UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LG ELECTRONICS, INC.
`Petitioner
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`v.
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`UNILOC LUXEMBOURG S.A.,
`Patent Owner
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`IPR2017-01427
`U.S. Patent Nos. 8,995,433
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`PATENT OWNER RESPONSE TO PETITIONER’S SUPPLEMENTAL
`CLAIM CONSTRUCTION BRIEF
`PURSUANT TO BOARD’S ORDER
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`I.
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`Responsive Supp. Claim Construction Brief
`U.S. Patent Nos. 8,995,433
`Petitioner LGE admits the claim construction arguments and evidence it
`newly offers has no being on any dispute in this matter
`In its supplemental brief (Paper 42, hereinafter “Br.”), Petitioner LGE admits,
`and Patent Owner Uniloc agrees, that there is no dispute over the term “instant voice
`message” that is ripe for resolution in this matter (IPR2017-01427) challenging
`claims 1-8 of the ’433 Patent. Br. 1; accord Paper 43 (Uniloc’s Supplemental Br.) at
`1. It is well-established that claims “need only be construed to the extent necessary
`to resolve the controversy.” Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355,
`1361 (Fed. Cir. 2011). Because it is undisputed the supplemental briefing ordered in
`this matter is irrelevant to any dispute, it should be afforded no weight here.
`The remainder of LGE’s supplemental brief merely copies (verbatim) from
`the supplemental brief filed by its co-petitioners in related matters IPR2017-01428,
`IPR2017-01667, and IPR2017-01668, with the exception that a few lines and
`citations are missing (presumably to fit the brief in the eight pages allowed).
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`II. LGE’s copying of its co-petitioner’s structure-based claim construction
`theory offered in other matters is refuted by the intrinsic evidence
`LGE first copies the argument that the shared specification of the challenged
`patents allegedly states the “instant voice message” term is directed to a data
`structure, as opposed to data content. Br. 2 (“In every embodiment, the instant voice
`message is a data structure . . . .”). LGE (like its co-petitioners) is dead wrong. The
`specification of the ’433 patent consistently and explicitly identifies the “instant
`voice message” as being “the content.” See, e.g., ’433 patent, 11:41‒45; 14:39‒42;
`21:13‒21. By way of contrast, the contrived and ambiguous couplet “data structure”
`appears nowhere in the specification.
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`1
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`Responsive Supp. Claim Construction Brief
`U.S. Patent Nos. 8,995,433
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`LGE then adopts the concession that in the “record mode” embodiment, “the
`instant voice message is an ‘audio file.”” Id. at 1 (underlining and emphasis added).
`Regardless whether the disclosed “audio file 210” is more accurately characterized
`as “a data structure” or “data content,” the record contains no proof that Zydney
`discloses attaching one or more files to an audio file itself. Indeed, the PTAB has
`repeatedly addressed this same validity challenge and rejected it: “We agreed with
`Patent Owner in [IPR2017-01257, Paper 8 at 18] that the portions of Zydney now
`relied upon by Petitioner as allegedly disclosing this limitation instead disclose
`attaching additional files (e.g., a multimedia file) to a voice container, rather than to
`an audio file.” IPR2017-02085, Paper 11 at 19 (applying a fortiori the conclusion in
`IPR2017-01257) (emphasis added). The admitted lexicographic description of the
`“instant voice message” in the “record mode” embodiment, therefore, only confirms
`that there is no proof of obviousness here.
`LGE next copies the citation to the description of the “intercom mode”
`embodiment. Br. 3 (citing ’433 patent, 21:13‒15 and 21:45-47). LGE (like its co-
`petitioners) overlooks, however, the explicit description (in the very lines cited) that
`the “instant voice message” is “the content of the first buffer” and that only “the
`content . . .” (described as “input audio”) “. . . is automatically transmitted to the
`IVM server 202.” ’433 patent, 21:13‒21 (emphasis added); see also id. 11:41‒45
`(same).1 To the extent one or more files may be attached, therefore, they must be
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`1 To be clear, the specification does not describe the “buffer” as a data structure that
`is transmitted along with the content; and, indeed, the couplet “data structure”
`appears nowhere in the specification. Rather, the buffer is simply a memory location
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`2
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`Responsive Supp. Claim Construction Brief
`U.S. Patent Nos. 8,995,433
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`attached to “the content” that is transferred. Id. This also refutes any reliance on
`Zydney’s “voice container” (which Zydney expressly distinguishes from its “voice
`data” or “message”) for the “attaches” and “attaching” limitations recited in
`independent claims 9 and 27 of the ’433 and ’622 patents, respectively.
`LGE also copies (verbatim) from its co-petitioner’s brief the same collection
`of claim recitations followed by the same conclusory statement, void of any
`explanation or evidentiary support, that the quoted language supports Petitioner’s
`theory. Br. 3‒4. The Board should not be expected to piece together how the quoted
`language allegedly fits into such a theory, nor should the Board raise arguments on
`behalf of a petitioner concerning this language that Petitioner failed itself to
`articulate. In re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016).
`In any event, the newly cited claim language is helpful only to Uniloc. For
`example, that claim 9 of the ’433 recites both “transmitting the instant voice
`message” and “attaches one or more files to the instant voice message” does not
`mean that the attachment must be made to a “data structure” (a couplet that does not
`appear in the specification), as opposed to what the specification consistently
`describes as “the content” that is transmitted. The cited “buffer” feature of the
`dependent claims is also only helpful to Uniloc. Br. 4. Those dependent claims
`explicitly recite, consistent with the written description, that what is transmitted is
`“the content of a first buffer.” See, e.g., ’433 patent, 26:5 (emphasis added).
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`used to temporarily “write successive portions of the instant voice message” to
`facilitate transmitting only the “the content” (i.e., the instant voice message), a
`portion at a time. Id. Petitioner fails to prove otherwise with evidentiary support.
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`3
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`Responsive Supp. Claim Construction Brief
`U.S. Patent Nos. 8,995,433
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`LGE then copies the passing reference to the “message object” embodiment
`of the ’433 patent. Br. 4. As detailed in Uniloc’s opening supplemental brief (see,
`e.g., IPR2017-01427, Paper 43, at §III, pp. 6‒7), that passage teaches that the instant
`voice message is “[t]he content of the object field” and is “carried” by a distinct
`“message object” merely to facilitate communicating with a server. ’433 patent,
`14:39‒42 (emphasis added).2 This explicit distinction between the “message object”
`and the “instant voice message” described as “[t]he content of the object field”
`further confirms Zydney’s “voice container” is distinguishable from the claimed
`“instant voice message” for the “attaches” and “attaching” limitations.
`LGE next repeats the argument that a content-based construction would
`somehow preclude attaching one or more files to the disclosed audio file 210 and
`therefore excludes the “record mode” embodiment. Br. 6. LGE is wrong. As detailed
`above (and in Uniloc’s Br.), the specification teaches that the “instant voice
`message” may be generated at a client as an audio file and then communicated to a
`server as “the content” of an object field of a message object. This appears to be
`undisputed. It follows, under the explicit wording of the written description, that a
`content-based construction would not exclude attaching one or more files to an audio
`file (i.e., the instant voice message in this scenario) expressly described as being “the
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`2 LGE appears to contrast the written description of the “message object”
`embodiment with what is recited in independent claim 3 of the ’622 patent. Br. 4
`(“The claims, however, . . . .”) (emphasis added). Uniloc addressed in its
`supplemental brief why the modifying limitations of claim 3 should not be imputed
`to other independent claims, but rather it is the written description that is controlling
`for the “attaches” and “attaching” limitations recited in claim 9 of the ’433 patent.
`See, e.g., IPR2017-01427, Paper 43, at §III, pp. 6‒7.
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`4
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`Responsive Supp. Claim Construction Brief
`U.S. Patent Nos. 8,995,433
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`content” of the object field. Nevertheless, this scenario is distinguishable from
`Zydney at least because the attachment is made to the audio file itself, which the
`PTAB has repeatedly found Zydney does not disclose.
`Finally, LGE repeats its co-petitioner’s improper attempt to advance the new
`attorney argument, void of any expert testimony support or other citation to
`previously submitted argument and evidence, that Zydney’s voice container is itself
`a “file” that is somehow analogous to the audio file 210 disclosed in the specification
`of the challenged patents (and thus file attachment to Zydney’s voice container is
`purportedly the same as file attachment to the audio file 210 disclosed in the
`challenged patents). Br. 7–8.3 Setting aside the untimeliness of this new and
`unsupported theory, and its utter irrelevance here, it is wrong for the reasons stated
`more particularly in Uniloc’s response to the supplemental claim construction brief
`filed in the related matters.
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`Date: October 1, 2018
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`Respectfully submitted,
`By: /s/ Brett A. Mangrum
`Brett A. Mangrum; Reg. No. 64,783
`Counsel for Patent Owner
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`3 The sole basis for this new adopted theory is unexplained citations to “Fig. 8 (item
`1.2.4), Fig. 7 (item 1.1.5).).” Id. The shorthand text Petitioner focuses on from those
`citations is unavailing because Zydney does not describe its file attachment with
`reference to either ambiguous phrase “the voice container file” or “the file structure
`of the container.” Given that Zydney provides no written description for either block
`1.2.4 or 1.1.5, one can only guess as to whether Zydney is referring to the container
`itself, to a file transported within or attached to the container, or to something else.
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`5
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`Responsive Supp. Claim Construction Brief
`US. Patent Nos. 8,995,433
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that an electronic
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`copy of the foregoing supplemental brief was served via the Patent Review
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`Processing System (PRPS) and/or via email to Petitioners’ counsel of record at the
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`following address:
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`PETITIONERS LEAD COUNSEL
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`PETITIONERS BACK-UP COUNSEL
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`Phillip E. Morton (Reg- No- 57,835)
`pmorton@cooley.com
`zpatdcdocketing@cooley.com
`COOLEY LLP
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`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
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`Heidi L. Keefe (Reg. No. 40,673)
`hkeefe@cooley-com
`zpatdcdocketing@cooley.com
`COOLEY LLP
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`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
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`Washington, DC 20004
`Washington DC. 20004
`Tel: (650) 843-5001
`Tel: (703) 456—8668
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`Fax: 650 849—7400
`Fax: 703 456—8 100
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`Date: October 1, 2018
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`Respectfully submitted,
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`By: /s/ Brett A. Maxim
`Brett A- Mangrum
`Attorney for Patent Owners
`Reg. No. 64,783
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