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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`IPR2017-00222
`PATENT 8,243,723
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`PATENT OWNER RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.120
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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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`IPR2017-00222
`PATENT 8,243,723
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`PATENT OWNER RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.120
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`IPR2017-00222
`U.S. Patent 8,243,723
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`TABLES OF CONTENTS
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`1
`1
`2
`2
`3
`6
`6
`7
`8
`9
`10
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`10
`11
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`14
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`16
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`18
`19
`19
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`I.
`INTRODUCTION
`II. RELATED MATTERS
`III. THE '723 PATENT
`Priority of the '723 Patent
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`Overview of the '723 Patent
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`IV. LEVEL OF ORDINARY SKILL IN THE ART
`V.
`THE PETITION FAILS TO PROVE UNPATENTABILITY
`Claim Construction
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`1.
`“list”
`2.
`“intercom mode”
`3.
`“client”
`No proof of obviousness 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 (Claims 1−7)
`1.
`Petitioner’s “on a line” theory fails to prove obviousness
`2.
`Petitioner’s “buddy list” theory fails to prove obviousness
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`No proof of obviousness for “associating a sub-set of the nodes
`with a client” (Claims 1−7)
` Ground 2 Only Challenges Claims Which Depend From
`Nonobvious Independent Claim 1
`The Board Declined to Institute Trial for Grounds 3, 4 and 5
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`V. CONCLUSION
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`PATENT OWNER’S EXHIBIT LIST
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`Ex. 2001 Declaration of Chuck Easttom (“EX2001”).
`Ex. 2002 Deposition Transcript of Leonard Forys (“EX2002”).
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`ii
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`IPR2017-00222
`U.S. Patent 8,243,723
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`I.
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`INTRODUCTION
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.120, Uniloc Luxembourg S.A.
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`(“Patent Owner”) submits this Response to the Petition for Inter Partes Review (“the
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`Petition”) of U.S. Patent No. 8,243,723 (“the '723 Patent”) filed by Apple, Inc.
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`(“Petitioner”). For the reasons set forth herein, the Petition fails to “specify where
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`each element of the claim is found in the prior art patents or printed publications
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`relied upon.” 37 C.F.R. § 42.104(b)(4).
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`II. RELATED MATTERS
`As the Board has already recognized, the '723 Patent is the subject of litigation
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`before the U.S. District Court for the Eastern District of Texas, including an action
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`filed against Petitioner (Case No. 2-16-cv-00638). Paper 9 at 2.
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`The '723 Patent is part of a chain of continuation applications, as shown in the
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`family tree below, which also identifies six related petitions filed by Petitioner
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`against this patent family.
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`1
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`IPR2017-00222
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`US. Patent 8,243,723
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`Challenged by Petitioner in
`IPR2017-00220 & IPR2017-00221
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`App. No.: 10r‘"40.030
`Filed: 12-18-2003
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`Pat. No: ‘.535.890
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`lst Inventor: Michael Rojas
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`IPR2017-00222
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`App. No.: 12898.06}
`Filed: 03-04-2009
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`Pat. No: 8243723
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`lst Inventor: Michael Rojas
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`App. No: 13546.63
`Filed: 0'-ll-2012
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`Pat. No: 8.74.622
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`IPR2017-00223 &
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`IPR2017—00224
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`1st Inventor: Michael Rojas
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`IPR2017-00225
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`App. No.: 142224.125
`Filed: 03-25-2014
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`Pat, No: 8.995.433
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`1st Inventor: Michael Rojas
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`III. THE '723 PATENT
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`A.
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`Priority of the '723 Patent
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`The '723 Patent is titled “SYSTEM AND METHOD FOR INSTANT VOIP
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`MESSAGING.” Ex. 1001. The '723 Patent issued from US. Patent Application No.
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`12/398,063, which is a continuation of US. Patent No. 7,535,890, filed on Dec. 18,
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`2003. The '723 Patent issued on August 13, 2012.
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`IPR2017-00222
`U.S. Patent 8,243,723
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` Overview of the '723 Patent
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`The
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`'723 Patent
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`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
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`the
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`'723 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.” EX1001, 1:25−30.
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`The '723 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.”1 1:31−33. Because legacy circuit-
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`1 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:
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`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
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`3
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`IPR2017-00222
`U.S. Patent 8,243,723
`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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`1:61−2:17. 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. 1:25−30.
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`The '723 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.
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`2:18−50. 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.” 2:22−29.
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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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`4
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`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
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`messaging over an IP network.” 2:43−49. Certain embodiments of the '890 Patent
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`addressed that need, in part, by providing a user-accessible client (208) that is
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`specially configured for instant voice message (IVM) and for direct communication
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`over a packet-switched network (e.g., through an Ethernet card). 12:11−12. More
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`specifically, the '723 Patent teaches that certain clients (208) are specially configured
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`to “listen[] to the input audio device 212,” “record[] the user’s speech into a digitized
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`audio file 210 (i.e., instant voice message) stored on the IVM client 208,” and
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`“transmit[] the digitized audio file 210” as packetized data (e.g., using TCP/IP) over
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`a packet-switched network (e.g., network 204) “to the local IVM server 202.”
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`8:4−8:18.
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`The Board instituted trail only for challenged Claims 1−7 and denied
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`institution of the challenge against dependent Claim 8. Claim 1, the only challenged
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`independent claim, is copied below:
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`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;
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`5
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`IPR2017-00222
`U.S. Patent 8,243,723
`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;
`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.
`IV. LEVEL OF ORDINARY SKILL IN THE ART
`Patent Owner’s expert, Chuck Easstom, testified that “a POSA would be
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`someone with a baccalaureate degree related to computer technology and 2 years of
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`experience with communications technology, or 4 years of experience without a
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`baccalaureate degree.” EX2001 ¶12. Mr. Easstom further testified that “[w]hile my
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`opinion appears to largely overlap with that offered by Dr. Forys, I disagree with Dr.
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`Forys’ definition to the extent ‘ordinary skill’ is interpreted to require more than 4
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`years of academic or industry experience exclusively in the fields of in VoIP and
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`mobile telephony. In any event, I qualify as a person of ordinary skill in the art, even
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`under Dr. Forys apparent interpretation.” Id. ¶13.
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`V. THE PETITION FAILS TO PROVE UNPATENTABILITY
`The only grounds presented in the Petition to have survived the Board’s partial
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`denial (Paper 7) are as follows:
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`6
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`IPR2017-00222
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`US. Patent 8,243,723
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`Reference 5
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`Vuori and Malik and Lerner"
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`Vuoriz
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`Vuori and Malik"
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`Petitioner has the burden of proof to establish they are entitled to their
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`requested relief. 37 CPR. § 42.108(c). The Petition does not satisfy this burden
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`for the reasons set forth herein and in the attached Declaration of Mr. Easttom
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`(EX2001).
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`A.
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`Claim Construction
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`As the Board observed, the scope of the term “list” is relevant to a dispute
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`injected by the Petition- Specifically, the Petition failed to address the explicit claim
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`requirement that the recited “list” must record “the connectivity status for each of the
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`nodes” in the plural, as explained finther below.
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`In the section in the Petition addressing claim construction, Petitioner seeks to
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`construe only a single term, “intercom mode,” as recited in dependent Claims 4—8.
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`The Petition also at least tacitly proposes “client” as a term that requires construction.
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`For the reasons set forth below, Petitioner has failed to meet its threshold burden
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`regardless whether the Board adopts Petitioner’s proposed construction for both
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`“intercom mode” and “client.”
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`2 Ex. 1005, US. Patent Application Publication No. 2002/0146097 (“Vuori”).
`3 Ex. 1007, US. Patent No. 7,123,695 (“Malik”).
`4 Ex. 1021, US. Patent No. 6,192,395 (“Lerner”).
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`7
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`IPR2017-00222
`U.S. Patent 8,243,723
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`1.
`“list”
`In determining whether to institute trial, the Board questioned (without
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`affirmatively ruling one way or the other) whether the intrinsic evidence supports the
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`conclusion that the term “list” must include the recorded connectivity status of more
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`than one node. Paper 7 at 17−18. A plain reading of the claim language itself (which
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`is part of the intrinsic evidence) unambiguously resolves this issue. EX2001 ¶¶22‒
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`25.
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`Independent Claim 1 recites the term “list” in the limitation “transmitting a
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`signal to a client including a list of the recorded connectivity status for each of the
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`nodes in the sub-set corresponding to the client.” It is significant that “nodes” is
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`recited in the plural in the phrase “each of the nodes in the sub-set.” Use of the plural
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`form of “nodes” in that context confirms the “list” must record the connectivity status
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`of more than one node. EX2001 ¶23.
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`The Board observed that the '723 Patent specification teaches that in certain
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`embodiments “[t]he IVM client 208 displays a list of one or more IVM recipients on
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`its display.” Paper 7 at 18 (quoting EX1001, 7:61−64, emphasis original). A POSITA
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`would understand that quotation as invoking commonly-used shorthand to describe
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`alternative embodiments. EX2001 ¶23. Written in expanded form, those alternative
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`embodiments are also accurately represented as a “list” of either one IVM recipient
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`(in the singular) or IVM recipients (in the plural). Id. The claim language refers
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`8
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`IPR2017-00222
`U.S. Patent 8,243,723
`exclusively to the latter embodiment by reciting “each of the nodes in the sub-set”—
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`i.e., “nodes” in the plural. It would be reversible error to interpret the claim term
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`“nodes”—as expressly recited only in the plural—to encompass a list having only
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`one node.
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`Viewing Claim 1 as a whole further confirms that the phrase “one or more”
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`was explicitly recited when the intent was to encompass both the singular and plural
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`form of a term. Specifically, Claim 1 further recites delivering the instant voice
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`message to “one or more recipients.” The modifying phase “one or more” is rendered
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`superfluous if the use of the plural form for terms recited in Claim 1 is interpreted to
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`include both the singular and the plural. See Apple Inc. v. ContentGuard Holdings,
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`Inc., IPR2015-00353, Paper No. 9, Decision Denying Institution of Inter Partes
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`Review (P.T.A.B. June 25, 2015) (declining to adopt proposed claim construction that
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`would render other claim language superfluous). The fact that the challenged claims
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`recite “each of the nodes in the sub-set,” without the same modifying phrase “one or
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`more,” further confirms to a POSITA that the transmitted “list” must have the
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`recorded connectivity status for multiple “nodes.” EX2001 ¶25.
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`2.
` “intercom mode”
`In the section in the Petition addressing claim construction, Petitioner seeks to
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`construe only a single term: “intercom mode.” This term is recited only in challenged
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`dependent Claims 4 and 6. The Board did not construe this term for purposes of
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`9
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`IPR2017-00222
`U.S. Patent 8,243,723
`determining whether to institute review. Paper 7 at 7. Because the Petition fails to
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`prove obviousness of independent Claim 1, the Board need not construe a term that
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`appears only appears in two challenged dependent claims. Id. (noting that the Board
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`need construe claims only to the extent needed to resolve the controversy) (citing
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`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
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`3.
`“client”
`While the Petition does not specifically address the term “client” in the section
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`setting for proposed claim constructions, the Petition elsewhere offers the
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`conclusory statement “[t]he term ‘client’ means ‘a computing device capable of
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`transmitting voice data over a network.’” Pet. 11. Given that Petitioner offers no
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`explanation or support for that statement, it is unclear whether Petitioner is seeking
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`to move the Board to construe that term as proposed. The Board did not construe this
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`term for purposes of determining whether to institute review; and the Board need not
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`do so to resolve the present controversy. See generally Paper 7; Vivid Techs., 200
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`F.3d at 803.
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` No proof of obviousness 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 (Claims 1−7)
`The Petition fails to prove obviousness for “transmitting a signal to a client
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`including a list of the recorded connectivity status for each of the nodes in the sub-
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`set corresponding to the client,” as recited in Claim 1. Independent Claim 1
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`10
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`IPR2017-00222
`U.S. Patent 8,243,723
`introduces the term “nodes” in the recitation “monitoring a connectivity status of
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`nodes within the packet-switched network, said connectivity status being available
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`and unavailable.” Accordingly, all the “nodes” identified within the transmitted
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`“list” must themselves be “within the packet-switched network” first referenced in
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`the preamble. This construction is undisputed and has already been adopted by the
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`Board. Paper 7 at 16 (“Patent Owner correctly asserts that claim 1 expressly recites
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`the nodes to be ‘within the packet-switched network,’ and the connectivity status of
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`those nodes [in the plural] is recorded and transmitted to a client”).
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`Further, as explained above in addressing claim construction, the claim
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`language recites an explicit definition for the “list” which requires “the recorded
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`connectivity status” of multiple “nodes” associated with the client: “a list of the
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`recorded connectivity status for each of the nodes in the sub-set corresponding to
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`the client.”
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`Petitioner presents two alternative theories for the “transmitting” limitations:
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`(1) a primary “on a line” theory; and (2) a secondary “buddy list” theory. Both
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`theories fail to prove obviousness for the reasons set forth below.
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`1.
`Petitioner’s “on a line” theory fails to prove obviousness
`Petitioner argues that “Vuori tracks presence information of the user as one
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`of ‘on-line/off-line/busy/away/do not disturb’” and that “[d]istributing connectivity
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`information ‘on a line’ means to distribute the information to other users connected
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`11
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`IPR2017-00222
`U.S. Patent 8,243,723
`to the network.” Pet. 13−14 (citing EX1005 ¶¶ 35, 43, 47; EX 1003 ¶¶ 124−125);
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`see also Paper 7 at 17 (summarizing Petitioner’s arguments). Petitioner’s primary
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`“on a line” theory should be rejected as (1) factually incorrect and (2) at least tacitly
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`relying on an improper construction for the term “list” as recited in Claim 1. EX2001
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`¶¶26‒34.
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`It is undisputed that Vouri describes its SVM presence service with reference
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`to Figure 7, copied below. EX2002 (Forys Depo.) 65:3−5 (“Q. You understand this
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`text here in paragraph 43 [of Vouri] is addressing Figure 7? A. I agree.”).
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`Vouri’s use of directional communication arrows in Figure 7 is telling. EX2001 ¶29.
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`As shown in Figure 7, presence information is not distributed to a “user agent” or
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`“UA” device (276, 278) of either end user.5 Rather, as the accompanying description
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`5 In Figure 7, Vouri illustrates the end users as stick figures who are each identified
`as a “principal.” Vouri defines a “principal” is an end user who “interacts with the
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`12
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`IPR2017-00222
`U.S. Patent 8,243,723
`explicitly states, presence information is distributed only from SVM presence
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`service 248 “on a line 252” to SVM watcher 256. Both testifying declarants agreed
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`on this point. Compare EX2001 ¶29 (citing EX1005 ¶¶43, 47) with EX2002
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`66:8−14 (“Q. Now, [the description of Figure 7] talks about distributing something
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`on a line 252. Correct? A. Yes, it does. Q. Can you circle in Figure 7 the line that
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`is being addressed there? A. So it is a line that is coming from the box 248 down to
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`the box 256.”).
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`Petitioner does not allege, let alone attempt to prove, that SVM watcher 256
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`satisfies the claimed “client” involved in the “transmitting” step. On the contrary,
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`Petitioner’s declarant, Dr. Forys, acknowledged that SVM watcher 256 is not at the
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`end user device, but rather a different block, “SVM watcher 278[,] is at the user
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`device.” EX2002 67:2−68:21.
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`Even if Vouri had disclosed, instead, that the presence information is further
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`distributed by SVM watcher 256 to user agent 278 on a different and unspecified
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`line (and it does not so disclose), Vouri would nevertheless fail to disclose the
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`“transmitting” limitations when properly construed. EX2001 ¶29. As explained
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`above in addressing claim construction, the transmitted “list” must itself include the
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`system via one of several user agents (UAs) such as shown in FIGS. 7 and 9.”
`EX1005 ¶46. Notably, paragraph 47 of Vouri (also cited in the Petition) confirms
`that Figure 10 further describes the same SVM presence service 248 of Figure 7.
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`13
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`IPR2017-00222
`U.S. Patent 8,243,723
`recorded connectivity status of more than one node. Notably, Petitioner does not
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`allege that Vuori’s “SVM presence service 248” discloses “transmitting a signal to
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`a client including a list” of so-called “presence information” for each node of a sub-
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`set of nodes (in the plural) corresponding to that client. That omission was perhaps
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`intentional, given that the cited disclosure concerning “SVM presence server 248”
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`refers to distributing presence information to SVM watcher 256 one value at a time;
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`and the Petition does not argue otherwise. Id. ¶30 (citing EX1005 Fig. 7, ¶¶43−44).
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`For the foregoing reasons, Petitioner’s primary reliance on Vouri’s “on the
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`line 252” distribution fails to prove obviousness for “transmitting” the “list” as
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`claimed.
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`2.
`Petitioner’s “buddy list” theory fails to prove obviousness
`Petitioner’s secondary reliance on Vouri’s “buddy list” likewise fails to prove
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`obviousness of the “transmitting” limitations for at least three independent reasons.
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`EX2001 ¶¶31−34. First, the Petition does not even allege, let alone prove, that
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`Vouri’s “buddy list” records the connectivity status of more than one node and that
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`the “buddy list” is transmitted, in its entirety, to the “client” as claimed.6 Vouri
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`contains no such disclosure.
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`6 See discussion, supra, addressing the proper construction for the “list” term.
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`14
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`IPR2017-00222
`U.S. Patent 8,243,723
`Second, Vuori does not disclose or suggest its “buddy list” is “a list of the
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`recorded connectivity status for each of the nodes ….” Id. ¶33. Notably, the Board
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`recognized that “the technical details of the ‘buddy list’ are not expounded upon in
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`Vuori[.]” Paper 7 at 16. The only sentence in Vouri to even mention a “buddy list”
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`discloses that “the intended recipient has effectively acquiesced to availability by
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`previously joining a ‘buddy list.’” EX2001 ¶33 (quoting EX1005 ¶35). The phrase
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`“acquiesced … availability” (in the context of Vouri’s single-sentence description
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`of its “buddy list”) connotes a predetermined relationship status between people,
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`which
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`is distinguishable from
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`the real-time “available” or “unavailable”
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`“connectivity status” of multiple “nodes” as claimed. Id.
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`Further, because Vouri’s “buddy list” merely indicates those whom a
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`potential recipient had preauthorized for messaging, regardless of the connectivity
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`status of that intended recipient’s device, it follows that the “buddy list” in Vouri
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`would continue to indicate the prior “acquiesced … availability” even when an
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`intended recipient’s device goes offline (and hence is not physically available to be
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`contacted). Id. That result further confirms the inherent distinction between a
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`“buddy list” relationship status and a “connectivity status” as claimed.
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`Finally, the Petition fails to even allege, let alone prove, that Vouri discloses
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`or suggests its so-called “buddy list” records the connectivity status for multiple
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`U.S. Patent 8,243,723
`nodes within a packet-switched network as claimed.7 The only sentence in Vouri to
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`even mention the “buddy list” makes no reference to implementation via a packet-
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`switched network, let alone enables such an implementation; and the Petition does
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`not argue otherwise. Moreover, the Board has already concluded that “none of the
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`nodes identified in the Petition are ‘within the packet-switched network”’ as
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`claimed. Paper 7 at 16; see also EX2001 ¶34.
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`For each one of the several and independent reasons set forth above, the
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`Petition does not prove obviousness for the “transmitting” limitations recited in
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`independent Claim 1 (and hence all challenged claims in the Petition).
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` No proof of obviousness for “associating a sub-set of the nodes with
`a client” (Claims 1−7)
`The Board observed that “Petitioner proffers two arguments” for the
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`“associating” limitations: (1) that Vouri’s “buddy list” teaches or suggests the
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`limitation; and (2) “that Vouri’s disclosure of GSM base station subsystems 68 and
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`70 teaches or suggests sub-sets of nodes associated with a client (e.g., mobile station
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`72).” Paper 7 at 15. The Board rejected Petitioner’s GSM-based theory and thereby
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`narrowed the dispute at trial for the “associating” limitations to Petitioner’s “buddy
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`list” theory. Id. at 15−17. The record evidence, including the testimony of both
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`7 Any new (and hence waived) arguments Petitioner may try to raise in its
`forthcoming Reply should be disregarded as a matter of law.
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`declarants, confirms the remaining “buddy list” dispute should be resolved in favor
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`of Patent Owner.
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`The claim language “associating a sub-set of the nodes with a client” invokes
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`all the various limitations for the claimed “nodes” (in the plural) addressed above
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`for the “transmitting” limitations. Accordingly, the above-identified deficiencies of
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`Petitioner’s “buddy list” theory taints Petitioner’s analysis for the “associating”
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`limitations. For example, as explained above, the Petition at least fails to prove: (1)
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`that Vouri’s “buddy list” includes the connectivity status of more than one node and
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`that the “buddy list” is transmitted, in its entirety, to the “client” as claimed; (2) that
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`Vouri’s “buddy list” records the “connectivity status for each of the nodes”; and (3)
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`that Vouri’s “buddy list” records the connectivity status for multiple nodes within a
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`“packet-switched network” as claimed. EX2001 ¶36.
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`The Petition also fails to prove “associating a sub-set of the nodes” (in the
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`plural) “with a client” (in the singular). In what appears to be an attempt to address
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`this plural-to-one association, the Petition argues Vouri’s “buddy list” belongs to the
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`intended recipient. More specifically, Petitioner relies on Dr. Forys’ testimony that
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`“a POSITA would have understood that by joining Vuori’s buddy list, a user allows
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`his/her presence information (i.e., connectivity) to be transmitted to all of the nodes
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`associated with that user’s buddy list.” EX1003 ¶124 (emphasis added). Dr. Forys
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`confirmed during his deposition that his use of the phrase “that user’s buddy list”
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`U.S. Patent 8,243,723
`(which connotes possession or ownership) expressly refers to “the user that allows
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`his or her presence information to be transmitted”—i.e., Vouri’s “buddy list”
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`purportedly belongs to the intended recipient, as opposed to the sender of an instant
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`voice message. See EX2002 74:3−10.
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`Even if Vouri had disclosed or suggested such an association between the
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`“buddy list” and the intended recipient (and it does not), Vouri does not disclose or
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`suggest transmitting the intended recipient’s entire buddy list to the user who wishes
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`to transmit a message. EX2001 ¶37. Further, a POSITA would not be motivated to
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`modify Vouri to make such a transmission because doing so would violate the
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`privacy of the intended recipient for no reason, as the sender would not need to know
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`who else the intended recipient may have preauthorized for messaging. Id.
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`Accordingly, for these additional reasons, Petitioner’s reliance on an association of
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`the “buddy list” with the intended recipient cannot be squared with the claim
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`limitations when considered as a whole.
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`For each one of the foregoing independent reasons, Vouri does not disclose,
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`and rather teaches away from the “associating” limitations.
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` Ground 2 Only Challenges Claims Which Depend From
`Nonobvious Independent Claim 1
`While Ground 2 of the Petition further relies on an alleged combination with
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`Malik, the Petition does not allege Malik cure the deficiencies of Vouri identified
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`18
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`U.S. Patent 8,243,723
`above for independent Claim 1. Accordingly, dependent Claims 2−7 are all
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`nonobvious at least by virtue of their dependence on independent Claim 1, for the
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`foregoing reasons. In re Fine, 837 F.2d 1071 (Fed. Cir. 1988) (“Dependent claims
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`are nonobvious under section 103 if the independent claims from which they depend
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`are nonobvious.”).
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`The Board Declined to Institute Trial for Grounds 3, 4 and 5
`The Board narrowed the trial on this matter by rejecting Ground 3 on the
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`merits, which had challenged Claim 8 based on a combination of Vouri with both
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`Malik and Lerner. Specifically, the Board stated it is not persuaded that “Petitioner
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`has shown a reasonable likelihood of prevailing on its assertion that the asserted
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`prior art combination renders claim 8 unpatentable.” Paper 7 at 22; see also id. at
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`32−33 (confirming trial is instated only for Claims 1−7).
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`The Board further narrowed the trial on this matter by rejecting on the merits
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`all Grounds 4−5 which had relied on Stubbs as a primary reference. Id. 22−32.
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`V. CONCLUSION
`For the reasons set forth above, Uniloc respectfully requests that all remaining
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`challenges against Claims 1−7 be denied.
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`Date: September 22, 2017
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`U.S. Patent 8,243,723
`Respectfully submitted,
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`By: /s/ Brett A. Mangrum
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`Brett A. Mangrum
`Attorney for Patent Owners
`Reg. No. 64,783
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`Ryan Loveless
`Attorney for Patent Owners
`Reg. No. 51,970
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`U.S. Patent 8,243,723
`CERTIFICATE OF COMPLIANCE
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`Pursuant to 37 C.F.R. § 42.24(d), we certify that this Response to Petition
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`complies with the type-volume limitation of 37 C.F.R. § 42.24(b)(1) because it
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`contains less than the limit of 14,000 words, as determined by the word-processing
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`program used to prepare the brief, excluding the parts of the brief exempted by 37
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`C.F.R. § 42.24(a)(1).
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`Date: September 22, 2017
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`Respectfully submitted,
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`By: /s/ Brett A. Mangrum
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`Brett A. Mangrum
`Attorney for Patent Owners
`Reg. No. 64,783
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`Ryan Loveless
`Attorney for Patent Owners
`Reg. No. 51,970
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`IPR2017-00222
`U.S. Patent 8,243,723
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e), we certify that we served an electronic copy
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`of the foregoing PATENT OWNER’S RESPONSE PURSUANT TO 37 C.F.R. §
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`42.120 along with the accompanying exhibits via the Patent Review Processing
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`System (PRPS) to Petitioner’s counsel of record at the following email addresses:
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`PETITIONER:
`Jason D. Eisenberg: jasone-PTAB@skgf.com
`Michael D. Specht: mspecht-PTAB@skgf.com
`Zhu He: zhe-PTAB@skgf.com
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`Date: September 22, 2017
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`Respectfully submitted,
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`By: /s/ Brett A. Mangrum
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`Brett A. Mangrum
`Attorney for Patent Owners
`Reg. No. 64,783
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`Ryan Loveless
`Attorney for Patent Owners
`Reg. No. 51,970
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`ii
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