2017-00220
`U.S. Patent 7,535,890
`and instituted the other. The Board denied a third petition challenging the same
`
`patent as “essentially a duplicate” of the denied petition, despite the fact the
`
`petitioner had argued the third petition corrected deficiencies, provided new
`
`evidence and arguments, and presented grounds that were not redundant to the
`
`grounds presented in the instituted petition.
`
`It is Petitioner’s obligation to explain why the Board should institute trial on
`
`multiple redundant grounds. Liberty Mutual, CBM2012-00003, Paper 7 at 3. As
`
`discussed herein, not only has Petitioner not met that obligation, it has not even
`
`attempted to provide explanations which would justify dedication of the Board’s
`
`resources toward analyzing references in a cumulative and redundant manner.
`
`Petitioner considers Vuori a stronger primary reference than Malik in all
`
`respects with but one exception: Petitioner concedes that Vuori “does not explicitly
`
`label any of its servers as a ‘local server.’” Pet. 4. The term “local server” only
`
`appears in independent Claims 28, 62, and dependent Claim 15. As the remainder
`
`of the challenged claims do not require a “local server,” Petitioner’s alleged
`
`justification does not apply to the redundant challenges against independent Claims
`
`1, 14, 40 and 51 and dependent Claims 2-6, 17-20, 29, 31, 33-34, 40, 42-43, 51-54,
`
`63-65, and 68 (i.e., every challenged claim other than Claims 15, 28, and 62).
`
`At best, all Petitioner has attempted to do is offer a contrived explanation for
`
`its redundancy with respect to only three of the twenty-nine claims challenged at
`
`12
`
`
`
`IPR2017-00220
`U.S. Patent 7,535,890
`least twice in the paired '220 and '221 Petitions. That de minimus effort is
`
`insufficient. Mobotix Corp. v. E-Watch, Inc., No. IPR2013-00335 (P.T.A.B. Jan. 10,
`
`2014), Paper 20 at 2-3 (finding redundant challenges are not entitled to consideration
`
`where petitioner alleges distinctions that are inapplicable to those claims).
`
`Accordingly, the unjustified redundant challenges are not entitled to consideration.
`
`2.
`Petitioner Compounds Its Error with Vertical Redundancies
`Evidently recognizing (though unwilling to openly admit) the weakness of
`
`Vuori as a primary reference, Petitioner repeatedly attempts to argue in the
`
`alternative that “[t]o the extent Patent Owner argues that Vuori [or a combination
`
`including Vuori] does not explicitly teach or suggest this limitation, it is taught or
`
`suggested by” one or more of the other cited references. Pet. 24, 33-34, 66.
`
`Petitioner’s unjustified “backup” arguments repeatedly violate the Board’s
`
`prohibition against vertical redundancy.
`
`Vertical redundancy “involves a plurality of prior art applied both in partial
`
`combination and in full combination. In the former case, fewer references than the
`
`entire combination are sufficient to render a claim obvious, and in the latter case the
`
`entire combination is relied on to render the same claim obvious.” Liberty Mut.,
`
`CBM2012-00003, Paper 7 at 3. In such instances where a larger group of relied upon
`
`references and a subset thereof are both alleged to be sufficient to render a claim
`
`obvious, “[t]here must be an explanation of why the reliance in part may be the
`
`13
`
`
`
`IPR2017-00220
`U.S. Patent 7,535,890
`stronger assertion as applied in certain instances and why the reliance in whole may
`
`also be the stronger assertion in other instances.” Id. (emphasis in original).
`
`If one of the alternative grounds is better from all perspectives, then the Board
`
`should only consider the stronger ground and not burden the Patent Owner and the
`
`Board with the weaker ground. Further, if there is no difference in the grounds, the
`
`Petitioner should only assert one of the grounds. Id. at 12. “Only if the Petitioner
`
`reasonably articulates why each ground has strength and weakness relative to the
`
`other should both grounds be asserted for consideration.” Id.
`
`Petitioner makes no effort to explain why its implicit “reliance in part [i.e.,
`
`on Vuori alone] may be the stronger assertion as applied in certain instances and
`
`why the reliance in whole [e.g., Vuori as modified by another reference(s)] may also
`
`be the stronger assertion in other instances.” Id. Rather, in each instance of vertical
`
`redundancy, Petitioner simply suggests that if the Board does not adopt Petitioner’s
`
`admittedly tenuous challenge based on Vuori alone, then the additional reference(s)
`
`offered in a vertically redundant manner cure(s) any deficiency.
`
`The Board in Eizo Corp. v. Barco N.V.11 flatly rejected a similar attempt to
`
`hedge bets and unnecessarily multiply the work of both the Board and the Patent
`
`Owner. The Board there found insufficient the petitioner’s “conclusory assertion”
`
`that “[t]o the extent [the first prior art reference] may not explicitly teach” the
`
`
`11 No. IPR2014-00358 (P.T.A.B. July 23, 2014), Paper 11.
`
`14
`
`
`
`IPR2017-00220
`U.S. Patent 7,535,890
`limitation, the second prior art reference “explicitly teaches this limitation.” The
`
`Board explained that “such an assertion fails to resolve the exact differences sought
`
`to be derived from” the second prior art reference. Id. (finding that petitioner had not
`
`shown a reasonable likelihood of prevailing on that ground).
`
`Because Petitioner makes no attempt to justify its vertical redundancies, the
`
`Board should find those redundancies based on the larger group are not entitled to
`
`consideration. Regardless whether the Board considers the merits of any of
`
`Petitioner’s vertically redundant theories, the Petition still fails to present a prima
`
`facie case of obviousness for even one challenge claim, for reasons explained below.
`
`
`
`Petitioner’s Abusive Pattern of Redundancy is Improper
`
`Petitioner has exhibited an abusive pattern of redundancy in each of the six
`
`petitions it filed the same week against the same family of patents.12 Considering
`
`those six petitions on their face, Petitioner consistently presents exactly two
`
`horizontally redundant grounds against every challenged claim (65 challenged
`
`claims in total). That redundancy is compounded by rampant vertically redundant
`
`arguments contained within each petition (which may not be apparent on the face of
`
`the petitions). Yet in every instance Petitioner only offers an illusory explanation
`
`
`IPR2017-00221,
`IPR2017-0220,
`12 Nos.
`IPR2017-00224 and IPR2017-00225.
`
`IPR2017-00222,
`
`IPR2017-00223,
`
`15
`
`
`
`IPR2017-00220
`U.S. Patent 7,535,890
`that merely addresses some, though not all, of the horizontal redundancies; and
`
`Petitioner makes no attempt to justify any of its vertical redundancies.
`
`Given the consistent pattern of redundancy across all six petitions, it appears
`
`as if Petitioner has the false perception that multiplying patentability challenges
`
`somehow multiplies the chances that the Board might institute trial. Or perhaps
`
`Petitioner mistakenly believes that the Board will be inclined to consider all
`
`redundant arguments and “split the baby” by instituting trial for whichever
`
`redundant argument
`
`is deemed strongest. In either case, Petitioner has
`
`misunderstood precedent.
`
`The Board does not award such gamesmanship with an increased probability
`
`of institution, but rather it repeatedly and consistently declines to consider
`
`impermissibly-redundant arguments altogether, for the well-articulated reasons set
`
`forth in Liberty Mutual. Even King Solomon (acting as judge) had no intention of
`
`“splitting the baby,” but rather he wisely understood that threatening such an
`
`extreme solution would expose which party was being disingenuous.
`
`To the extent the Board considers only the merits of the patentability
`
`challenges in the present '220 Petition, and determines the admittedly weaker and
`
`redundant '221 Petition is not entitled to consideration, the present '220 Petition
`
`should be denied as failing to present a prima facie case of obviousness for even one
`
`challenged claim for each one of the independent reasons set forth below.
`
`16
`
`
`
`IPR2017-00220
`U.S. Patent 7,535,890
`IV. NO REASONABLE LIKELIHOOD THAT AT LEAST ONE OF THE
`CHALLENGED CLAIMS IS UNPATENTABLE
`The Petition presents the following grounds, which are all based on
`
`obviousness theories. As Ground 1, Petitioner alleges obviousness of Claims 1-3, 5,
`
`14, 15,17, 19, 28, 29, 31, 33, 40, 42, 51, 53, 62, and 64 under 35 U.S.C. § 103 over
`
`Vuori in view of Väänänen. As Ground 2, the Petition alleges obviousness of Claims
`
`4, 18, 52, and 63 under 35 U.S.C. § 103 over Vuori in view of Väänänen and
`
`Deshpande. As Ground 3, the Petition alleges obviousness of Claims 6, 20, 34, 43,
`
`54, and 65 under 35 U.S.C. § 103 over Vuori in view of Väänänen and Abburi. As
`
`Ground 4, the Petition alleges obviousness of Claim 68 under 35 U.S.C. § 103 over
`
`Vuori in view of Väänänen, Abburi, and Daniell.
`
`Petitioner has the burden of proof to establish they are entitled to their
`
`requested relief. 37 C.F.R. § 42.108(c). Because the Petition only presents theories
`
`of obviousness, Petitioner must demonstrate a reasonable likelihood that at least one
`
`of the challenged patent claims would have been obvious in view of the art cited in
`
`the Petition. Petitioner “must specify where each element of the claim is found in
`
`the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4).
`
`After rejecting Petitioner’s redundant grounds, the Board should reject the remaining
`
`17
`
`
`
`IPR2017-00220
`U.S. Patent 7,535,890
`non-redundant, non-cumulative grounds (if any) because Petitioner fails to meet this
`
`burden.13
`
` No Claim Construction Needed for “External Network”
`
`Petitioner seeks to construe only a single term, “external network,” as recited
`
`in independent Claims 14, 28, 51, and 62. This term requires no construction,
`
`however, because the claim language already expressly defines “external network”
`
`by reciting that it must be “outside the local network.” See, e.g., Ex. 1001 25:25-26.
`
`Contrary to that straightforward and definitive context, Petitioner seeks to
`
`ambiguously construe “external network” to mean, instead, “a network that is outside
`
`another network” in general—i.e., as opposed to “outside the local network” in
`
`particular. Confusingly, the claimed “local network” would also qualify as an
`
`“external network” within Petitioner’s proposed construction because it is, by
`
`definition, outside the external network and therefore “outside another network.”
`
`Indeed, literally every network ever created is “outside” at least one other respective
`
`network, and thus Petitioner’s proposed definition potentially reads out the “external”
`
`qualifier altogether and risks expanding this term to simply mean a “network.”
`
`
`13 While certain deficiencies in the Petition are addressed herein, Patent Owner
`hereby expressly reserves the right to address other deficiencies of the Petition in a
`full Response (and with the support of its own expert) if an inter partes review is
`instituted.
`
`18
`
`
`
`IPR2017-00220
`U.S. Patent 7,535,890
`Accordingly, Petitioner’s proposed construction should be rejected as
`
`unnecessarily injecting ambiguity for a term that is already clearly defined. See
`
`Apple Inc. v. ContentGuard Holdings, Inc., No. IPR2015-00353 (P.T.A.B. June 25,
`
`2015), Paper 9 (declining to adopt proposed claim construction that would render
`
`other claim language superfluous) and Biotronik, Inc. et al. v. My Health, Inc., No.
`
`IPR2015-00102 (P.T.A.B. April 16, 2015), Paper 11 (declining to adopt proposed
`
`claim construction that “introduces ambiguity into the meaning of the term.”).
`
`If this term is construed at all, Petitioner’s construction should also be rejected
`
`as failing to confirm the conceded point that the “external network” must be part of
`
`the “plurality of packet-switched networks” referenced in the preamble of all claims
`
`reciting this term. Petitioner admits that in every instance “a plurality of
`
`packet-switched networks” is recited in the claims, it expressly includes both the
`
`claimed “local network” and the claimed “external network.” Pet. 7 (“independent
`
`claims 14 and 51 relate to a system/method for delivering an instant voice message
`
`over a plurality of packet-switched networks (including ‘local network’ and
`
`‘external network’).”); id. (“independent claims 28 and 62 also relate to a
`
`system/method for delivering an instant voice message over a plurality of
`
`packet-switched networks (including ‘local network’ and ‘external network’). If the
`
`Board is inclined to construe this term, the construction should reflect that
`
`concession.
`
`19
`
`
`
`IPR2017-00220
`U.S. Patent 7,535,890
` Ground 1: Independent Claims 1, 14, 28, 40, 51 and 62 are Not
`Obvious Over the Proposed Vuori-Väänänen Combination
`As a procedural matter, and as explained further above, Petitioner makes no
`
`attempt to justify the facially horizontal redundancies arising in the present '220
`
`Petition in view of the co-pending '221 Petition14 filed by the same Petitioner. To the
`
`extent the Board deems the co-pending '221 Petition as the horizontally redundant
`
`one of the pair and thus not entitled to consideration, the present '220 Petition should
`
`be denied as failing to present a prima facie case of obviousness for even one
`
`challenged claim for each one of the independent reasons set forth below.
`
`1. Overview of Applicable Law
`A patent is obvious “if the differences between the subject matter sought to
`
`be patented and the prior art are such that the subject matter as a whole would have
`
`been obvious at the time the invention was made to a person having ordinary skill
`
`in the art to which said subject matter pertains.” 35 U.S.C. § 103(a). An obviousness
`
`determination must be based on four factual inquiries: (1) the scope and content of
`
`the prior art; (2) the differences between the claims and the prior art; (3) the level of
`
`ordinary skill in the art; and (4) objective indicia of non-obviousness. KSR Int’l Co.
`
`v. Telefle
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