throbber
Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 7
`
`Entered: May 25, 2017
`
`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
`
`
`I.
`
`INTRODUCTION
`
`Apple Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
`
`an inter partes review of claims 3, 4, 6–8, 10–19, 21–23, and 38 (“the
`
`challenged claims”) of U.S. Patent No. 8,724,622 B2 (Ex. 1001, “the
`
`’622 patent”). Pet. 2. Uniloc USA, Inc. and Uniloc Luxembourg S.A.
`
`(“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`
`Based on the particular circumstances of this case, we exercise our
`
`discretion under 35 U.S.C. § 325(d) and 37 C.F.R. § 42.108 and do not
`
`institute an inter partes review of the challenged claims.
`
`II. BACKGROUND
`
`A. Related Matters
`
`Petitioner indicates that the ’622 patent is involved in Uniloc USA,
`
`Inc. v. Apple Inc., No. 2:16-cv-00638 (E.D. Tex.) and twenty-six other
`
`actions in the U.S. District Court for the Eastern District of Texas. Pet. 51–
`
`52. The ’622 patent also is the subject of Case IPR2017-00223, which
`
`Petitioner filed concurrently with the instant proceeding. See Pet. 2–3;
`
`Prelim. Resp. 1 & n.1.
`
`B. Overview of the ’622 Patent
`
`The ’622 patent explains that “[v]oice messaging” and “instant text
`
`messaging” in both the Voice over Internet Protocol (“VoIP”) and public
`
`switched telephone network environments are known. Ex. 1001, 2:22–46.
`
`In prior art instant text messaging systems, a server presents a user of a
`
`client terminal with a “list of persons who are currently ‘online’ and ready to
`
`receive text messages,” the user “select[s] one or more” recipients and types
`
`the message, and the server immediately sends the message to the respective
`
`client terminals. Id. at 2:34–46. According to the ’622 patent, however,
`
`
`
`2
`
`

`

`IPR2017-00224
`Patent 8,724,622 B2
`
`“there is still a need in the art for . . . a system and method for providing
`
`instant VoIP messaging over an IP network,” such as the Internet.
`
`Id. at 1:18–22, 2:47–59, 6:47–49.
`
`In one embodiment, the ’622 patent discloses local instant voice
`
`messaging (“IVM”) system 200, depicted in Figure 2 below. Id. at 6:22–24.
`
`
`
`As illustrated in Figure 2, local packet-switched IP network 204,
`
`which may be a local area network (“LAN”), “interconnects” IVM
`
`clients 206, 208 and legacy telephone 110 to local IVM server 202. Id.
`
`at 6:50–7:2; see id. at 7:23–24, 7:61–65. Local IVM server 202 enables
`
`instant voice messaging functionality over network 204. Id. at 7:61–65.
`
`In “record mode,” IVM client 208, exemplified as a VoIP softphone
`
`in Figure 2, “displays a list of one or more IVM recipients,” provided and
`
`stored by local IVM server 202, and the user selects recipients from the list.
`
`Id. at 7:57–59, 7:65–8:4. IVM client 208 then transmits the selections to
`
`
`
`3
`
`

`

`IPR2017-00224
`Patent 8,724,622 B2
`
`IVM server 202 and “records the user’s speech into . . . digitized audio
`
`file 210 (i.e., an instant voice message).” Id. at 8:4–11.
`
`When the recording is complete, IVM client 208 transmits audio
`
`file 210 to local IVM server 202, which delivers the message to the selected
`
`recipients via local IP network 204. Id. at 8:1529. “[O]nly the available
`
`IVM recipients, currently connected to . . . IVM server 202, will receive the
`
`instant voice message.” Id. at 8:3334. IVM server 202 “temporarily saves
`
`the instant voice message” for any IVM client that is “not currently
`
`connected to . . . local IVM server 202 (i.e., is unavailable)” and “delivers it
`
`. . . when the IVM client connects to . . . local IVM server 202 (i.e., is
`
`available).” Id. at 8:34–39; see id. at 9:17–21. Upon receiving the instant
`
`voice message, the recipients can audibly play the message. Id. at 8:29–32.
`
`C.
`
`Illustrative Claims
`
`Of the challenged claims, claims 3 and 38 are independent. Those
`
`two independent claims, which are reproduced below, are illustrative of the
`
`recited subject matter:
`
`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.
`
`
`
`4
`
`

`

`IPR2017-00224
`Patent 8,724,622 B2
`
`
`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.
`
`Ex. 1001, 24:12–27, 27:11–23.
`
`D.
`
`References Relied Upon
`
`Petitioner relies on the following references:
`
`Hogan
`
`US 5,619,554
`
`Logan
`
`US 5,732,216
`
`
`
`
`
`Apr. 8, 1997 (Ex. 1010)
`
`Mar. 24, 1998 (Ex. 1011)
`
`US 2004/0022208 A1
`Dahod
`(“the Dahod application”)
`
`Feb. 5, 2004 (Ex. 1009)
`
`Pet. 2. Petitioner also relies on a declaration of Leonard J. Forys, Ph.D.
`
`(Ex. 1003).
`
`E.
`
`Asserted Grounds of Unpatentability
`
`Petitioner challenges the patentability of claims 3, 4, 6–8, 10–19, 21–
`
`23, and 38 under 35 U.S.C. § 103 on the following grounds:
`
`Reference(s)
`
`Claim(s) Challenged
`
`the Dahod application
`
`3, 4, 7, 8, 11–13, 18, 21–23, and 38
`
`the Dahod application and Hogan
`
`6, 10, and 14–17
`
`the Dahod application and Logan
`
`19
`
`
`Pet. 2.
`
`
`
`5
`
`

`

`IPR2017-00224
`Patent 8,724,622 B2
`
`
`III. DISCUSSION
`
`A.
`
`Discretionary Non-Institution Under 35 U.S.C. § 325(d)
`
`Institution of inter partes review is discretionary. See 35 U.S.C.
`
`§ 314(a); 37 C.F.R. § 42.108. Our discretion as to whether to institute an
`
`inter partes review is guided, in part, by 35 U.S.C. § 325(d), which provides
`
`that “[i]n determining whether to institute or order a proceeding . . . the
`
`Director may take into account whether, and reject the petition or request
`
`because, the same or substantially the same prior art or arguments previously
`
`were presented to the Office.” 35 U.S.C. § 325(d).
`
`Our discretion under § 325(d) involves a balance between several
`
`competing interests. See Neil Ziegman, N.P.Z., Inc. v. Stephens, Case
`
`IPR2015-01860, slip op. at 12–13 (PTAB Feb. 24, 2016) (Paper 11) (“While
`
`petitioners may have sound reasons for raising art or arguments similar to
`
`those previously considered by the Office, the Board weighs petitioners’
`
`desires to be heard against the interests of patent owners, who seek to avoid
`
`harassment and enjoy quiet title to their rights.” (citing H.R. Rep. No.
`
`112-98, pt. 1, at 48 (2011))). “On the one hand, there are the interests in
`
`conserving the resources of the Office and granting patent owners repose on
`
`issues and prior art that have been considered previously.” Fox Factory, Inc.
`
`v. SRAM, LLC, Case IPR2016-01876, slip op. 7 (PTAB Apr. 3, 2017)
`
`(Paper 8). “On the other hand, there are the interests of giving petitioners
`
`the opportunity to be heard and correcting any errors by the Office in
`
`allowing a patent—in the case of an inter partes review—over prior art
`
`patents and printed publications.” Id.
`
`Patent Owner contends in the Preliminary Response that the facts in
`
`this case “present a textbook-worthy scenario for applying the discretion set
`
`
`
`6
`
`

`

`IPR2017-00224
`Patent 8,724,622 B2
`
`forth in § 325(d).” Prelim. Resp. 9. In particular, Patent Owner points out,
`
`the Examiner during prosecution of the application that issued as the
`
`’622 patent twice rejected and then ultimately allowed the ’622 patent claims
`
`over U.S. Patent No. 7,372,826 to Dahod et al. (Ex. 3001, “the Dahod
`
`patent”)—i.e., the patent that issued from the Dahod application relied upon
`
`by Petitioner in each asserted ground in the Petition. Id. at 10 (citing
`
`Ex. 1002, 139 (setting forth non-final rejection under 35 U.S.C. § 102(e)
`
`over the Dahod patent), 97–100 (setting forth final rejections under
`
`35 U.S.C. § 102(e) over the Dahod patent and under 35 U.S.C. § 103(a) over
`
`the Dahod patent in combination with other references), 36–42 (Notice of
`
`Allowance stating reasons for allowance of the issued claims of the
`
`’622 patent over the Dahod patent)).
`
`Given the evidence and arguments presented here, we exercise our
`
`discretion under § 325(d) and decline to institute an inter partes review
`
`based on any ground asserted in the Petition, all of which rely primarily on
`
`the teachings of the Dahod application. See generally Pet. 2, 9–50. We find
`
`that substantially the same arguments regarding the unpatentability of the
`
`claimed subject matter over the Dahod application were presented
`
`previously to the Office with respect to the Dahod patent.
`
`As Patent Owner points out (Prelim. Resp. 9), Petitioner appears to
`
`recognize the applicability of § 325(d) to its Petition (see Pet. 1
`
`(acknowledging that “[i]n the Notice of Allowance dated March 6, 2014, the
`
`Examiner stated the claims were allowable over the art cited in this Petition,
`
`Dahod”), 4 (Petitioner attempting to distinguish the Dahod application from
`
`the “Vuori” reference relied upon in concurrently filed IPR2017-00223 on
`
`the basis that the latter “is not susceptible to a potential §325(d) attack”)),
`
`
`
`7
`
`

`

`IPR2017-00224
`Patent 8,724,622 B2
`
`but makes no meaningful effort to explain why we should not exercise our
`
`discretion to deny the Petition on that basis. Petitioner contends that the
`
`Examiner “erroneously issued” the ’622 patent (id. at 1); that “the Examiner
`
`stated the claims were allowable over . . . Dahod, because the Examiner
`
`wrongly believed: ‘applicant’s instant voice message system that has an
`
`object field including a digitized audio file, nor does the instant voice
`
`messaging system include displaying a list of recipients for an instant voice
`
`message’” (id.); that “[t]he Examiner apparently did not understand that the
`
`‘object field including a digitized audio file’ was rendered obvious in view
`
`of Dahod, where Dahod states that ‘the new [voice instant message] VIM
`
`may optionally include or attach the original VIM’” (id.); and that “the
`
`Examiner overlooked key elements of Dahod . . . [f]or example, the
`
`Examiner failed to understand that Dahod provides: . . . ‘the new VIM may
`
`optionally include or attach the original VIM . . .” (id. at 16 (quoting
`
`Ex. 1009 ¶ 90) (emphasis omitted)). But those arguments, which essentially
`
`amount only to speculation that the Examiner failed to read the entirety of
`
`the Dahod patent despite his express reliance thereupon in twice rejecting
`
`the claims, do not persuade us that the Examiner misapprehended the
`
`reference and do not justify disturbing Patent Owner’s repose with respect to
`
`prior art substantively considered by the Office during prosecution.
`
`Although Petitioner now relies upon the Dahod application (e.g.,
`
`Pet. 2) whereas the Examiner relied upon the Dahod patent (e.g., Ex. 1002,
`
`139) that distinction is inconsequential. Petitioner provides no explicit
`
`explanation for its reliance on the Dahod application rather than the Dahod
`
`patent. Regardless, the Dahod patent issued directly from the application
`
`published as the Dahod application, and apart from different formatting and
`
`
`
`8
`
`

`

`IPR2017-00224
`Patent 8,724,622 B2
`
`differences in claim language apparently resulting from amendments made
`
`after publication of the Dahod application,2 we discern no substantive
`
`differences in their disclosures. Compare Ex. 1009, with Ex. 3001. And
`
`indeed, Petitioner itself equates the Dahod application and Dahod patent,
`
`stating that “the Examiner stated the claims were allowable over the art cited
`
`in this Petition, Dahod.” Pet. 1 (emphasis added).
`
`We also ascribe little significance to the fact that the Examiner
`
`rejected certain claims under 35 U.S.C. § 102(e) as anticipated by the Dahod
`
`patent, whereas Petitioner asserts that claims 3, 4, 7, 8, 11–13, 18, 21–23,
`
`and 38 are unpatentable under § 103 over the Dahod application. First, none
`
`of the claims rejected under § 102(e) during prosecution ultimately issued in
`
`the ’622 patent, but were each amended prior to allowance. Second, in
`
`stating the reasons for allowance, the Examiner explicitly stated “[n]o
`
`obvious combination of references found would have taught one of ordinary
`
`skill in the art to make applicant’s system as claimed.” Ex. 1002, 41. We
`
`understand that statement to contemplate patentability under § 103. See also
`
`Arctic Cat, Inc. v. Polaris Indus. Inc., Case IPR2017-00199, slip op. 8
`
`(PTAB Apr. 17, 2017) (Paper 8) (finding unpersuasive petitioner’s assertion
`
`that § 325(d) did not apply where reference was previously set forth in an
`
`anticipation rejection whereas petition set forth obviousness ground of
`
`unpatentability).
`
`Lastly, although Petitioner cites two additional references, Hogan and
`
`Logan, that appear not to have been before the Examiner, Petitioner cites
`
`
`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.
`
`
`
`9
`
`

`

`IPR2017-00224
`Patent 8,724,622 B2
`
`those only for certain dependent claims and does not allege that they teach
`
`the limitations that the Examiner expressly found are not taught by Dahod.
`
`See Pet. 32–50; Ex. 1002, 41. On this record, we are not persuaded that
`
`these references add to or alter the information regarding the teachings of the
`
`Dahod patent considered in detail by the Examiner during prosecution.
`
`B.
`
`Conclusion
`
`For the foregoing reasons, we exercise our discretion and decline to
`
`institute inter partes review of claims 3, 4, 6–8, 10–19, 21–23, and 38 of the
`
`’622 patent on the grounds presented in this proceeding. See 35 U.S.C.
`
`§§ 314(a), 325(d); 37 C.F.R. § 42.108.
`
`IV. ORDER
`
`Accordingly, it is
`
`ORDERED that the Petition is denied, and no trial or inter partes
`
`review is instituted on any asserted ground.
`
`
`
`10
`
`

`

`IPR2017-00224
`Patent 8,724,622 B2
`
`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
`
`
`
`
`11
`
`

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