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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`IPR2017-00223
`PATENT 8,724,622
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`APPLE, INC.,
`Petitioner
`
`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
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`
`
`
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`
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`IPR2017-00223
`PATENT 8,724,622
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`I.
`II.
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`IPR2017-00223
`U.S. Patent 8,724,622
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`Tables of Contents
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`1
`3
`3
`4
`8
`8
`9
`14
`17
`18
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`19
`20
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`24
`24
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`25
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`29
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`34
`34
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`35
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`37
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`INTRODUCTION
`BACKGROUND OF THE '622 PATENT
`Priority of the '622 Patent through its Patent Family
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`Overview of the '622 Patent
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`III. TWO CUMULATIVE AND REDUNDANT PETITIONS
`The Redundant Challenges Are Not Entitled to Consideration
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`1. The '223 and '224 Petitions Are Horizontally Redundant
`2. Petitioner Compounds Its Error with Vertical Redundancies
`Petitioner’s Abusive Pattern of Redundancy is Improper
`Petitioner Repeatedly Presents Vacuous Grounds
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`IV. NO REASONABLE LIKELIHOOD THAT AT LEAST ONE OF
`THE CHALLENGED CLAIMS IS UNPATENTABLE
`Claim Construction
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`The Proposed Vuori-SMSS Combination Does Not Render
`Independent Claim 3 Obvious
`1. Overview of Applicable Law
`2. No prima facie case for “a messaging system communicating with
`a plurality of instant voice message client systems via the network
`interface [connected to the packet switched network]”
`3. No prima facie case for “the instant voice message [received from
`one of the plurality of instant voice message client systems]
`includes an object field including a digitized audio file”
`4. Grounds 2 and 3 Only Challenge Claims Which Depend From
`Nonobvious Independent Claim 3
`Vuori Does Not Render Independent Claim 38 Obvious
`1. No prima facie case for “a network interface coupled to the
`client device and connecting the client device to a packet-switched
`network”
`2. No prima facie case for “a messaging system for transmitting the
`instant voice message over the packet-switched network via the
`network interface [coupled to the client device]”
`
`
`
`ii
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`
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`IPR2017-00223
`U.S. Patent 8,724,622
`
`I.
`
`INTRODUCTION
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107(a), Uniloc Luxembourg
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`S.A. (“Patent Owner”) submits this Preliminary Response to the Petition for Inter
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`Partes Review (“the Petition” or “the '223 Petition”) of U.S. Patent No. 8,724,622
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`(“the '622 Patent”) filed by Apple, Inc. (“Petitioner”). The Board should deny the
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`Petition in its entirety because of procedural and substantive defects.
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`Petitioner follows the same impermissible strategy in challenging the '622
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`Patent that it uses in each one of the six concurrently-filed petitions (IPR2017-00220
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`through IPR2017-00225), which collectively challenge a total of sixty-five (65)
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`claims of four related patents. Petitioner consistently presents at least a pair of
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`redundant obviousness theories for every challenged claim. As an apparent
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`afterthought, Petitioner then offers an illusory justification that is applicable, if at
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`all, to only a mere fraction of those redundant challenges.
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`The Board has long held that redundant grounds are not entitled to
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`consideration unless the petitioner provides a sufficient bi-directional explanation of
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`the relative strengths and weaknesses of each redundancy. The present '223 Petition
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`relies on Vuori (Ex. 1005) as the primary reference, while the co-pending '224
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`Petition1 redundantly challenging the same claims relies, instead, on Dahod (Ex.
`
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`1 Apple Inc. v. Uniloc Luxembourg S.A., No. IPR2017-00224, Petition for Inter
`Partes Review (P.T.A.B. Nov. 14, 2016), Paper No. 2 (“the '224 Petition”).
`
`1
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`
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`IPR2017-00223
`U.S. Patent 8,724,622
`1009). Petitioner fails to articulate any substantive strength of Vuori over Dahod
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`based on their respective disclosures and, consequently, the present '223 Petition
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`(primarily based on Vuori) should be rejected as impermissibly redundant.
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`Once the Board resolves the acknowledged redundancy issue, the Board
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`should then exercise its discretion under 35 U.S.C. § 325(d) to reject the co-pending
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`'224 Petition (based on Dahod) as failing to present any new, non-cumulative
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`evidence over what was already considered by the Examiner during prosecution.
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`Petitioner does even not attempt to defend against application of § 325(d). Rather,
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`Petitioner overtly asks the Board to second-guess the Examiner’s findings on the
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`alleged basis that “the Examiner apparently did not understand” the Dahod
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`reference, though the Examiner admittedly had primarily considered and relied upon
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`that reference throughout prosecution. The present facts clearly invoke § 325(d).
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`Because of the fully dispositive procedural issues, the Board need not and
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`should not reach the substantive merits of either the '223 or '224 Petitions.
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`Nevertheless, Patent Owner identifies herein example instances where the present
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`'223 Petition overlooks various claim limitations and thus 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).2
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`2 Should the Board institute proceedings in this matter, Patent Owner does not
`concede the legitimacy of any arguments in the Petition that are not specifically
`addressed herein. Patent Owner expressly reserves the right to rebut any such
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`2
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`
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`IPR2017-00223
`U.S. Patent 8,724,622
`
`II. BACKGROUND OF THE '622 PATENT
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`Priority of the '622 Patent through its Patent Family
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`The '622 Patent is titled “SYSTEM AND METHOD FOR INSTANT VOIP
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`MESSAGING.” Ex. 1001. The '622 Patent issued from U.S. Patent Application No.
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`13/546,673, which is a continuation of U.S. Patent No. 8,243,723, which is a
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`continuation of U.S. Patent No. 7,535,890, filed on Dec. 18, 2003. The '622 Patent
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`issued on May 13, 2014.
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`Below is a picture of the family tree for the four patents Petitioner challenges
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`in a series of five consecutively filed petitions (IPR2017-00220 through
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`IPR2017-00225).
`
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`arguments in its Patent Owner Response.
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`3
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`
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`IPR2017-00223
`U.S. Patent 8,724,622
`
`Challenged by Petitioner in
`IPR2017-00220 and IPR2017-00221
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`IPR2017-00222
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`IPR2017-00223 &
`IPR2017-00224
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`IPR2017-00225
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` Overview of the '622 Patent
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`The
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`'622 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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`'622 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 over the [public switched telephone network or] PSTN,
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`4
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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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`IPR2017-00223
`U.S. Patent 8,724,622
`telephone call, voice
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`communication takes place over that communication path.” Ex. 1001, 1:29-34.
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`The '622 Patent expressly distinguishes circuit-switched networks from
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`packet-switched networks (e.g., the Internet) at least in that the latter routes
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`packetized digital information, such as “Voice over Internet Protocol (i.e., ‘VoIP’),
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`also known as IP telephony or Internet telephony.”3 Id., 1:35-36. Because legacy
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`circuit-switched devices were unable to communicate directly over packet-switched
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`networks, media gateways (114) were designed to receive circuit-switched signals
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`and packetize them for transmittal over packet-switched networks, and vice versa.
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`Id., 2:8-18. 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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`3 Consistent with the '622 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
`connection-oriented protocols, including better use of available
`bandwidth.
`
`5
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`
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`IPR2017-00223
`U.S. Patent 8,724,622
`IP network 102) are different from, and are incompatible with, an audio signal
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`carried over a dedicated packet-switched circuit. Id., 2:8-21.
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`The '622 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. Id.,
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`2:22-53. 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.” Id., 2:26-33.
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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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`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.” Id., 2:47-51. In certain disclosed embodiments, the
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`'622 Patent addressed that need, in part, by providing a user-accessible client (208)
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`that is specially configured for instant voice message (IVM) and for direct
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`communication over a packet-switched network (e.g., through an Ethernet card). Id.,
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`12:13-14. More specifically, the '622 Patent teaches that certain clients (208) are
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`specially configured to “listen[] to the input audio device 212,” “record[] the user’s
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`6
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`IPR2017-00223
`U.S. Patent 8,724,622
`speech into a digitized audio file 210 (i.e., instant voice message) stored on the IVM
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`client 208,” and “transmit[] the digitized audio file 210” as packetized data (e.g.,
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`using TCP/IP) over a packet-switched network (e.g., network 204) “to the local IVM
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`server 202.” Id., 8:8-11 and 8:21-22.
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`The Petition challenges two independent (Claims 3 and 38) and seventeen
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`dependent claims (Claims 4, 6-8, 10-19, and 21-23). For the convenience of the
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`Board, independent Claim 3 is reproduced below:
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`3. A system comprising:
`a network interface connected to a packet-switched
`network;
`a messaging system communicating with a plurality of
`instant voice message client systems via the network
`interface; and
`a communication platform system maintaining connection
`information for each of the plurality of instant voice
`message client systems indicating whether there is a
`current connection to each of the plurality of instant
`voice message client systems,
`wherein the messaging system receives an instant voice
`message from one of the plurality of instant voice
`message client systems, and
`wherein the instant voice message includes an object field
`including a digitized audio file.
`
`
`
`7
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`IPR2017-00223
`U.S. Patent 8,724,622
`III. TWO CUMULATIVE AND REDUNDANT PETITIONS
`As shown in the table below, Petitioner has filed two inter partes review
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`petitions that collectively challenge the patentability of the same claims of the '622
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`Patent under 35 U.S.C. § 103(a) over the following redundant and cumulative
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`grounds:
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`2
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`3
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`4
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`5
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`Petition Ground
`IPR2017-
`1
`00223
`IPR2017-
`00223
`IPR2017-
`00223
`IPR2017-
`00224
`IPR2017-
`00224
`IPR2017-
`00224
`IPR2017-
`00224
`
`Claims
`3, 4, 6-8, 11-13,
`18, and 21-23
`10 and 14-17
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`19
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`38
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`Reference(s)
`Vuori4 and SMSS5
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`Vuori, SMSS, and Holtzberg6
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`Vuori, SMSS, and Väänänen7
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`Vuori
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`3, 4, 7-8, 11-13,
`Dahod8
`18, 21-23, and 38
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`6, 10, and 14-17 Dahod and Hogan9
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`Dahod and Logan10
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`19
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`6
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`7
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` The Redundant Challenges Are Not Entitled to Consideration
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`The Board has long held that multiple grounds for unpatentability for the
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`same claim will not be considered unless the petition itself explains the relative
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`4 Ex. 1005, U.S. Patent Application Publication No. 2002/0146097 (“Vuori”).
`5 Ex. 1006, SMS Specification (“SMSS”).
`6 Ex. 1007, U.S. Patent No. 6,625,261 (“Holtzberg”).
`7 Ex. 1008, U.S. Patent No. 7,218,919 (“Väänänen”).
`8 Ex. 1009, U.S. Patent Application Publication No. 2004/0022208 (“Dahod”).
`9 Ex. 1010, U.S. Patent No. 5,619,554 (“Hogan”).
`10 Ex. 1011, U.S. Patent No. 5,732,216 (“Logan”).
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`8
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`
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`IPR2017-00223
`U.S. Patent 8,724,622
`strengths and weaknesses of each ground. See Liberty Mut. Ins. Co. v. Progressive
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`Cas. Ins. Co., No. CBM2012-00003 (P.T.A.B. Oct. 25, 2012), Paper 7; see also
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`Ford Motor Co. v. Paice LLC et al., No. IPR2014-00570 (P.T.A.B. Nov. 26, 2014),
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`Paper 17 (“[T]he proper focus of a challenge based on multiple grounds is not
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`simply whether a difference exists between the grounds. Rather, the petitioner must
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`explain some meaningful advantage for proceeding on multiple grounds in terms of
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`their variant strengths and weaknesses as applied to the challenged claim.”). This is
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`because “numerous redundant grounds would place a significant burden on the
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`Patent Owner and the Board, and would cause unnecessary delays,” contrary to 37
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`C.F.R. §42.1(b), which calls for the “just, speedy, and inexpensive resolution of
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`every proceeding.” Id.
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`The Board has recognized at least two types of impermissible redundancy:
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`horizontal and vertical. Id. at 3. The Petition presents multiple unjustified instances
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`of both types of redundancy; and those redundant challenges are not entitled to
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`consideration.
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`1.
`The '223 and '224 Petitions Are Horizontally Redundant
`Petitioner chose to file two consecutive inter partes review petitions
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`(IPR2017-00223 and IPR2017-0022411) which challenge the same claims of the
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`same '622 Patent under redundant theories of obviousness. Even the accompanying
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`11 See note 1, supra.
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`9
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`
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`IPR2017-00223
`U.S. Patent 8,724,622
`exhibits of both petitions are identical. The redundant petitions only differ in that
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`the present '223 Petition relies on Vuori (Ex. 1005) as the primary reference, while
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`the redundant '224 Petition relies, instead, on Dahod (Ex. 1009) as the primary
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`reference (even though Dahod was the primary reference considered by the
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`Examiner throughout prosecution). Such redundancy is impermissible because
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`Petitioner fails to explain “why each ground has strength and weakness relative to
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`the other should both grounds be asserted for consideration.” Liberty Mutual,
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`CBM2012-00003, Paper 7 at 3 (emphasis original).
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`Petitioner impermissibly seeks what the Board refers to as horizontal
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`redundancy. Horizontal redundancy occurs when multiple references are relied upon
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`to “provide essentially the same teaching to meet the same claim limitation, and the
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`associated arguments do not explain why one reference more closely satisfies the
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`claim limitation at issue in some respects than another reference, and vice versa.”
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`Liberty Mut., CBM2012-00003, Paper 7 at 3 (emphasis original).
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`The Board’s unwillingness to consider references presented in a horizontally
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`redundant manner demonstrates its aversion to art that is cumulative of other art
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`presented to it, where the multiple references are essentially interchangeable and
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`used to allegedly disclose the same claim features.
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`The Board recently exercised this discretion to deny redundancy appearing
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`within separate petitions in the “informative” decision Medtronic, Inc. v. NuVasive,
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`10
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`
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`IPR2017-00223
`U.S. Patent 8,724,622
`Inc., No. IPR2014-00487 (Sept. 11, 2014), Paper No. 8. The petitioner there had
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`previously filed two IPR petitions challenging the same patent. The Board denied
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`one petition and instituted the other. The Board denied a third petition challenging
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`the same patent as “essentially a duplicate” of the denied petition, despite the fact
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`the petitioner had argued the third petition corrected deficiencies, provided new
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`evidence and arguments, and presented grounds that were not redundant to the
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`grounds presented in the instituted petition.
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`It is Petitioner’s obligation to explain why the Board should institute trial on
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`multiple redundant grounds. Liberty Mut., CBM2012-00003, Paper 7 at 3. As
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`discussed herein, not only has Petitioner not met that obligation, it has not even
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`attempted to provide explanations which would justify dedication of the Board’s
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`resources toward analyzing references in a cumulative and redundant manner.
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`The Petition articulates only one relative distinction between Vuori and
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`Dahod. Specifically, Petitioner concedes “Dahod better teaches the ‘object field
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`including a digitized audio file’ recited in independent claim 3.” Pet. 4. As
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`independent Claim 38 does not recite that same limitation, Petitioner’s only alleged
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`justification for redundancy is entirely irrelevant to that claim. See Mobotix Corp.
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`v. E-Watch, Inc., No. IPR2013-00335 (P.T.A.B. Jan. 10, 2014), Paper 20 at 2-3
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`(finding redundant challenges are not entitled to consideration where petitioner
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`alleges distinctions that are inapplicable to those claims).
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`11
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`
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`IPR2017-00223
`U.S. Patent 8,724,622
`Additionally, Petitioner redundantly argues in the present Petition, without
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`equivocation or otherwise admitting any relative weaknesses, that both Vuori and
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`SMSS disclose the limitation “wherein the instant voice message includes an object
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`field including a digitized audio file.” Pet. at 18-19. It appears, therefore, that
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`Petitioner has simply chosen a limitation at random and offered an illusory
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`distinction with the sole intent of taking multiple bites at the apple.
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`Petitioner also fails to explain how Dahod is substantively weaker than Vuori
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`in other respects, as is required to justify the redundancy. While Petitioner states
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`“Vouri was not cited in an office action against the '622 Patent during prosecution
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`and is not susceptible to a potential §325(d) attack,” that conclusory statement is
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`merely a legal conclusion concerning a procedural issue, as opposed to a relative
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`strength or weakness of the substantive disclosure within Vuori relative to Dahod.
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`If redundancies could be justified by unilateral and undefended declarations
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`concerning procedural issues, the exception would swallow the rule.
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`Moreover, Petitioner’s legal conclusion concerning Vuori is in error. Section
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`352(d) grants the Board discretion to reject a petition for inter partes review if the
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`“same or substantially the same prior art or arguments previously were presented
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`to the Office.” 35 U.S.C. § 325(d) (emphasis added). Petitioner’s reliance on Vuori
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`to present the same or substantially the same arguments invokes the discretion
`
`offered under § 325(d), regardless whether Vuori was previously presented to the
`
`12
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`
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`IPR2017-00223
`U.S. Patent 8,724,622
`Office during prosecution. Thus, Vouri and Dahod are both subject to § 325(d)
`
`scrutiny; and Petitioner’s false declaration otherwise does nothing to justify its
`
`admitted horizontal redundancy.
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`It is significant that Petitioner ignores § 325(d) altogether and makes no
`
`attempt to explain why its cumulative reliance on Dahod does not invoke that statute.
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`See Baker Hughes Oilfield Operations, Inc. v. Smith International, Inc., No.
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`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)”).
`
`Perhaps a subtler problem with Petitioner’s illusory attempt to show relative
`
`strengths and weaknesses for Dahod and Vuori is what Petitioner omitted. While
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`Petitioner has the burden to offer the bi-directional explanation, Petitioner does not
`
`explain whether and how its own self-serving legal conclusion with respect to Vuori
`
`alone somehow makes Dahod a stronger or weaker reference. If Petitioner
`
`understood that Dahod invoked § 325(d), it should have expressly conceded that
`
`weakness and explained why Vuori is not subject to the same (and why Petitioner
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`nevertheless filed the present Petition based on Dahod in the first place). Explicit
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`and bi-directional admissions of relative strengths and weakness is precisely the
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`quid pro quo the Board requires to justify redundancy.
`
`13
`
`
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`IPR2017-00223
`U.S. Patent 8,724,622
`Petitioner then should have provided legal authority (and there is none)
`
`confirming that a party’s unilateral legal conclusion on a procedural issue (as
`
`opposed to a substantive distinction concerning what the redundantly asserted
`
`references actually disclose) somehow justifies admitted horizontal redundancies of
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`co-pending petitions. Petitioner failed to provide the requisite analysis; and the
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`Board cannot adopt arguments that Petitioner failed to raise.12
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`For the forgoing reasons, Petitioner’s horizontally redundant challenges are
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`not entitled to consideration. Given that Petitioner offers only one substantive
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`distinction which identifies Dahod as the stronger reference, the Board should deny
`
`the present '223 Petition in its entirety as horizontally redundant. Regardless whether
`
`the Board considers the merits of any of Petitioner’s horizontally-redundant
`
`theories, the Petition still fails to present a prima facie case of obviousness for even
`
`one challenge claim, for reasons explained below.
`
`2.
`Petitioner Compounds Its Error with Vertical Redundancies
`Evidently recognizing (though unwilling to openly admit) the weakness of
`
`Vuori as a reference, Petitioner repeatedly attempts to argue in the alternative (at
`
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`12 See In re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016)
`(“[W]e find no support for the PTO's position that the Board is free to adopt
`arguments on behalf of petitioners that could have been, but were not, raised by the
`petitioner during an IPR. Instead, the Board must base its decision on arguments that
`were advanced by a party, and to which the opposing party was given a chance to
`respond.”).
`
`14
`
`
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`IPR2017-00223
`U.S. Patent 8,724,622
`least ten separate times) that “[t]o the extent Patent Owner argues that Vuori does
`
`not explicitly teach or suggest this limitation, it is taught or suggested by” one or
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`more of the other cited references. Pet. 19, 22, 25, 27, 29, 32, 34, 50, 56, and 60.
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`Petitioner’s unjustified “backup” arguments repeatedly violate the Board’s
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`prohibition against vertical redundancy.
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`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.,
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`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
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`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).
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`If one of the alternative grounds is better from all perspectives, then the Board
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`should only consider the stronger ground and not burden the Patent Owner and the
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`Board with the weaker ground. Further, if there is no difference in the grounds, the
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`Petitioner should only assert one of the grounds. Id. at 12. “Only if the Petitioner
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`reasonably articulates why each ground has strength and weakness relative to the
`
`other should both grounds be asserted for consideration.” Id.
`
`15
`
`
`
`IPR2017-00223
`U.S. Patent 8,724,622
`Petitioner makes no effort to explain why “the reliance in part [i.e., on Vuori
`
`alone] may be the stronger assertion as applied in certain instances and why the
`
`reliance in whole [e.g., Vuori as modified by SMSS] 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).
`
`The Board in Eizo Corp. v. Barco N.V.13 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).
`
`Because Petitioner makes no attempt to justify its vertical redundancies, the
`
`Board should find those redundancies based on the larger group are not entitled to
`
`consideration. Regardless whether the Board considers the merits of any of
`
`
`13 IPR2014-00358, Paper 11 (P.T.A.B. July 23, 2014).
`
`16
`
`
`
`IPR2017-00223
`U.S. Patent 8,724,622
`Petitioner’s vertically-redundant theories, the Petition still fails to present a prima
`
`facie case of obviousness for even one challenge claim, for reasons explained below.
`
`
`
`Petitioner’s Abusive Pattern of Redundancy is Improper
`
`Petitioner has exhibited an abusive pattern of redundancy in each of the six
`
`petitions it filed the same week against the same family of patents.14 Considering
`
`those six petitions on their face, Petitioner admittedly offers multiple horizontally
`
`redundant grounds against every challenged claim (65 challenged claims in total).
`
`That redundancy is further 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 offers only an illusory explanation for
`
`certain horizontally redundant challenges; and Petitioner makes no attempt to justify
`
`any of the myriad of vertically redundant challenges.
`
`Given the consistent pattern of unjustified redundancy across all six petitions,
`
`it appears the Petitioner has the false perception that multiplying patentability
`
`challenges (for whatever reason) 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
`
`
`14 See, e.g., IPR2017-0220, IPR2017-00221, IPR2017-00222, IPR2017-00223,
`IPR2017-00224 and IPR2017-00225.
`
`17
`
`
`
`IPR2017-00223
`U.S. Patent 8,724,622
`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.
`
`
`
`Petitioner Repeatedly Presents Vacuous Grounds
`
`Another disturbing pattern of the six related petitions is that Petitioner does
`
`not bother to provide even one 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).
`
`18
`
`
`
`IPR2017-00223
`U.S. Patent 8,724,622
`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
`
`statements presented in the corresponding petition. Cf. 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).
`
`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).
`
`After rejecting Petitioner’s redundant grounds, the Board should reject any
`
`non-redundant, non-cumulative grounds that remain (if any) because Petitioner fails
`
`to meet this burden.15
`
`
`15 While certain deficiencies in the Petition are addressed herein, Patent Owner
`hereby expressly reserves the right to address other deficiencies of the Petition in a
`full Response (and with the support of its own expert) if an inter partes review is
`instituted.
`
`19
`
`
`
`IPR2017-00223
`U.S. Patent 8,724,622
`
` Claim Construction
`
`Petitioner seeks to construe several terms purportedly recited in “Claim 1,” yet
`
`the Petition does not challenge independent Claim 1 and, in any event, those terms do
`
`not appear in Claim 1. Even if the Board were to assume that Petitioner had, instead,
`
`intended to identify terms recited in claims other than independent Claim 1,
`
`Petitioner’s proposed definitions should be rejected for violating fundamental canons
`
`of claim construction applicable here.16
`
`With respect to terms that appear only in dependent claims, the Board need not
`
`resolve any claim construction disputes because the Petition fails to present a case of
`
`prima facie obviousness for independent Claims 3 and 38. 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.”).
`
`The only term identified for construction that appears in an independent claim
`
`is “object field,” as recited in independent Claim 3 (though not Claim 1).17 The term
`
`
`16 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
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