UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
`
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`FACEBOOK, INC., WHATSAPP INC., and LG ELECTRONICS, INC.,
`Petitioners
`
`v.
`
`UNILOC USA, INC., UNILOC LUXEMBOURG, S.A.,
`Patent Owners
`
`Case IPR2017-01427
`U.S. Patent No. 8,995,433
`
`TITLE: SYSTEM AND METHOD FOR INSTANT VOIP MESSAGING
`____________________
`
`PETITIONERS’ REPLY
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`
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`
`
`____________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`
`FACEBOOK, INC., WHATSAPP INC., and LG ELECTRONICS, INC.,
`Petitioners
`
`v.
`
`UNILOC USA, INC., UNILOC LUXEMBOURG, S.A.,
`Patent Owners
`
`Case IPR2017-01427
`U.S. Patent No. 8,995,433
`
`TITLE: SYSTEM AND METHOD FOR INSTANT VOIP MESSAGING
`____________________
`
`PETITIONERS’ REPLY
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`
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`
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`I.
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`II.
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`III.
`
`Contents
`Nothing in Section 315 or any of the papers filed in this proceeding
`prevents LG Electronics from maintaining this proceeding. ........................... 2
`A.
`Judicial estoppel does not apply. ........................................................... 3
`B.
`LG is not the real-party-in-interest to the Facebook petition nor
`are Facebook and LG in privity............................................................. 4
`The Board need not construe “instant voice messaging application”
`and “client platform system.” .......................................................................... 6
`Independent claims 1 and 6 ............................................................................. 7
`A.
`The combination of Zydney and Clark renders the “message
`database” obvious. ................................................................................. 7
`The combination of a “message database” and a “database
`record” ................................................................................................... 9
`1.
`The claims do not require a single database record that
`includes both the message data and the unique identifier......... 10
`Rather than teach away, Clark discloses a database record
`with both message data and a unique identifier. ....................... 11
`The combination of Zydney and Clark is proper. ............................... 15
`The combination of Zydney and Clark renders the claimed “file
`manager system” obvious. ................................................................... 15
`IV. Dependent Claim 7 ........................................................................................ 18
`V. Dependent Claim 8 ........................................................................................ 20
`VI. Conclusion ..................................................................................................... 21
`
`
`B.
`
`C.
`D.
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`2.
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`
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`i
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`Nothing in Uniloc’s patent owner response suggests that its claims should
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`Petitioners’ Reply
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`
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`remain patentable. In fact, despite the Board’s Institution decision, Uniloc copied
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`most of its patent owner response from its preliminary response. Those arguments
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`are still unpersuasive for the same reasons previously noted by the Board. And
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`each of Uniloc’s present arguments continue to either ignore the parts of the record
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`and pleadings that contradict its positions, present inaccurate or misleading
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`statements of fact to create a problem where none exists, or rely on legal
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`conclusions devoid of the necessary analysis to develop them. And in some
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`instances, they are a combination of all three. Worse still, Uniloc attempts to
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`preserve all issues via a categorical denial in a footnote. Patent Owner Response
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`(“POR”), 43. But that cannot save them from waiver because “[i]t is well
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`established that arguments that are not appropriately developed in a party’s
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`briefing may be deemed waived.” United States v. Great Am. Ins. Co., 738 F.3d
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`1320, 1328 (Fed. Cir. 2013).1
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`1 See also Scheduling Order, paper 9, 3 (“caution[ing] that any arguments for
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`patentability not raised in the response will be deemed waived.”); Milo & Gabby
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`LLC v. Amazon.com, Inc., 693 F. App'x 879, 891 (Fed. Cir.), cert. denied, 138 S.
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`Ct. 335, 199 L. Ed. 2d 214 (2017) (non-precedential) (finding waiver because the
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`issue was only raised in a “conclusory and passing reference”); SmithKline
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`1
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`
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`I.
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`IPR2017-01427
`Petitioners’ Reply
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`Nothing in Section 315 or any of the papers filed in this proceeding
`prevents LG Electronics from maintaining this proceeding.
`Uniloc makes several assertions based on different doctrines, but none
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`suggests that LG should be barred here. As an initial matter, the Board ordered the
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`parties to brief this issue in a separate paper. Institution Decision (“ID”), paper 8,
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`29. Despite Facebook2 raising LG’s ability to continue the case in that briefing,
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`Paper 11, 5, Uniloc chose to remain silent on the matter, see Paper 12. The Board
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`found that LG could maintain this proceeding despite finding the Facebook
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`petitioners could not, and nothing in Uniloc’s patent owner’s response justifies a
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`different result. As noted in the Trial Practice Guide, estoppel analysis is extended
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`to real-parties-in-interest and privies to prevent parties from having a ‘‘second bite
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`at the apple.’’ 77 Fed. Reg. 157, 48759. But this proceeding is LG’s first bite at the
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`apple—LG elected not to join the IPR creating estoppel for Facebook. Indeed,
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`Uniloc does not allege that LG is a real-party-in-interest or a privy with respect to
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`the IPR creating estoppel. Instead, Uniloc asserts two theories on how LG could be
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`estopped.
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`Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006)
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`(“arguments raised in footnotes are not preserved”).
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`2 We refer to Facebook and WhatsApp collectively as Facebook.
`2
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`
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`A.
`Judicial estoppel does not apply.
`Uniloc’s judicial estoppel argument is based on two false premises and
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`Petitioners’ Reply
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`ignores a portion of the test provided in its footnote. Each of these provides an
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`independent reason why Uniloc’s argument fails.
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`The first premise of Uniloc’s argument—that LG “unequivocally
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`represent[ed] that it would be bound by a single Board decision and would ‘not
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`advance any arguments separate from those advanced by the Facebook Petitioner
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`in the consolidated filings,’” POR, 9 (emphasis added)—is false. Uniloc’s
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`argument ignores the context of the joinder motion. First, LG stated that “a single
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`Board decision may dispose of the issues raised in the Facebook IPR.” Motion for
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`Joinder (“Joinder Mot.”), IPR2017-02087, paper 3, 2 (emphasis added). Second,
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`LG called out that it would take over briefing in Facebook’s absence. Id., 2, 8.
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`Similarly, the second premise of Uniloc’s argument—that LG agreed to have
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`its interest represented by Facebook—is also false. POR, 9-10. Instead, the motion
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`states that LG’s “interests may not be adequately protected in the Facebook IPR
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`proceedings, particularly if the Facebook Petitioner settles with the Patent Owner,”
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`and that “[t]heir substantial interests, as parties against whom the ’433 patent has
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`been asserted in a federal district court action, may not be adequately protected by
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`the Facebook Petitioner in the Facebook IPR proceedings.” Joinder Mot., 3, 8.
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`
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`3
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`
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`Finally, Uniloc does not address one of the factors provided in the caselaw it
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`IPR2017-01427
`Petitioners’ Reply
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`
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`cites—“the previous court must have accepted the party’s earlier position.” POR,
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`9. First, Uniloc does not explain why the same panel should be considered a
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`“previous court.” Second, Uniloc does not explain how the Board accepted LG’s
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`position. Instead of limiting LG’s role to what Uniloc asserts, the Board’s order
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`allowed for non-consolidated briefing and did not limit LG to only adopting
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`Facebook’s arguments: “[a]ll filings by the Petitioner entities in IPR2017-01427
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`will be consolidated and no filing by Petitioner alone will be allowed without prior
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`authorization by the Board.” Joinder Order, p. 12.
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`B.
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`LG is not the real-party-in-interest to the Facebook petition nor
`are Facebook and LG in privity.
`Uniloc argues that LG is Facebook’s real-party-in-interest or privy simply
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`because it joined the Facebook IPR. POR, 9-10. Uniloc points to no case,
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`regulation, or statute that supports its theory. Indeed, the Trial Practice Guide
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`counsels otherwise, describing the history of not providing ridged rules and instead
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`favoring a case-by-case analysis. Moreover, the only case Uniloc cites suggests
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`that LG is not estopped simply because Facebook is. Specifically, Uniloc cites
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`Kofax, Inc. v. Uniloc USA, Inc., IPR2015-01207. In that case, a first petition was
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`filed by Kofax and a second petition was filed by Ubisoft, Zebra, Cambium, and
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`4
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`
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`Sega requesting joinder with the first petition3. Paper 22, 11. Kofax was estopped
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`Petitioners’ Reply
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`under 315(e)(1) based on a final written decision in an earlier petition. Id., 11. And
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`Zebra’s co-petitioners for the second petition were also estopped for the same
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`reasons. Id. Here, the relationship between Facebook and LG is most like the
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`relationship between Kofax and Zebra, not the relationship between Ubisoft,
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`Cambium, Sega, and Zebra. But Zebra was not estopped because of its relationship
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`with Kofax; Zebra was only estopped because of its relationship with its co-
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`petitioners, Ubisoft, Cambium, and Sega, at whose behest the Zebra petition was
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`filed. Id., 10. Accordingly, the Kofax case suggests that a party is not estopped
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`simply because it requested joinder.
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`Uniloc’s arguments also ignore the other guidance from the Trial Practice
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`Guide regarding real-party-in-interest and privity. The Trial Practice Guide advises
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`that the ‘‘real party-in-interest may be the petitioner itself, and/or it may be the
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`party or parties at whose behest the petition has been filed.” 77 Fed. Reg. 157,
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`48759. The Trial Practice Guide also points to who “funds and directs and
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`controls” as being the pertinent factual considerations for real-party-in-interest and
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`privity. Id., 48760. But Uniloc addresses none of these. POR, 9-11.
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`3 Zebra was also time-barred for filing its petition without joinder, which is not the
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`case here.
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`5
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`
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`Nothing suggests that Facebook is a real-party-in-interest to the joined LG
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`IPR2017-01427
`Petitioners’ Reply
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`
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`petition or that Facebook and LG are in privity. LG did not file the petition jointly
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`with Facebook. Instead, LG filed its own petition after Facebook filed its own
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`petition. Accordingly, each party filed its own petition at its own behest. There is
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`no agreement between LG and Facebook regarding these IPRs. And, as stated in
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`the Board’s order, Facebook has no control over what LG does regarding the
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`claims for which Facebook is estopped.
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`II. The Board need not construe “instant voice messaging application” and
`“client platform system.”
`The petition proposes constructions for two elements that Uniloc disputes:
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`“instant voice messaging application” and “client platform system.” POR, 16-20.
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`Uniloc argues that each element only covers software (and not hardware) and that
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`the petition mapping fails because it maps the elements to hardware. Id.
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`The petition, however, maps each element to software. For the “instant voice
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`messaging application,” the petition states “[t]he “instant voice messaging
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`application” in Zydney takes the form of software (including a software
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`agent) . . . .” Pet. 29 (original emphasis omitted) (emphasis added). For the “client
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`platform system,” the petition states “the ‘client platform system’ of claim 1 is
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`disclosed by the portions of the software agent in Zydney responsible for capturing
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`
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`6
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`
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`the recorded voice and processing it into a voice container file.” Pet. 32 (emphasis
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`added).
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`Accordingly, because the petition maps the elements to software and
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`because the parties agree that the broadest reasonable construction requires nothing
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`more than software, Uniloc is correct that the Board need not construe these claim
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`terms. But Uniloc is incorrect that the petition failed to prove obviousness of these
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`elements.
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`III.
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`Independent claims 1 and 6
`A. The combination of Zydney and Clark renders the “message
`database” obvious.
`Independent claims 1 and 6 each recite a message database. Claim 1 recites
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`“a message database storing the instant voice message.” And claim 6 recites
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`“storing, deleting and retrieving the instant voice messages from a message
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`database.”
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`The petition combines Zydney and Clark to teach the claimed message
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`database. It points to Zydney’s local storage of instant voice messages in voice
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`containers by an instant voice messaging application. Pet. 39-42. It then relies on
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`Clark to disclose a “database structure that provides temporary or permanent
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`storage for the contained messages 22.” Pet. 43 (quoting Clark, 9:11-15) (emphasis
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`omitted). It explains that the “database can also be located on a client system.” Id.
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`
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`7
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`
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`For example, Figure 4A shows an embodiment in which “a user’s computer 18
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`Petitioners’ Reply
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`contains the message client 27 and message store 23.” Id. (citing Clark, 10:27-33,
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`Fig. 4A). And it further explains that the “message database system in Clark ‘can
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`be applied to organizing any sort of electronic messages which are to be
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`temporarily or permanently stored,’ including ‘instant messages,’ ‘voice mail
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`messages,’ or any other present or future types of electronic messages, which may
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`include attachments.” Pet. 43 (quoting Clark, 3:31-44) (emphasis omitted)
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`(underline added). Accordingly, the premise of Uniloc’s argument—that, “[a]t
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`most, Clark makes passing reference to voicemail messages,” POR, 21—is false.
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`Uniloc argues that Clark lacks a database storing instant voice messages.
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`POR, 21. But it is textbook that “[o]ne cannot show nonobviousness by attacking
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`references individually where the rejections are based on combinations of
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`references.” M.P.E.P. § 2145 (citing In re Keller, 642 F.2d 413 (CCPA 1981); In
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`re Merck & Co., Inc., 800 F.2d 1091 (Fed. Cir. 1986)). Accordingly, Uniloc’s
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`attack on Clark singularly—without addressing Zydney’s disclosure of “instant
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`voice messages,” despite Clark’s explicit recognition that its system can be applied
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`to “other present or future types of electronic messages”—fails.
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`Uniloc also argues that the petition makes no attempt to establish that
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`Clark’s database is part of the client-side instant voice messaging application.
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`POR, 21-22. But the Petition includes a paragraph explaining that Clark’s
`8
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`
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`“database can also be located on a client system.” Pet. 43. Accordingly, Uniloc’s
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`argument fails.
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`For these reasons and the reasons set forth in the petition, the Board should
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`reject Uniloc’s argument and find that the combination of Zydney and Clark
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`discloses and renders obvious the claimed “message database.”
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`B.
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`The combination of a “message database” and a “database
`record”
`In addition to the claimed message database, claim 1 (but not claim 6) also
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`requires a “database record.” Specifically, claim 1 recites “the instant voice
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`messaging application includes a message database storing the instant voice
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`message, wherein the instant voice message is represented by a database record
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`including a unique identifier.”
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`Uniloc argues that Clark’s database lacks a record with both the instant
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`voice message and the unique identifier and that Clark teaches away from such a
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`combination. Id., 22-26. For these arguments to matter, two things must be true.
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`First, the claims must include such a requirement. And second, Clark cannot
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`disclose a database record with both message data and a unique identifier. Neither
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`is true, so Uniloc’s arguments fail for two independent reasons.
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`9
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`IPR2017-01427
`Petitioners’ Reply
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`1.
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`The claims do not require a single database record that
`includes both the message data and the unique identifier.
`Uniloc’s construction is overly narrow. First, the plain language of the claim
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`leaves open what database (i.e., the message database or some other database) the
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`record is associated with because the claim recites “a database record,” not “a
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`record of the database.” Second, even assuming the claims require the record with
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`the unique identifier and the instant voice message be in the same database, that
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`does not require that the instant voice message and the unique identifier are in the
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`same record. They are not required to be in a single record because, as Uniloc
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`points out, databases can include multiple, distinct tables, each having its own
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`distinct set of records.4 POR, 25. Accordingly, the instant voice message and
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`unique identifier can be in the same database without being in the same record.
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`Uniloc’s citations to the specification and expert testimony do not change
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`the plain language of the claim. Even under Phillips, narrower language in the
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`specification and expert testimony cannot trump the plain meaning of the claim
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`4 Uniloc’s unsupported allegation that a record cannot span multiple tables or
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`databases is false. For example, table 202 of U.S. Patent No. 6,882,993 to Oracle
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`provides an example of database records that span multiple tables. EX1018, 1:34-
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`2:55, Figs. 1 and 2.
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`10
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`
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`language. Phillips v. AWH Corp., 415 F.3d 1303, 1318, 1323 (Fed. Cir. 2005). This
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`Petitioners’ Reply
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`is particularly true here, where the narrower language identified by Uniloc is not
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`the only relevant part of the specification. To the contrary, there is also an express
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`disclaimer suggesting the claims should not be limited to the embodiment
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`described in the specification. EX1001, 23:58-63. Moreover, even if this express
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`disclaimer did not exist, Uniloc’s single example of narrower language would still
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`be insufficient to limit the claim beyond its plain meaning. Id. at 1323. Uniloc’s
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`expert testimony changes nothing because its question (and thus the answer) was
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`ambiguous (not identifying whether it is referring to the database in the term
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`“database record” or the separately recited “message database”). Indeed, the
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`question was objectionable as confusing for this exact reason. EX2003, 88:25-89:6.
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`Accordingly, the Board should not deviate from the plain language of the claim.
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`2.
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`Rather than teach away, Clark discloses a database record
`with both message data and a unique identifier.
`As Dr. Lavian testified, “Clark discloses that each electronic message in the
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`message store 23 is represented by a database record including a unique identifier.”
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`EX1002, ¶ 216, Pet. 48. Applying its proposed construction to argue Clark teaches
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`away from the claims, Uniloc argues that Clark discloses “Message table 54 where
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`the message data is stored” and that that table is separate from the
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`MessageSummary table 52, which includes the StoreMessageID identified in the
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`11
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`
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`petition as corresponding to the claimed unique identifier. POR, 23-25. But Uniloc
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`ignores the other element of Message table 54: the StoreMessageID (when the
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`store is separate) or the corresponding MessageID (when the store is integrated), as
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`discussed in detail below:
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`Fig. 5A
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`Fig. 5B
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`
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`Accordingly, the very section of Clark Uniloc discusses discloses what Uniloc
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`argues is missing from the claims under its construction—a record with both the
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`instant voice message and the unique identifier.
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`As Uniloc notes, the petition “cite[s] to Fig. 5A of Clark and its associated
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`description as allegedly disclosing the claimed “database record.” POR, 23-24
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`(citing Pet. 48-49). Specifically, the petition mapped the unique identifier to the
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`StoreMessageID the message store server generates when adding a message to a
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`message store. Pet. 48 (citing Clark, 11:50-54). Fig. 5A shows the StoreMessageID
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`as the primary key of the message table 54 in the message store 23 and the foreign
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`key (“FK”) 52A of the message summary table of the catalog. Accordingly,
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`12
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`catalog server can use the StoreMessageID (and the StoreID) to send requests to
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`Petitioners’ Reply
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`the message store to read a message.
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`Uniloc also acknowledges that the petition at 49 “notes that the catalog
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`database 28 and the message store 23 of Clark can be combined, as in Fig. 5B.”
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`POR. 25. Because there is only one store, Fig. 5B omits the StoreID and
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`13
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`StoreMessageID in the MessageSummary table and replaces StoreMessageID with
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`MessageID in the Message table:
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`For these reasons and the reasons set forth in the petition, the Board should
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`reject Uniloc’s argument and find that the combination of Zydney and Clark
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`discloses and renders obvious the combination of the claimed “message database”
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`and “database record.”
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`14
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`C. The combination of Zydney and Clark is proper.
`Save a slight modification to the first sentence, the patent owner response
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`includes an exact copy of the arguments Uniloc presented in its preliminary
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`response regarding messages being deleted once they are sent to the server.
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`Compare POR, 27-29 with Patent Owner’s Preliminary Response (“POPR”), 17-
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`19. The Board rejected these arguments because:
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`Although Zydney deletes the sent message from the
`temporary storage, Patent Owner does not show any
`disclosure in Zydney that would teach away from seeking
`and achieving the use and purpose of Clark’s message
`store. The disclosure in Zydney of a “reserved temporary
`storage” does not teach away from using a different
`storage altogether (a message store) or from the purposes
`disclosed in Clark for storing and cataloging messages on
`a more persistent basis.
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`Institution Decision (“ID”)., 23. The Board was correct. Moreover, Clark expressly
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`discloses that its system can be used for temporary storage. Pet. 43 (citing Clark,
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`9:11-15).
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`D. The combination of Zydney and Clark renders the claimed “file
`manager system” obvious.
`The patent owner response includes an exact copy of the arguments Uniloc
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`presented in its preliminary response regarding the claimed “file manager system.”
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`15
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`
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`Compare POR, 30-35 with POPR, 20-26. The Board rejected these arguments
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`Petitioners’ Reply
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`because:
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`As stated above, we understand Petitioner’s argument to
`rely on teachings of Clark storing sent and received
`messages in the message store. Pet. 52. Further, we note
`that claim 6 does not require any particular location for
`the “message database,” and, therefore, Clark’s message
`store need not be located strictly at the sending device as
`Patent Owner argues. Nevertheless, because Clark stores
`sent messages in the message store, we understand
`Petitioner to have mapped the claims to a sending device
`retrieving the stored messages. Finally, Petitioner has
`shown that Clark contemplates operations of adding and
`deleting a message at the request of a user. Pet. 52 (citing
`Ex. 1008, 18:25−29). Accordingly, Patent Owner’s
`arguments that Clark only shows component-to-
`component requests, and not “user requests,” is
`unpersuasive.
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`ID. at 25-26. In addition, the Board correctly noted Uniloc’s arguments
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`“concerning ‘plural’ instant voice messages are underdeveloped and does not
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`provide sufficient reasoning for the deficiencies that are alleged.” Id., 25. Nothing
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`has changed.
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`16
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`
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`Uniloc does not support its argument concerning “plural” instant voice
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`IPR2017-01427
`Petitioners’ Reply
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`
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`messages because it cannot. First, Uniloc’s previously proposed construction—that
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`the claimed file manager system means a “system that services requests regarding
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`files”—does not require storing, deleting and retrieving multiple messages in
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`response to a user request. Ex. 1011, 19-20. And Uniloc does not explain why the
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`claims should be interpreted more narrowly now. Second, the language in the
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`specification that supports the claim element and that Uniloc cited to support its
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`construction is consistent with Clark. Specifically, the ’433 specification discloses
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`“file manager 308 services requests from the user to record, delete or retrieve
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`messages to/from the message database 310.” Ex. 1001, 12:40-42. As discussed in
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`the petition, Clark similarly discloses a message store server that services request
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`from users to add, delete, and view messages. Pet. 52-54 (citing Clark, 8:65-9:1,
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`9:17-19, 18:25-29, Fig. 6). Third, Uniloc’s argument is not based on the actual
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`claim language. Instead, Uniloc’s quotation of the claim language omits the word
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`“the” before “instant voice messages” in the claim language. Prior to that element,
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`the claim only refers to an “instant voice message” in the singular form.
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`Moreover, the Board should deem Uniloc’s plural messages argument to
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`have been waived. The Board previously noted that Uniloc’s argument was
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`incomplete. ID. at 25. But rather than take the Board’s invitation to further develop
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`the argument, Uniloc simply repeated the argument identified as incomplete with
`17
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`nothing new. That warrants finding the argument to have been waived. See supra.
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`Petitioners’ Reply
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`at p. 1.
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`For these reasons and the reasons set forth in the petition, the Board should
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`reject Uniloc’s arguments and find that the combination of Zydney and Clark
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`discloses and renders obvious the claimed “file manager system.”
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`IV. Dependent Claim 7
`Uniloc’s arguments for claim 7 depend on an erroneous, narrow claim
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`interpretation. It contends that claim 7 requires the “ability to select and message
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`an unavailable recipient.” POR, 39; see also id., 36-41. But as the Board correctly
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`observed, claim 7 recites no such requirement. ID., 27-28. Instead, it recites that
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`the IVM application “displays a list of one or more potential recipients” (claim 1)
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`and “displays an indicia for each of the one or more potential recipients indicating
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`whether the potential recipient is currently available to receive an instant voice
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`message” (dependent claim 7). Nothing in the claim language recites or requires
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`the capability to select a recipient that is currently unavailable or transmit a
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`message to a recipient that is currently unavailable.
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`This erroneous claim construction is Uniloc’s only basis for disputing that
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`the combination of Zydney and Appelman discloses the claim limitations. In
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`particular, Zydney discloses displaying a list of potential recipients for an instant
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`voice message, and Appelman further discloses indicia (e.g., “IN”) for each
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`18
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`potential recipient indicating whether the potential recipient is currently available
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`IPR2017-01427
`Petitioners’ Reply
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`to receive a message. Pet., 65-67. The combination is simple and straightforward—
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`the instant voice messaging system of Zydney, enhanced by the “buddy list” of
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`Appelman displaying indicia indicating availability or unavailability (“IN” or
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`“OUT”). Id.
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`Even adopting Uniloc’s construction, the combined teachings of Zydney and
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`Appelman disclose the claim limitations. Zydney discloses the ability to transmit
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`instant voice messages to potential recipients who are online or offline. Pet., 64-65
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`(Zydney describes “alternative ways to communicate with the recipient” depending
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`on the recipient’s online or offline status). Zydney also discloses displaying a list
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`of the potential recipients, each of whom may be online or offline. See id.
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`Appelman discloses a buddy list including the display indicia of each potential
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`recipient’s availability (e.g., “IN” or “OUT”). Id., 65-67. Thus, as stated in the
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`Petition, the combination would result in Zydney’s system where “the software
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`agent displaying the list of recipients also displays an indication as to whether each
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`potential recipient is currently available to receive an instant voice message (e.g.,
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`“IN” or “OUT”). Id., 67. In other words, in the combined instant voice messaging
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`system, the sender would see a list of potential recipients as taught by Zydney with
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`indicia for each recipient (e.g., “IN” or “OUT”) as taught by Appelman and could
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`select any of the potential recipients to transmit a message. Uniloc cannot rebut
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`Petitioners’ evidence of obviousness by only attacking the references individually,
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`IPR2017-01427
`Petitioners’ Reply
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`instead of addressing the combined teachings Petitioners rely upon. M.P.E.P.
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`§ 2145 (citing In re Keller, 642 F.2d 413; In re Merck & Co., Inc., 800 F.2d 1091).
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`V. Dependent Claim 8
`For claim 8, the Patent Owner Response includes an exact copy of the
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`arguments Uniloc presented in its Preliminary Response. Compare POR, 41-21
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`with POPR, 33-34. The Board rejected these arguments because Uniloc’s
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`“argument that a visual display of received messages is not a ‘visual effect,’
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`because the display is not an immediate alert, is an argument not commensurate
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`with the scope of claim 8.” ID, p. 28. The Board gave Uniloc the “opportunity to
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`develop further its claim construction position regarding claim 8 during trial.” Id.
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`But Uniloc declined to do so. See POR, 41-21.
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`Uniloc does not explain why any of the cited sections of the patent require a
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`visual effect. Like the claim language, each of the cited specification sections is
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`silent regarding timing of the audible or visual effect. See EX1001, 8:33-36
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`(“display an indication”), 10:8-11 (same), 10:53-56 (same), 17:31-34 (same),
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`18:19-21 (same).5 Because Uniloc’s premises its only argument on a construction
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`5 EX1001, 9:9-11 and 9:50-54 are unrelated to the claimed indicating.
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`narrower than the disclosure Uniloc relies upon for support, the Board should
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`IPR2017-01427
`Petitioners’ Reply
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`reject this argument and find claim 8 unpatentable.
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`VI. Conclusion
`For the reasons discussed above and the reasons in the petition, the Board
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`should find that it is more likely than not that the claims are unpatentable based on
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`the grounds presented in the petition.
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`Date: June 15, 2018
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`Respectfully submitted,
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`/Joshua L. Goldberg/
`Joshua L. Goldberg
`Reg. No. 59,369
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`Counsel for LG Electronics
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`IPR2017-01427
`Petitioners’ Reply
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`CERTIFICATE OF COMPLIANCE
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`Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies that the foregoing
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`PETITIONERS’ REPLY, exclusive of the parts exempted as provided in 37
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`C.F.R. § 42.24(a), contains 4,111 words and therefore complies with the type-
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`volume limitations of 37 C.F.R. § 42.24(b).
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`Date: June 15, 2018
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`Respectfully submitted,
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`/Joshua L. Goldberg/
`Joshua L. Goldberg
`Reg. No. 59,369
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`Counsel for LG Electronics
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`CERTIFICATE OF SERVICE
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`IPR2017-01427
`Petitioners’ Reply
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`Pursuant to 37 C.F.R. § 42.6(e), I, Lauren K. Young, certify that on June 15,
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`2018, a copy of PETITIONERS’ REPLY was served this date on the Patent
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`Owner’s counselors of record by email as follows:
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`Brett Mangrum
`brett@etheridgelaw.com
`James Etheridge
`jim@etheridgelaw.com
`Jeffrey Huang
`jeff@etheridgelaw.com
`ETHERIDGE LAW GROUP
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`Sean D. Burdick
`sean.burdick@unilocusa.com
`UNILOC USA, INC.
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`By: /Lauren K. Young/
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`Dated: June 15, 2018
` Lauren K. Young
` Litigation Legal Assistant
` FINNEGAN, HENDERSON, FARABOW,
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`GARRETT & DUNNER, L.L.P.
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