`571-272-7822
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`Paper No. 7
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`Entered: May 25, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,1
`____________
`
`Case IPR2017-00224
`Patent 8,724,622 B2
`____________
`
`
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 325(d) and 37 C.F.R. § 42.108
`
`
`
`1 Patent Owner’s Mandatory Notice filed pursuant to 37 C.F.R. § 42.8
`identifies Uniloc USA, Inc. and Uniloc Luxembourg S.A. as Patent Owner
`and as real parties in interest. Paper 4 at caption, 1. Therefore, we adjust the
`case caption to include Uniloc USA, Inc.
`
`
`
`IPR2017-00224
`Patent 8,724,622 B2
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`
`I.
`
`INTRODUCTION
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`Apple Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
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`an inter partes review of claims 3, 4, 6–8, 10–19, 21–23, and 38 (“the
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`challenged claims”) of U.S. Patent No. 8,724,622 B2 (Ex. 1001, “the
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`’622 patent”). Pet. 2. Uniloc USA, Inc. and Uniloc Luxembourg S.A.
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`(“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
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`Based on the particular circumstances of this case, we exercise our
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`discretion under 35 U.S.C. § 325(d) and 37 C.F.R. § 42.108 and do not
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`institute an inter partes review of the challenged claims.
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`II. BACKGROUND
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`A. Related Matters
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`Petitioner indicates that the ’622 patent is involved in Uniloc USA,
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`Inc. v. Apple Inc., No. 2:16-cv-00638 (E.D. Tex.) and twenty-six other
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`actions in the U.S. District Court for the Eastern District of Texas. Pet. 51–
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`52. The ’622 patent also is the subject of Case IPR2017-00223, which
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`Petitioner filed concurrently with the instant proceeding. See Pet. 2–3;
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`Prelim. Resp. 1 & n.1.
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`B. Overview of the ’622 Patent
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`The ’622 patent explains that “[v]oice messaging” and “instant text
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`messaging” in both the Voice over Internet Protocol (“VoIP”) and public
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`switched telephone network environments are known. Ex. 1001, 2:22–46.
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`In prior art instant text messaging systems, a server presents a user of a
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`client terminal with a “list of persons who are currently ‘online’ and ready to
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`receive text messages,” the user “select[s] one or more” recipients and types
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`the message, and the server immediately sends the message to the respective
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`client terminals. Id. at 2:34–46. According to the ’622 patent, however,
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`2
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`IPR2017-00224
`Patent 8,724,622 B2
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`“there is still a need in the art for . . . a system and method for providing
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`instant VoIP messaging over an IP network,” such as the Internet.
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`Id. at 1:18–22, 2:47–59, 6:47–49.
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`In one embodiment, the ’622 patent discloses local instant voice
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`messaging (“IVM”) system 200, depicted in Figure 2 below. Id. at 6:22–24.
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`
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`As illustrated in Figure 2, local packet-switched IP network 204,
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`which may be a local area network (“LAN”), “interconnects” IVM
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`clients 206, 208 and legacy telephone 110 to local IVM server 202. Id.
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`at 6:50–7:2; see id. at 7:23–24, 7:61–65. Local IVM server 202 enables
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`instant voice messaging functionality over network 204. Id. at 7:61–65.
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`In “record mode,” IVM client 208, exemplified as a VoIP softphone
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`in Figure 2, “displays a list of one or more IVM recipients,” provided and
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`stored by local IVM server 202, and the user selects recipients from the list.
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`Id. at 7:57–59, 7:65–8:4. IVM client 208 then transmits the selections to
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`3
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`IPR2017-00224
`Patent 8,724,622 B2
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`IVM server 202 and “records the user’s speech into . . . digitized audio
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`file 210 (i.e., an instant voice message).” Id. at 8:4–11.
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`When the recording is complete, IVM client 208 transmits audio
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`file 210 to local IVM server 202, which delivers the message to the selected
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`recipients via local IP network 204. Id. at 8:1529. “[O]nly the available
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`IVM recipients, currently connected to . . . IVM server 202, will receive the
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`instant voice message.” Id. at 8:3334. IVM server 202 “temporarily saves
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`the instant voice message” for any IVM client that is “not currently
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`connected to . . . local IVM server 202 (i.e., is unavailable)” and “delivers it
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`. . . when the IVM client connects to . . . local IVM server 202 (i.e., is
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`available).” Id. at 8:34–39; see id. at 9:17–21. Upon receiving the instant
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`voice message, the recipients can audibly play the message. Id. at 8:29–32.
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`C.
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`Illustrative Claims
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`Of the challenged claims, claims 3 and 38 are independent. Those
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`two independent claims, which are reproduced below, are illustrative of the
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`recited subject matter:
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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.
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`
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`4
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`IPR2017-00224
`Patent 8,724,622 B2
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`38. A system comprising:
`a client device;
`a network interface coupled to the client device and connecting
`the client device to a packet-switched network; and
`an instant voice messaging application installed on the client
`device, wherein the instant voice messaging application
`includes a client platform system for generating an instant
`voice message and a messaging system for transmitting the
`instant voice message over the packet-switched network via
`the network interface,
`a display displaying a list of one or more potential recipients
`for an instant voice message.
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`Ex. 1001, 24:12–27, 27:11–23.
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`D.
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`References Relied Upon
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`Petitioner relies on the following references:
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`Hogan
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`US 5,619,554
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`Logan
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`US 5,732,216
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`
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`
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`Apr. 8, 1997 (Ex. 1010)
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`Mar. 24, 1998 (Ex. 1011)
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`US 2004/0022208 A1
`Dahod
`(“the Dahod application”)
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`Feb. 5, 2004 (Ex. 1009)
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`Pet. 2. Petitioner also relies on a declaration of Leonard J. Forys, Ph.D.
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`(Ex. 1003).
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`E.
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`Asserted Grounds of Unpatentability
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`Petitioner challenges the patentability of claims 3, 4, 6–8, 10–19, 21–
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`23, and 38 under 35 U.S.C. § 103 on the following grounds:
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`Reference(s)
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`Claim(s) Challenged
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`the Dahod application
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`3, 4, 7, 8, 11–13, 18, 21–23, and 38
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`the Dahod application and Hogan
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`6, 10, and 14–17
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`the Dahod application and Logan
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`19
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`Pet. 2.
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`5
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`III. DISCUSSION
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`A.
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`Discretionary Non-Institution Under 35 U.S.C. § 325(d)
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`Institution of inter partes review is discretionary. See 35 U.S.C.
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`§ 314(a); 37 C.F.R. § 42.108. Our discretion as to whether to institute an
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`inter partes review is guided, in part, by 35 U.S.C. § 325(d), which provides
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`that “[i]n determining whether to institute or order a proceeding . . . the
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`Director may take into account whether, and reject the petition or request
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`because, the same or substantially the same prior art or arguments previously
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`were presented to the Office.” 35 U.S.C. § 325(d).
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`Our discretion under § 325(d) involves a balance between several
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`competing interests. See Neil Ziegman, N.P.Z., Inc. v. Stephens, Case
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`IPR2015-01860, slip op. at 12–13 (PTAB Feb. 24, 2016) (Paper 11) (“While
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`petitioners may have sound reasons for raising art or arguments similar to
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`those previously considered by the Office, the Board weighs petitioners’
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`desires to be heard against the interests of patent owners, who seek to avoid
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`harassment and enjoy quiet title to their rights.” (citing H.R. Rep. No.
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`112-98, pt. 1, at 48 (2011))). “On the one hand, there are the interests in
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`conserving the resources of the Office and granting patent owners repose on
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`issues and prior art that have been considered previously.” Fox Factory, Inc.
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`v. SRAM, LLC, Case IPR2016-01876, slip op. 7 (PTAB Apr. 3, 2017)
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`(Paper 8). “On the other hand, there are the interests of giving petitioners
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`the opportunity to be heard and correcting any errors by the Office in
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`allowing a patent—in the case of an inter partes review—over prior art
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`patents and printed publications.” Id.
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`Patent Owner contends in the Preliminary Response that the facts in
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`this case “present a textbook-worthy scenario for applying the discretion set
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`6
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`Patent 8,724,622 B2
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`forth in § 325(d).” Prelim. Resp. 9. In particular, Patent Owner points out,
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`the Examiner during prosecution of the application that issued as the
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`’622 patent twice rejected and then ultimately allowed the ’622 patent claims
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`over U.S. Patent No. 7,372,826 to Dahod et al. (Ex. 3001, “the Dahod
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`patent”)—i.e., the patent that issued from the Dahod application relied upon
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`by Petitioner in each asserted ground in the Petition. Id. at 10 (citing
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`Ex. 1002, 139 (setting forth non-final rejection under 35 U.S.C. § 102(e)
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`over the Dahod patent), 97–100 (setting forth final rejections under
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`35 U.S.C. § 102(e) over the Dahod patent and under 35 U.S.C. § 103(a) over
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`the Dahod patent in combination with other references), 36–42 (Notice of
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`Allowance stating reasons for allowance of the issued claims of the
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`’622 patent over the Dahod patent)).
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`Given the evidence and arguments presented here, we exercise our
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`discretion under § 325(d) and decline to institute an inter partes review
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`based on any ground asserted in the Petition, all of which rely primarily on
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`the teachings of the Dahod application. See generally Pet. 2, 9–50. We find
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`that substantially the same arguments regarding the unpatentability of the
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`claimed subject matter over the Dahod application were presented
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`previously to the Office with respect to the Dahod patent.
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`As Patent Owner points out (Prelim. Resp. 9), Petitioner appears to
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`recognize the applicability of § 325(d) to its Petition (see Pet. 1
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`(acknowledging that “[i]n the Notice of Allowance dated March 6, 2014, the
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`Examiner stated the claims were allowable over the art cited in this Petition,
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`Dahod”), 4 (Petitioner attempting to distinguish the Dahod application from
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`the “Vuori” reference relied upon in concurrently filed IPR2017-00223 on
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`the basis that the latter “is not susceptible to a potential §325(d) attack”)),
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`7
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`Patent 8,724,622 B2
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`but makes no meaningful effort to explain why we should not exercise our
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`discretion to deny the Petition on that basis. Petitioner contends that the
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`Examiner “erroneously issued” the ’622 patent (id. at 1); that “the Examiner
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`stated the claims were allowable over . . . Dahod, because the Examiner
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`wrongly believed: ‘applicant’s instant voice message system that has an
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`object field including a digitized audio file, nor does the instant voice
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`messaging system include displaying a list of recipients for an instant voice
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`message’” (id.); that “[t]he Examiner apparently did not understand that the
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`‘object field including a digitized audio file’ was rendered obvious in view
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`of Dahod, where Dahod states that ‘the new [voice instant message] VIM
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`may optionally include or attach the original VIM’” (id.); and that “the
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`Examiner overlooked key elements of Dahod . . . [f]or example, the
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`Examiner failed to understand that Dahod provides: . . . ‘the new VIM may
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`optionally include or attach the original VIM . . .” (id. at 16 (quoting
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`Ex. 1009 ¶ 90) (emphasis omitted)). But those arguments, which essentially
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`amount only to speculation that the Examiner failed to read the entirety of
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`the Dahod patent despite his express reliance thereupon in twice rejecting
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`the claims, do not persuade us that the Examiner misapprehended the
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`reference and do not justify disturbing Patent Owner’s repose with respect to
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`prior art substantively considered by the Office during prosecution.
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`Although Petitioner now relies upon the Dahod application (e.g.,
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`Pet. 2) whereas the Examiner relied upon the Dahod patent (e.g., Ex. 1002,
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`139) that distinction is inconsequential. Petitioner provides no explicit
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`explanation for its reliance on the Dahod application rather than the Dahod
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`patent. Regardless, the Dahod patent issued directly from the application
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`published as the Dahod application, and apart from different formatting and
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`Patent 8,724,622 B2
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`differences in claim language apparently resulting from amendments made
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`after publication of the Dahod application,2 we discern no substantive
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`differences in their disclosures. Compare Ex. 1009, with Ex. 3001. And
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`indeed, Petitioner itself equates the Dahod application and Dahod patent,
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`stating that “the Examiner stated the claims were allowable over the art cited
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`in this Petition, Dahod.” Pet. 1 (emphasis added).
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`We also ascribe little significance to the fact that the Examiner
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`rejected certain claims under 35 U.S.C. § 102(e) as anticipated by the Dahod
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`patent, whereas Petitioner asserts that claims 3, 4, 7, 8, 11–13, 18, 21–23,
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`and 38 are unpatentable under § 103 over the Dahod application. First, none
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`of the claims rejected under § 102(e) during prosecution ultimately issued in
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`the ’622 patent, but were each amended prior to allowance. Second, in
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`stating the reasons for allowance, the Examiner explicitly stated “[n]o
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`obvious combination of references found would have taught one of ordinary
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`skill in the art to make applicant’s system as claimed.” Ex. 1002, 41. We
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`understand that statement to contemplate patentability under § 103. See also
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`Arctic Cat, Inc. v. Polaris Indus. Inc., Case IPR2017-00199, slip op. 8
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`(PTAB Apr. 17, 2017) (Paper 8) (finding unpersuasive petitioner’s assertion
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`that § 325(d) did not apply where reference was previously set forth in an
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`anticipation rejection whereas petition set forth obviousness ground of
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`unpatentability).
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`Lastly, although Petitioner cites two additional references, Hogan and
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`Logan, that appear not to have been before the Examiner, Petitioner cites
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`2 In any event, Petitioner does not rely on any teachings set forth in the
`claims of the Dahod application in support of its arguments in the Petition.
`See generally Pet. 9–32, 36–37, 41–43, 45–46.
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`9
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`IPR2017-00224
`Patent 8,724,622 B2
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`those only for certain dependent claims and does not allege that they teach
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`the limitations that the Examiner expressly found are not taught by Dahod.
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`See Pet. 32–50; Ex. 1002, 41. On this record, we are not persuaded that
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`these references add to or alter the information regarding the teachings of the
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`Dahod patent considered in detail by the Examiner during prosecution.
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`B.
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`Conclusion
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`For the foregoing reasons, we exercise our discretion and decline to
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`institute inter partes review of claims 3, 4, 6–8, 10–19, 21–23, and 38 of the
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`’622 patent on the grounds presented in this proceeding. See 35 U.S.C.
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`§§ 314(a), 325(d); 37 C.F.R. § 42.108.
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`IV. ORDER
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`Accordingly, it is
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`ORDERED that the Petition is denied, and no trial or inter partes
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`review is instituted on any asserted ground.
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`IPR2017-00224
`Patent 8,724,622 B2
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`For PETITIONER:
`
`Jason D. Eisenberg
`Michael D. Specht
`Trent W. Merrell
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`jasone-PTAB@skgf.com
`mspecht-PTAB@skgf.com
`tmerrell-PTAB@skgf.com
`
`
`
`For PATENT OWNER:
`
`Brett Mangrum
`Ryan Loveless
`ETHERIDGE LAW GROUP
`brett@etheridgelaw.com
`ryan@etheridgelaw.com
`
`Sean D. Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
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`11
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