UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`APPLE INC., FACEBOOK, INC., and WHATSAPP, INC.,
`Petitioner
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner
`
`___________________
`
`Case IPR2017-002221
`Patent 8,243,723
`___________________
`
`
`
`PETITIONER APPLE INC.’S REQUEST FOR
`REHEARING OF FINAL WRITTEN DECISION
`
`
`
`
`
`
`
`
`
`
`Mail Stop “Patent Board”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`1 Facebook, Inc. and WhatsApp, Inc., who filed a petition in IPR2017-
`01635, have been joined as petitioners in this proceeding.
`
`
`
`
`
`
`
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`APPLE INC., FACEBOOK, INC., and WHATSAPP, INC.,
`Petitioner
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner
`
`___________________
`
`Case IPR2017-002221
`Patent 8,243,723
`___________________
`
`
`
`PETITIONER APPLE INC.’S REQUEST FOR
`REHEARING OF FINAL WRITTEN DECISION
`
`
`
`
`
`
`
`
`
`
`Mail Stop “Patent Board”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`1 Facebook, Inc. and WhatsApp, Inc., who filed a petition in IPR2017-
`01635, have been joined as petitioners in this proceeding.
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`I.
`Summary of Issues for Rehearing ..................................................................... 1
`Standard of Review............................................................................................ 2
`II.
`III. Argument and Relief Requested ........................................................................ 2
`1.
`The Board misapprehended the Petition and Malik’s teachings
`for controlling a method for generating the instant voice
`message based upon the connectivity status of said one or more
`recipient. .................................................................................................. 2
`The Board misapprehended the scope of claim 3, and rather
`appears to be addressing claim 4 ............................................................. 5
`IV. Conclusion and Prayer for Relief ...................................................................... 6
`
`
`2.
`
`
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`- i -
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`
`
`
`I.
`
`Summary of Issues for Rehearing
`
`Case IPR2017-00222
`U.S. Patent No. 8,243,723
`
`In its Final Written Decision (Paper 29) (hereinafter “FWD”), the Board
`
`overlooked or misapprehended two primary matters.
`
`First, the Board asserts that claim 3 recites (a) determining connectivity
`
`status and then (b) controlling generating of an instant voice message based on the
`
`determined connectivity status. But then the Board misapprehends the Petition’s
`
`discussion of Vuori2-Malik3. In contrast to the Board’s statements on Malik not
`
`teaching using connectivity status to control generating of an instant voice
`
`message, the Petition shows how Figure 4 of Malik shows that it (a) determines
`
`connectivity status at step 425 and then (b) controls generating of an instant voice
`
`message based on that determined connectivity status at steps 460 and 470.
`
`Second, the Board’s additional reasoning that Malik does not teach claim 3
`
`“because [an instant voice message] is always generated in the same manner [in
`
`Malik]—recording mode” misapprehended claim 3. Claim 3 does not recite “two
`
`manners” of storing and then transmitting instant messages after they have been
`
`generated, which the Board appears to imply are recording or intercom modes.
`
`Rather, the Board’s two “manners” of storing and then transmitting instant
`
`
`2 U.S. Patent Appl. Pub. No. 2002/0146097 A1.
`
`3 U.S. Patent Appl. Pub. No. 2003/0219104 A1.
`
`
`
`- 1 -
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`
`
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`messages after they have been generated appear to be recited in claim 4, not claim
`
`Case IPR2017-00222
`U.S. Patent No. 8,243,723
`
`3.
`
`II.
`
`Standard of Review
`
`“A party dissatisfied with a decision may file a request for rehearing,
`
`without prior authorization from the Board.” 37 C.F.R. § 42.71(d). The “burden of
`
`showing a decision should be modified lies with the party challenging the
`
`decision,” and the request “must specifically identify all matters the party believes
`
`the Board misapprehended or overlooked, and the place where each matter was
`
`previously addressed in a motion, an opposition, or a reply.” Id.
`
`III. Argument and Relief Requested
`Petitioner respectfully requests that the Board reconsider its determination
`
`that claims 3-7 of the ’723 Patent have not been shown to be unpatentable over
`
`Vuori-Malik for at least two reasons: first, the Board misapprehended the
`
`Petition’s discussion of Malik since Malik determines connectivity status before
`
`controlling generating of an instant voice message, and second, the Board
`
`misapprehended the scope of claim 3.
`
`The Board misapprehended the Petition and Malik’s
`1.
`teachings for controlling a method for generating the instant voice
`message based upon the connectivity status of said one or more
`recipient.
`
`In its FWD, the Board alleged that “[a]ll the passages Petitioner relies on
`
`describe Malik’s sending of the voice instant message or the Jabber messages, not
`
`
`
`- 2 -
`
`
`
`
`the generating of the voice instant message.” FWD, 40. Petitioner disagrees. The
`
`Case IPR2017-00222
`U.S. Patent No. 8,243,723
`
`Petition explains, and Malik expressly teaches, that a recipient’s availability (i.e.,
`
`connectivity status) is considered before the message is generated:
`
`The VIM client 320 of the second user, however, detects
`that the first user is not present and/or available and,
`therefore, does not initiate the sending of the instant
`message, as shown in block 425. Accordingly, in blocks
`430-435, the VIM client 320 of the second user checks to
`see if the computing device of the VIM client 320 is
`capable of generating a voice recording. Malik, [0032].
`Petition, 24 (citing Malik, Ex. 1019, [0032]), emphasis added.
`
`The Petition is best understood by looking at Malik’s Figure 4 and elements
`
`425, 460, and 470. For example, the Petition demonstrates, and Malik’s Figure 4
`
`shows, that VIM client 320 detects whether the first user (i.e., recipient) is not
`
`present and available in block 425 (i.e., connectivity status), which occurs several
`
`steps before the voice recording (i.e., instant voice message) is generated (at steps
`
`460/470). See Petition, 18-21, 23-25 (citing, inter alia, Ex.1019, [0032]-[0034]).
`
`
`
`- 3 -
`
`
`
`
`
`Case IPR2017-00222
`U.S. Patent No. 8,243,723
`
`
`
`Ex. 1019, FIG. 4 (annotated for rehearing).
`
`So, similar to claim 3, Malik’s VIM client 320 first detects that a recipient is
`
`not available (425) and then second controls (460, 470) the method for how the
`
`voice message is generated based on that detection. See id., FIG. 4, [0032]; see
`
`also Petition, 23-24. Because the recipient is not available, the system must
`
`determine whether the VIM client is capable of generating a voice recording. See
`
`id.
`
`Furthermore, Malik’s server is also aware when a particular recipient is
`
`online and available. In those instances, the message is generated and delivered in
`
`real time. See Petition, 23-24 (citing Ex. 1019, [0008]). Like ’723 Patent Claim 3,
`
`
`
`- 4 -
`
`
`
`
`Malik determines whether the recipient is online (i.e., the claimed availability)
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`Case IPR2017-00222
`U.S. Patent No. 8,243,723
`
`before the instant voice message is generated (i.e., the claimed controlling a
`
`method for generating). Thus, like claim 3, Malik teaches “controlling a method of
`
`generating the instant voice message based upon the connectivity status of said one
`
`or more recipient.” (emphasis added.)
`
`Based on this, the Vouri-Malik combination renders obvious claim 3, and in
`
`turn leads to obviousness of claims 3-7.
`
`The Board misapprehended the scope of claim 3, and rather
`2.
`appears to be addressing claim 4
`
`In its FWD, the Board alleged that “Petitioner does not provide persuasive
`
`evidence that Malik controls the ‘generating’ of the voice instant message because
`
`it is always generated in the same manner—recording mode.” FWD, 40. But claim
`
`3 is silent as to any “manners” of storing and then transmitting instant messages
`
`after they have been generated, which the Board appears to imply are recording or
`
`intercom modes. Rather, the Board’s two “manners” of storing and then
`
`transmitting instant messages after they have been generated appear to be recited in
`
`claim 4, not claim 3.
`
`
`
`- 5 -
`
`
`
`
`IV. Conclusion and Prayer for Relief
`For the reasons set forth above, Patent Owner respectfully requests that the
`
`Case IPR2017-00222
`U.S. Patent No. 8,243,723
`
`Board grant rehearing and find claims 3-7 of the ’723 Patent invalid over the
`
`instituted Grounds.
`
`
`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Jason D. Eisenberg/
`
`Jason D. Eisenberg
`Registration No. 43,447
`Attorney for Petitioner
`
`
`
`
`
`Date: June 22, 2018
`1100 New York Avenue, N.W.
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
`- 6 -
`
`
`
`CERTIFICATION OF SERVICE
`The undersigned hereby certifies that the foregoing PETITIONER APPLE
`
`INC.’S REQUEST FOR REHEARING OF FINAL WRITTEN DECISION was
`
`served electronically via e-mail on June 22, 2018, in its entirety upon the following
`
`parties:
`
`ETHERIDGE LAW GROUP
`Brett A. Mangrum (Lead Counsel for Patent Owner) brett@etheridgelaw.com
`Ryan Loveless (Back-up Counsel for Patent Owner) ryan@etheridgelaw.com
`James Etheridge (Back-up Counsel for Patent Owner) jim@etheridgelaw.com
`Jeffrey Huang (Back-up Counsel for Patent Owner) jeff@etheridgelaw.com
`
`Sean D. Burdick (Back-up Counsel for Patent Owner)
`Uniloc USA, Inc.
`sean.burdick@unilocusa.com
`
`
`Heidi L. Keefe (Lead Counsel for Facebook, Inc.; and WhatsApp, Inc.)
`Phillip E. Morton (Back-up Counsel for Facebook, Inc. and WhatsApp, Inc.)
`Mark R. Weinstein (Back-up Counsel for Facebook, Inc. and WhatsApp, Inc.)
`COOLEY LLP
`FB_Uniloc2_723_PTAB_IPR@cooley.com
`hkeefe@cooley.com
`pmorton@cooley.com
`mweinstein@cooley.com
`
`
`Date: June 22, 2018
`1100 New York Avenue, N.W.
`Washington, D.C.20005-3934
`(202) 371-2600
`
`
`
`
`
`
`
`STERNE, KESSLER, GOLDSTEIN & FOX L.L.C.
`
`/Jason D. Eisenberg/
`
`Jason D. Eisenberg
`Registration No. 43,447
`Attorney for Petitioner Apple Inc.
`
`
`
`
`
`
`
`
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