Trials@uspto.gov
`571-272-7822
`
`
`Paper 42
`Entered: January 17, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC., and WHATSAPP, INC., LG ELECTRONICS, INC.,
`and HUAWEI DEVICE CO., LTD.,1
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01428
`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 PATENT OWNER’S REQUEST FOR REHEARING
`37 C.F.R. § 42.71(d)
`
`
`1 LG Electronics, Inc. and Huawei Device Co., Ltd., filed a Petition and
`Motion for Joinder in IPR2017-02088, which we granted, and therefore, they
`have been joined to IPR2017-01428.
`
`
`571-272-7822
`
`
`Paper 42
`Entered: January 17, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC., and WHATSAPP, INC., LG ELECTRONICS, INC.,
`and HUAWEI DEVICE CO., LTD.,1
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01428
`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 PATENT OWNER’S REQUEST FOR REHEARING
`37 C.F.R. § 42.71(d)
`
`
`1 LG Electronics, Inc. and Huawei Device Co., Ltd., filed a Petition and
`Motion for Joinder in IPR2017-02088, which we granted, and therefore, they
`have been joined to IPR2017-01428.
`
`
`
`IPR2017-01428
`Patent 8,995,433 B2
`
`
`INTRODUCTION
`I.
`On November 30, 2018, the Board issued a consolidated Final Written
`Decision in this proceeding and in IPR2017-01427. Paper 40 (“Final Dec.”).
`In that Final Written Decision, we determined that Petitioner had shown by a
`preponderance of the evidence that claims 1−12, 14−17, 25, and 26 are
`unpatentable. Id. at 97; but see id. at 4 (identifying the challenged claims in
`IPR2017-01428 as claims 9−12, 14−17, 25, and 26 of the ’433 patent). On
`December 30, 2018, Patent Owner filed a Request for Rehearing. Paper 41
`(Req. Reh’g). Patent Owner argues that we engaged in sua sponte claim
`construction and analysis in construing the term “attaches,” recited in claim
`9, and in determining that the prior art teaches the limitation under the
`Board’s construction. Req. Reh’g 3−5. Patent Owner requests that we
`reconsider the Final Written Decision in view of Patent Owner’s argument
`that the Board did not rely on arguments presented and did not invite any
`briefing on the meaning of “attaches.” Id. at 4−5.
`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
`Patent Owner to show we misapprehended or overlooked the matters it
`requests that we review.
`II. ANALYSIS
`Patent Owner acknowledges that it had an opportunity to brief the
`claim construction of “instant voice message,” as that claim term is recited
`in claim 9 of the ’433 patent. Req. Reh’g 4. Patent Owner faults us,
`however, for determining the scope of the phrase “attaches one or more files
`
`2
`
`
`
`IPR2017-01428
`Patent 8,995,433 B2
`
`to the instant voice message” (recited in claim 9). Patent Owner’s
`arguments do not show that we misapprehended or overlooked the issues
`raised in the Request for Rehearing.
`First, the Decision on Institution in this proceeding noted that the
`issue of claim scope was raised in connection with Patent Owner’s
`arguments of attaching one or more files to an “instant voice message.”
`Paper 8, 11−12. Similarly, in our Final Written Decision we noted that
`simply construing “instant voice message,” without more, does not resolve
`the dispute of the parties because Patent Owner raised arguments
`distinguishing the prior art on the basis of “attaching” a file to the data
`content itself. Final Dec. 18. The Board construes terms that resolve the
`dispute of the parties, and “attaches” was one of those terms. Id.; see Nidec
`Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017
`(Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy.”).
`Patent Owner, therefore, had notice of the issues needed to be
`resolved based on its own arguments distinguishing the prior art. More
`significantly, the Petition gave Patent Owner notice of Petitioner’s
`interpretation of the term “attach” as “associate,” and Patent Owner included
`argument regarding “attachments” in its Supplemental Brief on claim
`construction, which we considered. See Final Dec. 20−21 (citing PO
`Supplemental Br. 5, Paper 36 in IPR2017-01427); see also, e.g., Paper 39 in
`IPR2017-01428 (arguing that files must be attached to the content that is
`transferred or to an audio file, but not to the data structure). Thus, Patent
`Owner had an opportunity to refine its position on “attachment” in its Patent
`
`3
`
`
`
`IPR2017-01428
`Patent 8,995,433 B2
`
`Owner Response, to respond to Petitioner’s assertions that “attach” means
`“associate,” and to expand on its position in its Supplemental Brief on claim
`construction, in which Patent Owner continued its arguments that the prior
`art did not disclose the required “attachment.” To be sure, and we
`acknowledge, Patent Owner focused much of its arguments on the term
`“instant voice message.” However, once we resolved the scope of that term,
`the dispute as to the “attaches” limitation was not resolved, especially in
`light of Patent Owner’s arguments attempting to distinguish the prior art
`based on that limitation.
`Second, we are not persuaded by Patent Owner’s argument that other
`Decisions on Institution of the Board in related patents agreed with Patent
`Owner’s narrow characterization of the “attaches” limitation. Req.
`Reh’g 2−3. Those Decisions on Institution are not binding or relevant to this
`proceeding. In the Decision on Institution here, the Board did not agree with
`Patent Owner’s characterization of the “attaches” limitation; nor did the
`Board agree with Patent Owner’s view on the scope of “instant voice
`message.” Paper 8, 11−12. In any event, even if we had agreed with Patent
`Owner in the past on other similarly worded claims in related patents, the
`Board “is not bound by any findings made in its Institution Decision.”
`TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016). After
`reviewing the fully developed record here, the panel addressed the scope of
`the “attaches” limitation, including the nuances of the term “instant voice
`message,” and disagreed with Patent Owner’s view of the “attaches”
`limitation. Final Dec. 18 (“This determination, however, does not resolve all
`the disputes surrounding the term because Patent Owner also argues that
`attaching files to an ‘instant voice message’ must be limited to attachments
`
`4
`
`
`
`IPR2017-01428
`Patent 8,995,433 B2
`
`to the data content itself.”); 74 (stating that Petitioner describes “attachment”
`as “associating” in referring to Zydney’s Figure 6, and in connection with
`Figures 16 and 17).
`Third, regarding Patent Owner’s argument that we sua sponte engaged
`in an analysis where Petitioner did not present the arguments considered, we
`do not agree that we have not followed the holding in In re Magnum Oil
`Tools Int’l, 829 F.3d 1364 (Fed. Cir. 2016). Req. Reh’g 4. We relied on
`Petitioner’s assertion that “attachment” means “associating,” and,
`accordingly, we, in rendering the Final Written Decision, did not consider
`argument that was not presented.
`Finally, Patent Owner’s request for rehearing fails to show that we
`misapprehended or overlooked any of Patent Owner’s evidence or
`arguments or that our construction for the term “attaches” is incorrect in any
`way and requires reconsideration and correction. In sum, we do not agree
`with Patent Owner’s contention that our construction of the “attaches”
`limitation is improper or that Patent Owner did not have an opportunity to
`brief the issue in light of the developed record.
`III. ORDER
`Patent Owner’s Request for Rehearing is denied.
`
`
`
`5
`
`
`
`IPR2017-01428
`Patent 8,995,433 B2
`
`For PETITIONER:
`
`Heidi L. Keefe
`Phillip E. Morton
`COOLEY LLP
`hkeefe@cooley.com
`pmorton@cooley.com
`
`
`David Garr
`Gregory Discher
`COVINGTON & BURLING
`dgarr@cov.com
`gdischer@cov.com
`
`Anand Sharma
`Minjae Kang
`Joshua Goldberg
`Bradford Shulz
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P
`Anand.sharma@finnegan.com
` Minjae.kang@finnegan.com
`Joshua.goldberg@finnegan.com
`Bradford.shulz@finnegan.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
`
`
`6
`
`
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