Trials@uspto.gov
`571-272-7822
`
`
`Paper 31
`Entered: September 6, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., SNAP INC., FACEBOOK, INC., and WHATSAPP, INC.,1
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-00225
`Patent 8,995,433 B2
`
`____________
`
`
`
`Before, JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`DECISION
`ON PETITIONER’S REQUEST FOR REHEARING
`37 C.F.R. § 42.71(d)
`
`
`1 Snap Inc., which filed a petition in IPR2017-01611, as well as Facebook,
`Inc. and WhatsApp, Inc., which filed a petition in IPR2017-01634, have
`been joined as petitioners in this proceeding.
`
`
`571-272-7822
`
`
`Paper 31
`Entered: September 6, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., SNAP INC., FACEBOOK, INC., and WHATSAPP, INC.,1
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-00225
`Patent 8,995,433 B2
`
`____________
`
`
`
`Before, JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`DECISION
`ON PETITIONER’S REQUEST FOR REHEARING
`37 C.F.R. § 42.71(d)
`
`
`1 Snap Inc., which filed a petition in IPR2017-01611, as well as Facebook,
`Inc. and WhatsApp, Inc., which filed a petition in IPR2017-01634, have
`been joined as petitioners in this proceeding.
`
`
`
`IPR2017-00225
`Patent 8,995,433 B2
`
`
`INTRODUCTION
`I.
`On May 23, 2018, the Board issued the Final Written Decision in this
`proceeding. Paper 29 (“Final Dec.”). On June 22, 2018, Petitioner filed a
`Request for Rehearing. Paper 30 (Req. Reh’g.). Petitioner makes two
`arguments: (1) that the Board overlooked Abburi’s teachings concerning
`storing at the recipient device; and (2) that the Board overlooked or
`misapprehended Petitioner’s arguments for combining Abburi and
`Holtzberg. Id.
`According to 37 C.F.R. § 42.71(d), “[t]he burden of showing a
`decision should be modified lies with the party challenging the decision,”
`and the “request must specifically identify all matters the party believes the
`Board misapprehended or overlooked.” The burden here, therefore, lies with
`Petitioner to show we misapprehended or overlooked the matters it requests
`that we review.
`II. ANALYSIS
`As to the first argument, Petitioner points out the Petition’s reliance
`on Abburi’s disclosure of “an electronic audio file which the recipient can
`store and subsequently playback at his or her option.” Req. Reh’g. 3
`(quoting Ex. 1005 ¶ 32; citing Pet. 17). Petitioner also points out
`Dr. Forys’s reliance on that disclosure and argues that the Petition presents
`the contention that Abburi “suggests at least storage of received audio
`messages in persistent memory, to allow a user to ‘subsequently playback at
`his or her option.’” Req. Reh’g. 4 (citing Pet. 14; Ex. 1003 ¶¶ 105, 109, 66).
`According to Petitioner, the Board overlooked the disclosure of storage of
`received files, because it was given “no consideration in determining that it
`
`2
`
`
`
`IPR2017-00225
`Patent 8,995,433 B2
`
`would not have been obvious to store audio messages in a database at
`Abburi’s client device.” Id. at 5.
`We do not agree with Petitioner’s argument that we overlooked the
`Abburi disclosures pointed out in the Request for Rehearing. As stated in
`the Final Written Decision, Petitioner presented two alternatives concerning
`the “message database” limitation. Final Dec. 32−33. The first focused on
`Abburi, alone. Id. at 32. The Final Written Decision specifically notes
`Petitioner’s arguments regarding Abburi’s device “storing audio messages.”
`Final Dec. 32 (noting, as one of the arguments, that Petitioner argues Abburi
`states that a recipient can store and subsequently play back at his or her
`option the audio file). We found, however, that neither of the cited
`disclosures of “storing” in Abburi teaches the recited “message database.”
`Id. at 33 (“Therefore, we find that neither of Petitioner’s two ‘storing’
`examples in Abburi teaches the ‘message limitation of claims 1 and 6.”).
`Therefore, we did not overlook Abburi’s disclosure of storing received files.
`We analyzed the alternative argument based on Abburi in
`combination with Holtzberg’s teaching of storing voice messages in a
`database. Final Dec. 33. In the course of our analysis of that alternative
`argument, we also found that the potential, generic benefit that would be
`provided by Abburi storing received messages in a local database would not
`outweigh the particular benefits of audio message storage in a centralized
`database already disclosed by Abburi and Holtzberg. Final Dec. 40 (citing
`PO Resp. 26; Ex. 2001 ¶ 54; Ex. 1005 ¶¶ 5−7).2
`
`
`2 We also noted the weaknesses of Petitioner’s obviousness contentions
`based on Abburi’s recorded and sent messages. We found that, at best, sent
`
`
`3
`
`
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`IPR2017-00225
`Patent 8,995,433 B2
`
`
`Accordingly, in the obviousness analysis, we weighed the Abburi
`disclosures that Petitioner provided, together with the testimony of Dr. Forys
`in support, to reach our finding that a person of ordinary skill in the art
`would not have been motivated to combine Abburi and Holtzberg as
`Petitioner alleged in the Petition. Thus, we are not persuaded that we
`overlooked the evidence that Petitioner raises in the Request for Rehearing.
`We also are not persuaded, as to Petitioner’s second argument, that we
`misapprehended or overlooked Petitioner’s argument for a reason to
`combine. The Request for Rehearing provides two reasons. Req. Reh’g. 6.
`First, Petitioner argues that the Petition did not rely on incorporation of
`Holtzberg’s database into Abburi’s device. Id. We disagree. As we noted
`in the Final Written Decision, the Petition expressly relies on
`“incorporation.” Final Dec. 33 (citing Pet. 29, which states that a “POSITA
`would have found it obvious to incorporate Holtzberg’s database structure
`into Abburi because such incorporation . . . .”). Petitioner now attempts to
`cast the proffered rationale as focusing instead on “storage and organization
`techniques.” Id. The argument is unpersuasive. The plain reading of the
`Petition is an express reliance of incorporating the database structure of
`Holtzberg into the Abburi device. Pet. 29.
`With regard to the second reason, Petitioner argues that our analysis
`improperly weighs the evidence relevant to obviousness. Req. Reh’g. 8−14.
`
`
`messages are stored temporarily in local memory, until the message is
`delivered to the server for storage there, begging the question of why modify
`Abburi’s centralized storage design to incorporate a local database for
`organizing and retrieving sent messages that are actually stored at the server.
`Pet. 35−37.
`
`4
`
`
`
`IPR2017-00225
`Patent 8,995,433 B2
`
`A request for rehearing is not an opportunity to boost the strength of
`Petitioner’s evidence in light of Petitioner’s disagreement with the analysis
`of that evidence. Petitioner argues that we misapprehended that the Petition
`did not require distribution of a centralized database and that Abburi teaches
`storing a received message at the device. Id. at 11−12. Even if we were to
`agree that Abburi’s device may store a received audio message, that storage,
`alone, is not indicative of whether it would have been desirable to implement
`a “message database” in Abburi’s device. We stated in the Final Written
`Decision that our analysis searches for a reason a person of ordinary skill in
`the art would de-centralize Abburi’s storage of voice messages. Id. at 34.
`Our analysis viewed Abburi as centralizing message storage (message store
`206), even if a recipient is given an option to store a received message
`locally. Id. at 24−26, 34. But the inquiry did not focus only on Abburi’s
`disclosures of local storage versus centralized message storage. Our analysis
`also focused on Holtzberg’s incorporation arguments presented in the
`Petition and the arguments and evidence provided by Patent Owner in
`opposition. Id. at 37 (crediting Patent Owner’s expert testimony regarding
`Holtzberg’s database and noting the weaknesses in Petitioner’s arguments
`with regard to Holtzberg).
`In the end, we were persuaded by Patent Owner’s argument and
`evidence that a person of ordinary skill in the art would not have combined
`Abburi and Holtzberg’s teachings because the benefit of local storage did
`not outweigh the loss of other functionality and design, among other reasons.
`Final Dec. 40. We credited that evidence. Id. (relying expressly on Ex.
`2001 ¶ 54). We also were persuaded that Petitioner’s rationale regarding the
`Holtzberg centralized voicemail database was deficient for failure to explain
`
`5
`
`
`
`IPR2017-00225
`Patent 8,995,433 B2
`
`the redesign necessary to fracture the database and distribute the database
`functions to each user device. Id. at 37 (crediting testimony of Mr. Easttom
`regarding the required overhaul of Holtzberg; PO Resp. 25−26; Ex. 2001
`¶¶ 52−54).
`Finally, Petitioner points out that it provided reasons other than
`improving organization and storage by including a database. Req. Reh’g.
`12–13 (pointing to Ex. 1003 ¶ 89). Petitioner points to additional
`information provided in the Petition regarding the motivation to adopt
`particular elements of the Holtzberg database, namely the unique message
`ID. Pet. 17−18; Ex. 1003 ¶ 89. We do not agree with Petitioner that we
`overlooked this argument. The threshold question for us to decide was
`whether it would have been obvious to incorporate a “message database,”
`i.e., Holtzberg’s voicemail database, into the Abburi device. The issue of
`the unique ID is a further limitation the claims require, once a message
`database is in place. Nevertheless, with regard to the “message database”
`limitation, at pages 25−29 of the Petition, Petitioner did not rely on
`paragraph 89 of the Forys Declaration, as now argued in rehearing.
`Petitioner relied on paragraph 109, which the Final Written Decision fully
`considered. Pet. 25−29; Ex. 1003 ¶ 109; Final Dec. 33−35. Finally, we will
`not reconsider contentions that we have deemed untimely presented, such as
`the rationale of conserving resources and convenience, especially when
`Petitioner previously provided contrary argument—that storage at the central
`server is not “mutually exclusive” of the storage at the client device. Final
`Dec. 38; see also Reply 9-10 (implying that Abburi could employ both a
`local and central database).
`
`6
`
`
`
`IPR2017-00225
`Patent 8,995,433 B2
`
`
`In summary, we have considered Petitioner’s arguments that we
`misapprehended or overlooked arguments and evidence concerning Abburi’s
`disclosures of local storage and the reasons to combine. However, we are
`not persuaded that we misapprehended or overlooked the matters Petitioner
`raises in the Request for Rehearing.
`III. ORDER
`Petitioner’s Request for Rehearing is denied.
`
`7
`
`
`
`IPR2017-00225
`Patent 8,995,433 B2
`
`PETITIONER:
`Apple Inc.
`Jason D. Eisenberg
`Michael D. Specht
`Steven Pappas
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`jasone-ptab@skgf.com
`mspecht-ptab@skgf.com
`spappas-ptab@skgf.com
`
`Facebook, Inc. and WhatsApp, Inc.
`Heidi L. Keefe
`Phillip Morton
`Lisa F. Schwier
`COOLEY LLP
`hkeefe@cooley.com
`pmorton@cooley.com
`lschwier@cooley.com
`
`
`PATENT OWNER:
`
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`ETHERIDGE LAW GROUP
`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`
`Sean D. Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`8
`
`
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