Trials@uspto.gov
`571-272-7822
`
`
`Paper 33
`Entered: September 6, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., FACEBOOK, INC., and WHATSAPP, INC.,1
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-00222
`Patent 8,243,723 B2
`
`____________
`
`
`
`Before, JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`DECISION
`ON PATENT OWNER’S REQUEST FOR REHEARING
`37 C.F.R. § 42.71(d)
`
`
`1 Facebook, Inc. and WhatsApp, Inc. filed a petition and motion for joinder
`in IPR2017-01635, which we granted, and, thus, these entities are joined, as
`Petitioner, to this proceeding. Paper 12.
`
`
`571-272-7822
`
`
`Paper 33
`Entered: September 6, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., FACEBOOK, INC., and WHATSAPP, INC.,1
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-00222
`Patent 8,243,723 B2
`
`____________
`
`
`
`Before, JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`DECISION
`ON PATENT OWNER’S REQUEST FOR REHEARING
`37 C.F.R. § 42.71(d)
`
`
`1 Facebook, Inc. and WhatsApp, Inc. filed a petition and motion for joinder
`in IPR2017-01635, which we granted, and, thus, these entities are joined, as
`Petitioner, to this proceeding. Paper 12.
`
`
`
`IPR2017-00222
`Patent 8,243,723 B2
`
`
`INTRODUCTION
`I.
`On May 23, 2018, the Board issued the Final Written Decision in this
`proceeding. Paper 29 (“Final Dec.”). In that Final Written Decision, we
`determined that Petitioner had shown by a preponderance of the evidence
`that claims 1 and 2 of the patent-at-issue are unpatentable over Vuori and
`Malik.2 On June 22, 2018, Patent Owner filed a Request for Rehearing.
`Paper 31 (Req. Reh’g.). Patent Owner argues deprivation of due process
`because it was not given an opportunity to address our determination that the
`claims do not exclude transmitting the recited “list” one value at a time.
`Req. Reh’g. 3−4. Patent Owner also argues that in reaching our
`determination regarding Vuori’s teaching of the recited “list,” the Board
`acted sua sponte by not relying on Petitioner’s argument or evidence.
`According to 37 C.F.R. § 42.71(d), “[t]he 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.” The burden here, therefore, lies with
`Patent Owner to show we misapprehended or overlooked the matters it
`requests that we review.
`II. ANALYSIS
`Patent Owner faults us for deciding an issue of claim construction it
`allegedly had no opportunity to brief. However, Patent Owner was given
`notice in our Decision on Institution that its arguments concerning the
`recited “list” were arguments concerning claim scope and that Patent Owner
`
`
`2 Vuori: U.S. Patent Appl. Pub. No. US 2002/0146097 A1 (Ex. 1005);
`Malik: U.S. Patent Appl. Pub. No. US 2003/0219104 A1 (Ex. 1019).
`
`2
`
`
`
`IPR2017-00222
`Patent 8,243,723 B2
`
`had provided no factual support at that time sufficient to overcome a
`reasonable likelihood threshold. Paper 7, 17−18; see also Paper 25,
`74:13−78:24 (presenting claim construction position for the claim term “list”
`in response to the Board’s Decision on Institution). During trial, Patent
`Owner again raised claim scope arguments, which we noted in our Final
`Written Decision in our claim construction analysis of the term “list.” Final
`Dec. 16−17. We noted that Patent Owner’s argument seemed to depend on
`both how the values in a list are transmitted and the quantity of those values.
`Id. But we found no disclosure in the Specification supporting a contention
`that the claims require any particular manner of transmitting. Id. Patent
`Owner in the Request for Rehearing does not argue that we misapprehended
`the Specification or the claim language in our determination. Therefore, we
`see no reason to disturb our Final Written Decision. In other words, Patent
`Owner’s request for rehearing does not raise an issue for which additional
`briefing is warranted as Patent Owner has not shown how we
`misapprehended the evidence, the claim language, the Specification or any
`point of law that shows reconsideration of the claim construction of “list” is
`appropriate.
`Regarding Patent Owner’s second argument, we do not agree that we
`have not followed the holding in In re Magnum Oil Tools Int’l, 829 F.3d
`1364 (Fed. Cir. 2016). Req. Reh’g. 3−4. With regard to claim construction,
`it was Patent Owner, not Petitioner, who attempted to paint Vuori as
`teaching transmission of “one value at a time.” Final Dec. 31 (“Patent
`Owner urges that we focus on Vuori’s explanation of distributing presence
`information . . . ‘one value at a time’.”). We analyzed Figure 8 of Vuori
`because Patent Owner relied on that figure as support for its contention that
`
`3
`
`
`
`IPR2017-00222
`Patent 8,243,723 B2
`
`Vuori did not teach transmitting a “list.” Final. Dec. 32 (noting that Patent
`Owner relies on language in the Specification describing Figure 8); Prelim.
`Resp. 13−14. Then, we made two factual determinations based on the
`evidence of record, in light of Figure 8, which Patent Owner raised, and in
`light of the description of Figure 10, which Petitioner relied on as disclosing
`the “list.” See, e.g., Final Dec. 31 (noting arguments by Petitioner regarding
`Figure 10 and paragraph 47 of Vuori). Thus, we supported our
`determination based on evidence of record provided by Patent Owner and
`Petitioner. We discussed the testimony of Mr. Easttom and ultimately did
`not credit it in its entirety. Id. at 33 (explaining that Mr. Easttom’s
`testimony of “one value at a time” “at best, appears to focus only on the
`SVM fetcher, which requests the ‘current’ value of some SVM presentity’s
`information,” and finding that Vuori does not support the testimony or
`Patent Owner’s narrow view of Vuori in this regard).
`In sum, we do not agree with Patent Owner’s contention that our
`determination concerning whether Vuori transmits a “list” relies on improper
`argument or evidence. As stated above, our reasoning discusses the
`evidence and arguments Petitioner and Patent Owner, itself, provided, in the
`record, in support of each party’s contentions concerning the term “list.”
`Finally, Patent Owner’s request for rehearing fails to show that we
`misapprehended or overlooked any of Patent Owner’s evidence or
`arguments.
`III. ORDER
`Patent Owner’s Request for Rehearing is denied.
`
`
`
`4
`
`
`
`IPR2017-00222
`Patent 8,243,723 B2
`
`PETITIONER:
`Apple Inc.
`Jason D. Eisenberg
`Michael D. Specht
`Trent W. Merrell
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`jasone-ptab@skgf.com
`mspecht-ptab@skgf.com
`tmerrell-PTAB@skgf.com
`
`Facebook, Inc. and WhatsApp, Inc.
`Heidi L. Keefe
`Phillip Morton
`COOLEY LLP
`hkeefe@cooley.com
`pmorton@cooley.com
`
`
`PATENT OWNER:
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`ETHERIDGE LAW GROUP
`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`
`Sean D. Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`5
`
`
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