UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`APPLE, INC.,
`Petitioner
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
`
`
`
`
`
`
`
`
`IPR2017-00222
`PATENT 8,243,723
`
`
`
`
`
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`APPLE, INC.,
`Petitioner
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
`
`
`
`
`
`
`
`
`IPR2017-00222
`PATENT 8,243,723
`
`
`
`
`
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
`
`
`
`
`
`
`
`
`I.
`II.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`3.
`
`INTRODUCTION
`BACKGROUND OF THE '723 PATENT
`Priority of the '723 Patent
`Overview of the '723 Patent
`III. THE PETITION IS IMPERMISSIBLY REDUNDANT & cumulative
`The Redundant Challenges Are Not Entitled to Consideration
`1.
`Petitioner Presents a Pair of Horizontally Redundant
`Grounds Against Each Challenged Claim
`The Petition Contains 16 Vertically Redundant Theories
`2.
` Malik is also Cumulative with the Prosecution Record
`Petitioner’s Abusive Pattern of Redundancy is Improper
`IV. NO REASONABLE LIKELIHOOD THAT AT LEAST ONE OF
`THE CHALLENGED CLAIMS IS UNPATENTABLE
`Claim Construction is Unnecessary Here
`Ground 1: Independent Claims 1 is Not Obvious Over Vuori
`1.
`Overview of Applicable Law
`2.
`No prima facie case for “associating a sub-set of the
`nodes with a client”
`No prima facie case for “transmitting a signal to a client
`including a list of the recorded connectivity status for
`each of the nodes in the sub-set corresponding to the client” 25
`Grounds 2 and 3 Only Challenge Claims Which Depend From
`Nonobvious Independent Claim 1
` Grounds 4 and 5 are Horizontally Redundant and Based on
`Nonanalogous Art
`
`IPR2017-00222
`U.S. Patent 8,243,723
`
`Tables of Contents
`
`1
`3
`3
`5
`8
`8
`
`9
`12
`14
`15
`
`17
`18
`19
`19
`
`20
`
`28
`
`29
`
`ii
`
`
`
`1.
`
`2.
`
`IPR2017-00222
`U.S. Patent 8,243,723
`No prima facie case for “associating a sub-set of the
`nodes with a client”
`No prima facie case for “temporarily storing the instant
`voice message if a recipient is unavailable”
`No prima facie case against challenged dependent claims
`3.
`CONCLUSION
`
`32
`33
`33
`
`31
`
`V.
`
`
`iii
`
`
`
`IPR2017-00222
`U.S. Patent 8,243,723
`
`I.
`
`INTRODUCTION
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107(a), Uniloc Luxembourg
`
`S.A. (“Patent Owner”) submits this Preliminary Response to the Petition for Inter
`
`Partes Review (“the Petition”) of U.S. Patent No. 8,243,723 (“the '723 Patent”) filed
`
`by Apple, Inc. (“Petitioner”).
`
`Petitioner follows the same impermissible strategy in challenging the '723
`
`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)
`
`claims of four related patents. Petitioner consistently presents at least a pair of
`
`redundant obviousness theories for every challenged claim. As an apparent
`
`afterthought, Petitioner then offers an illusory justification that is applicable, if at
`
`all, to only a mere fraction of those redundant challenges.
`
`The Board has long held that redundant grounds are not entitled to
`
`consideration unless the petitioner provides a sufficient bi-directional explanation of
`
`the relative strengths and weaknesses of the redundant grounds. In the present
`
`Petition, Grounds 1-3 rely on Vuori (Ex. 1005) as the primary reference, while
`
`Grounds 4-5 redundantly challenge the same claims but rely, instead, primarily on
`
`Stubbs (Ex. 1022).
`
`As explained further below, the Board should deny Grounds 4-5 as
`
`horizontally redundant with Grounds 1-3, and thus not entitled to consideration, for
`
`1
`
`
`
`IPR2017-00222
`U.S. Patent 8,243,723
`at least two overarching reasons: (1) Petitioner identifies Vuori as having a relative
`
`strength, but no relative weakness, with respect to the limitations recited in the
`
`challenged independent claims; and (2) Petitioner undercuts the alleged strength of
`
`Stubbs by suggesting that both Vuori and Stubbs provide a sufficient description of
`
`the general structure and functionality of a packet-switched network. Accordingly,
`
`at a minimum, the Board should deny Grounds 4 and 5 (based primarily on Stubbs)
`
`as horizontally redundant with Grounds 1-3 (based primarily on Vuori).
`
`Another disturbing pattern of the six related petitions is that Petitioner does
`
`not provide even one explanatory claim chart for any of the redundant obviousness
`
`theories asserted against sixty-five (65) patent claims in total. To make matters
`
`worse, each petition primarily relies on ambiguous and unexplained citations to the
`
`art, without providing an accompanying explanation or argument as to why the
`
`reference(s) render(s) obvious the limitation in question. Cf. In Fontaine Engineered
`
`Prods., Inc. v. Raildecks, (2009), Inc., No. IPR2013-00360 (P.T.A.B. Dec. 13,
`
`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
`
`reference without any accompanying explanation or argument as to why the
`
`reference discloses or teaches the recited element).
`
`The declaration attached to each of the six petitions is of no moment because
`
`it simply parrots back the same citations and the same unexplained and conclusory
`
`2
`
`
`
`IPR2017-00222
`U.S. Patent 8,243,723
`statements presented in the corresponding petition. See In Kinetic Technologies, Inc.
`
`v. Skyworks Solutions, Inc., No. IPR2014-00529 (P.T.A.B. Sept. 23, 2014), Paper 8
`
`(denying the petition because the expert’s declaration did not provide any facts or
`
`data to support the underlying opinion of obviousness, but rather was substantially
`
`identical to the conclusory arguments of the petition).
`
`While the Board need not reach the merits of any redundant grounds, Patent
`
`Owner identifies herein example instances where each ground of the Petition
`
`overlooks various claim limitations and thus fails to “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). For the reasons disclosed herein, the Petition should be denied
`
`in its entirety as failing to meet the threshold burden of proving there is a reasonable
`
`likelihood that at least one challenged claim is unpatentable.1
`
`II. BACKGROUND OF THE '723 PATENT
`
`Priority of the '723 Patent
`
`The '723 Patent is titled “SYSTEM AND METHOD FOR INSTANT VOIP
`
`MESSAGING.” Ex. 1001. The '723 Patent issued from U.S. Patent Application No.
`
`
`1 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.
`
`3
`
`
`
`IPR2017-00222
`U.S. Patent 8,243,723
`12/398,063, which is a continuation of U.S. Patent No. 7,535,890, filed on Dec. 18,
`
`2003. The '723 Patent issued on August 13, 2012.
`
`Below is a picture of the family tree for the four patents Petitioner challenges
`
`in a series of five consecutively filed petitions (IPR2017-00220 through -00225).
`
`Challenged by Petitioner in
`IPR2017-00220 and IPR2017-00221
`
`
`
`IPR2017-00222
`
`IPR2017-00223 &
`IPR2017-00224
`
`IPR2017-00225
`
`
`
`4
`
`
`
`IPR2017-00222
`U.S. Patent 8,243,723
`
` Overview of the '723 Patent
`
`The
`
`'723 Patent
`
`recognized
`
`that
`
`conventional
`
`circuit-switched
`
`communications enabled traditional telephony yet had a variety of technical
`
`disadvantages that limited developing other forms of communication over such
`
`networks. According
`
`to
`
`the
`
`'723 Patent, “[c]ircuit switching provides a
`
`communication path (i.e., dedicated circuit) for a telephone call from the telephone
`
`terminal to another device 20 over the [public switched telephone network or] PSTN,
`
`including another
`
`telephone
`
`terminal. During
`
`the
`
`telephone call, voice
`
`communication takes place over that communication path.” (Ex. 1001, 1:25-30.)
`
`The '723 Patent expressly distinguishes circuit-switched networks from
`
`packet-switched networks (e.g., the Internet) at least in that the latter routes
`
`packetized digital information, such as “Voice over Internet Protocol (i.e., “VoIP”),
`
`also known as IP telephony or Internet telephony.”2 (1:31-33.) Because legacy
`
`
`2 Consistent with the '723 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 and
`90/012,789 (Notice of Intent to Issue Ex Parte Reexamination Certificate, dated
`April 10, 2014) at page 9, where the USPTO confirmed the following:
`
`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
`
`
`
`IPR2017-00222
`U.S. Patent 8,243,723
`circuit-switched devices were unable to communicate directly over packet-switched
`
`networks, media gateways (114) were designed to receive circuit-switched signals
`
`and packetize them for transmittal over packet-switched networks, and vice versa.
`
`(1:61-2:17.) The conversion effected by media gateways (e.g., 114 and 118)
`
`highlights the fact that packetized data carried over packet-switched networks (e.g.,
`
`IP network 102) are different from and are incompatible with an audio signal carried
`
`over a dedicated packet-switched circuit. (1:25-30.)
`
`The '723 Patent further recognized that, notwithstanding the advent of instant
`
`text messages, at the time of the claimed invention there was no similarly convenient
`
`analog to leaving an instant voice message over a packet-switched network. (2:18-
`
`50.) Rather, “conventionally, leaving a voice message involves dialing the
`
`recipient’s telephone number (often without knowing whether the recipient will
`
`answer), waiting for the connection to be established, speaking to an operator or
`
`navigating through a menu of options, listening to a greeting message, and recording
`
`the message for later pickup by the recipient. In that message, the user must typically
`
`identify himself or herself in order for the recipient to return the call.” (2:22-29.)
`
`The inventor observed, therefore, that “notwithstanding the foregoing
`
`advances in the VoIP/PSTN voice communication and voice/text messaging, there
`
`
`connection-oriented protocols, including better use of available
`bandwidth.
`
`6
`
`
`
`IPR2017-00222
`U.S. Patent 8,243,723
`is still a need in the art for providing a system and method for providing instant VoIP
`
`messaging over an IP network.” (2:43-49.) Certain embodiments of the '890 Patent
`
`addressed that need, in part, by providing a user-accessible client (208) that is
`
`specially configured for instant voice message (IVM) and for direct communication
`
`over a packet-switched network (e.g., through an Ethernet card) (12:11-12.) More
`
`specifically, the '723 Patent teaches that certain clients (208) are specially configured
`
`to “listen[] to the input audio device 212,” “record[] the user’s speech into a digitized
`
`audio file 210 (i.e., instant voice message) stored on the IVM client 208,” and
`
`“transmit[] the digitized audio file 210” as packetized data (e.g., using TCP/IP) over
`
`a packet-switched network (e.g., network 204) “to the local IVM server 202.” (8:4-
`
`8:18.)
`
`The Petition challenges independent Claim 1 and seven dependent Claims
`
`2-8. For the convenience of the Board, Claim 1 is reproduced below:
`
`1. A method for instant voice messaging over a packets-switched
`network, the method comprising:
`monitoring a connectivity status of nodes within the packet-
`switched network, said connectivity status being available
`and unavailable;
`recording the connectivity status for each of the nodes;
`associating a sub-set of the nodes with a client;
`transmitting a signal to a client including a list of the recorded
`connectivity status for each of the nodes in the sub-set
`corresponding to the client;
`
`7
`
`
`
`IPR2017-00222
`U.S. Patent 8,243,723
`receiving an instant voice message having one or more
`recipients;
`delivering the instant voice message to the one or more
`recipients over a packet-switched network;
`temporarily storing the instant voice message if a recipient is
`unavailable; and
`delivering the stored instant voice message to the recipient
`once the recipient becomes available.
`III. THE PETITION IS IMPERMISSIBLY REDUNDANT & CUMULATIVE
`As shown in the table below, Petitioner challenges the patentability of certain
`
`claims of the '723 Patent under 35 U.S.C. § 103(a) over the following redundant and
`
`cumulative combinations of references:
`
`Ground Claims
`1
`1
`2
`2-7
`3
`8
`4
`1-7
`5
`8
`
`Reference(s)
`
`Vuori3
`Vuori and Malik4
`Vuori and Malik and Lerner5
`Stubbs6 and Abburi7 (redundant with Grounds 1-2)
`Stubbs and Lerner (redundant with Ground 3)
`
` The Redundant Challenges Are Not Entitled to Consideration
`
`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
`
`
`3 Ex. 1005, U.S. Patent Application Publication No. 2002/0146097 (“Vuori”).
`4 Ex. 1007, U.S. Patent No. 7,123,695 (“Malik”).
`5 Ex. 1021, U.S. Patent No. 6,192,395 (“Lerner”).
`6 Ex. 1022, WO Patent Publication No. 99/63773 (“Stubbs”).
`7 Ex. 1023, U.S. Patent Application Publication No. 2003/0147512 (“Abburi”).
`
`8
`
`
`
`IPR2017-00222
`U.S. Patent 8,243,723
`strengths and weaknesses of each ground. See Liberty Mut. Ins. Co. v. Progressive
`
`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
`
`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 are not entitled to
`
`consideration.
`
`1.
`
`Petitioner Presents a Pair of Horizontally Redundant Grounds
`Against Each Challenged Claim
`At a minimum, the Board should deny Grounds 4-5 as redundant with
`
`Grounds 1-3, and thus not entitled to consideration, for at least the following
`
`reasons: (1) Petitioner identifies Vuori as having a relative strength, but no relative
`
`9
`
`
`
`IPR2017-00222
`U.S. Patent 8,243,723
`weakness, with respect to the limitations recited in the challenged independent
`
`claims; and (2) Petitioner undercuts the alleged strength of Stubbs by suggesting that
`
`both Vuori and Stubbs provide a sufficient description of the general structure and
`
`functionality of a packet-switched network.
`
`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.”
`
`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
`
`used to allegedly disclose the same claim features.
`
`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.
`
`10
`
`
`
`IPR2017-00222
`U.S. Patent 8,243,723
`Rather than explicitly state relative strengths and weaknesses between Vuori
`
`and Stubbs, as is required, Petitioner submits “Vuori better teaches the ‘transmitting
`
`a signal to a client including a list of the recorded connectivity status for each of the
`
`nodes in the sub-set corresponding to the client’ recited in independent claim 1.”
`
`Pet. 3. Nothing in that statement or in the remainder of the Petition amounts to a
`
`concession that Stubbs has any weakness with respect to that claim limitation.
`
`Redundancy cannot be justified by suggesting two redundant grounds independently
`
`prove obviousness, but one is simply “better” than the other in certain respects.
`
`Moreover, Petitioner fails to explain the significance, if any, of the relative
`
`“strength” it identifies for Stubbs. Petitioner’s sole distinction of Stubbs is that it
`
`“provides a more detailed description of the structure and functionality of a packet-
`
`switched network.” Pet. 3. Yet Petitioner fails to identify any claim language
`
`allegedly impacted by the level of detail in a reference concerning the general
`
`“structure and functionality of a packet-switched network.” Presumably such
`
`information is imputed to one having ordinary skill in the art; and none of the
`
`challenged claims purport to invent a “packet-switched network” in general.
`
`In addition, Petitioner’s subtle distinction of Stubbs at least implies—if not
`
`outright admits—that, in Petitioner’s view, both references have a detailed
`
`description of the structure and functionality of a packet-switched network, though
`
`Stubbs allegedly is “more detailed” for some unexplained reason. Because Petitioner
`
`11
`
`
`
`IPR2017-00222
`U.S. Patent 8,243,723
`apparently maintains that both references provide a sufficient description of the
`
`general structure and functionality of a packet-switched network, and Vuori is
`
`allegedly the stronger reference with respect to the claim language, Petitioner offers
`
`no reasonable justification for the redundant grounds based on Stubbs. Accordingly,
`
`the Board should deny Grounds 4 and 5 (based primarily on Stubbs) as horizontally
`
`redundant with Grounds 1-3 (based primarily on Vuori).
`
`Petitioner’s paired horizontal redundancies are further compounded by
`
`vertical redundancies, as explained in the following section.
`
`2.
`Petitioner submits at Least 16 Vertically Redundant Theories
`Evidently recognizing (though unwilling to openly admit) the weakness of
`
`both Vuori and Stubbs as alternative primary references, Petitioner repeatedly
`
`attempts to argue in the alternative (at least sixteen times) that “[t]o the extent
`
`[Vuori/Stubbs] does not explicitly teach or suggest this limitation, it is taught or
`
`suggested by” one or more of the other cited references. Pet. 21, 23, 25, 28, 37, 40,
`
`41, 54, 59, 63, 65, 69, 70, 71, 72, and 73. 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.,
`
`12
`
`
`
`IPR2017-00222
`U.S. Patent 8,243,723
`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
`
`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 “the reliance in part may be the
`
`stronger assertion as applied in certain instances and why the reliance in whole 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 buy
`
`Petitioner’s admittedly tenuous challenge with respect to Vuori, then a secondary
`
`reference provides a backup argument (albeit one that is vertically redundant and
`
`also without merit).
`
`13
`
`
`
`IPR2017-00222
`U.S. Patent 8,243,723
`The Board in Eizo Corp. v. Barco N.V.8 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
`
`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).
`
`Even if the Board were to consider any of Petitioner’s horizontally and
`
`vertically redundant theories, the Petition still fails to present a prima facie case of
`
`obviousness for even one challenge claim, for reasons explained below.
`
` Malik is also Cumulative with the Prosecution Record
`
`Petitioner fails to mention to the Board that its reliance on Malik (as a
`
`secondary reference) is also cumulative with the prosecution record. The face of the
`
`'890 Patent lists U.S. Patent Application Publication No. 2007/0112925 by Malik et
`
`al. as being among the many references cited by the Examiner during prosecution.
`
`Ex. 1001. That application was filed as a continuation of the Malik reference cited
`
`in the Petition and has the same specification.
`
`
`8 IPR2014-00358, Paper 11 (P.T.A.B. July 23, 2014).
`
`14
`
`
`
`IPR2017-00222
`U.S. Patent 8,243,723
`Under 35 U.S.C. § 325(d), the Board need not and should not second-guess
`
`issues of patentability that the Office addressed before issuing this patent.
`
`Specifically, § 325(d) authorizes the Office to reject grounds for inter partes review
`
`that seek to reargue positions previously lost:
`
`In determining whether to institute or order a proceeding under
`this chapter, chapter 30, or chapter 31, the Director may take
`into account whether, and reject the petition or request because,
`the same or substantially the same prior art or arguments
`previously were presented to the Office.
`
`
`35 U.S.C. § 325(d) (emphasis added). Accordingly, § 325(d) confirms the
`
`Petitioner’s reliance on Malik should be rejected as cumulative with what the
`
`Examiner had cited and considered during prosecution.
`
`It is significant that Petitioner ignores § 325(d) altogether and makes no
`
`attempt to explain why its cumulative reliance on Malik does not invoke that statute.
`
`See Baker Hughes Oilfield Operations, Inc. v. Smith International, Inc., No.
`
`IPR2016-01450 (P.T.A.B. Dec. 22, 2016), Paper 10 at 10-11 (finding the reliance
`
`on references previously presented to the Office was not entitled to consideration
`
`due to “the failure of Petitioner to address the impact of § 325(d)”).
`
`
`
`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. See
`
`IPR2017-0220 through -00225. Considering those six petitions on their face,
`
`15
`
`
`
`IPR2017-00222
`U.S. Patent 8,243,723
`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 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
`
`unjustified 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.
`
`16
`
`
`
`IPR2017-00222
`U.S. Patent 8,243,723
`Because redundant Grounds 4 and 5 (relying on Stubbs) suffers from
`
`additional defects, explained below, and because Petitioner repeatedly relies on
`
`Vuori elsewhere in its multiple inter partes review petitions filed against this family
`
`of patents, it is both recommended and anticipated that for the sake of expediency
`
`that the Board will only consider the Grounds 1-3 of the present Petition, which
`
`assert Vuori as the primary reference. Nevertheless, out of an abundance of caution,
`
`Patent Owner further identifies below substantive deficiencies in all Grounds 1-5
`
`presented in the Petition.
`
`IV. NO REASONABLE LIKELIHOOD THAT AT LEAST ONE OF THE
`CHALLENGED CLAIMS IS UNPATENTABLE
`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).
`
`The Board should reject any non-redundant, non-cumulative grounds that remain (if
`
`any) because Petitioner fails to meet this burden.9
`
`
`9 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
`
`17
`
`
`
`IPR2017-00222
`U.S. Patent 8,243,723
`
` Claim Construction is Unnecessary Here
`
`In the section in the Petition addressing claim construction, Petitioner seeks to
`
`construe only a single term, “intercom mode,” as recited in dependent Claims 4-8.
`
`Given that the Petition fails to present a case of prima facie obviousness for
`
`independent Claim 1, there is no need for the Board to construe terms that only appear
`
`in dependent claims. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`
`803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in controversy,
`
`and only to the extent necessary to resolve the controversy.”).
`
`Notably, Petitioner offers the conclusory statement “[t]he term ‘client’ means
`
`‘a computing device capable of transmitting voice data over a network.’” Pet. 11.
`
`Given that Petition does not mention the “client” term in the section addressing claim
`
`construction, it is unclear whether Petitioner is seeking, without explanation, to
`
`move the Board to construe that term as proposed.
`
`In any event, for the reasons set forth below, Petitioner has failed to meet its
`
`threshold burden regardless whether the Board adopts Petitioner’s proposed
`
`construction for both “intercom mode” and “client.” 10
`
`
`instituted.
`10 The standard for claim construction at the Patent Office is different from that used
`during a U.S. district court litigation for non-expired patents. See In re Am. Acad. of
`Sci. Tech Ctr., 367 F.3d 1359, 1364, 1369 (Fed. Cir. 2004). Uniloc expressly
`reserves the right to dispute Petitioner’s proposed constructions if the Board
`institutes trial. Patent Owner’s present silence with respect to any construction
`
`18
`
`
`
`IPR2017-00222
`U.S. Patent 8,243,723
` Ground 1: Independent Claims 1 is Not Obvious Over Vuori
`For each one of the independent reasons set forth below, the present Petition
`
`should be denied as failing to present a prima facie case of obviousness of
`
`independent Claim 1.
`
`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. Teleflex Inc., 550 U.S. 398, 406 (2007) (citing Graham v. John Deere Co. of Kan.
`
`City, 383 U.S. 1, 17-18 (1966)).
`
`A petition must explicitly identify where every limitation of each challenged
`
`claim is located in the cited art. CB Distributors, Inc. v. Fontem Holdings 1 B.V.,
`
`No. IPR2013-00387 (P.T.A.B. Dec. 24, 2014), Paper 43 at 30-31 (finding that claim
`
`11 is not obvious in view of the asserted prior art because the petitioner did not
`
`
`proffered by Petitioner is not to be taken as a concession that the construction is
`correct.
`
`19
`
`
`
`IPR2017-00222
`U.S. Patent 8,243,723
`“contend or point us to where Hon ’494 discloses or suggests a restriction
`
`component ‘detachably set on one end’ of the porous component.”) The Board has
`
`denied petitions which only provide citations without any accompanying
`
`explanation or argument as to why the cited reference discloses or teaches the claim
`
`language. See In Fontaine Engineered Prods., Inc. v. Raildecks, (2009), Inc., No.
`
`IPR2013-00360 (P.T.A.B. Dec. 13, 2013), Paper 9.
`
`“In order to rely on inherency to establish the existence of a missing claim
`
`limitation in an obviousness analysis, ‘the limitation at issue necessarily must be
`
`present, or the natural result of the combination of elements explicitly disclosed by
`
`the prior art.’” Kaiser Aluminum v. Constellium Rolled Products Ravenswood, LLC,
`
`IPR2014-01002, Paper 64, Final Written Decision, (P.T.A.B. Nov. 2, 2015)
`
`(quoting PAR Pharma., Inc. v. TWI Pharmas., Inc., 773 F.3d 1186, 1195–96 (Fed.
`
`Cir. 2014)).
`
`2.
`
`No prima facie case for “associating a sub-set of the nodes with a
`client”
`The claim language “associating a sub-set of the nodes with a client” must be
`
`understood in its proper context. Independent Claim 1 introduces the term “nodes”
`
`in the recitation “monitoring a connectivity status of nodes within the packet-
`
`switched n
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
