throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 9
`
`
`
` Entered: March 6, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC. and HUAWEI DEVICE CO., LTD.,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-02088
`Patent 8,995,433 B2
`____________
`
`
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108,
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`

`

`IPR2017-02088
`Patent 8,995,433 B2
`
`
`I.
`
`INTRODUCTION
`
`LG Electronics, Inc. and Huawei Device Co., Ltd. (collectively,
`
`“Petitioner”) filed a Petition requesting inter partes review of claims 912,
`
`1417, 25, and 26 of U.S. Patent No. 8,995,433 B2 (“the ’433 patent”).
`
`Paper 2 (“Pet.”). Petitioner also filed a Motion for Joinder seeking joinder
`
`as petitioners with Facebook, Inc. and WhatsApp Inc. (collectively,
`
`“Facebook 1428 Petitioner”) in Facebook, Inc. v. Uniloc Luxembourg S.A.,
`
`Case No. IPR2017-01428 (the “Facebook IPR”). Paper 3 (“Joinder
`
`Motion”). Uniloc Luxembourg S.A. (“Patent Owner”) filed a Preliminary
`
`Response. Paper 7 (“Prelim. Resp.”). Patent Owner did not file an
`
`opposition to the Motion for Joinder.
`
`We have authority under 35 U.S.C. § 314. Upon considering the
`
`information presented in the parties’ papers, for reasons discussed below, we
`
`institute inter partes review of claims 912, 1417, 25, and 26 of the
`
`’433 patent and grant Petitioner’s Motion for Joinder.
`
`A. Related Matters
`
`The parties indicate that the ’433 patent is involved in Uniloc USA,
`
`Inc. v. LG Electronics U.S.A., Inc., Case No. 2-16-cv-00991-JRG (E.D.
`
`Tex.) and Uniloc USA, Inc. v. Huawei Device USA, Inc., Case No. 2:16-cv-
`
`00994-JRG (E.D. Tex.). Pet. 12. The ’433 patent also is the subject of
`
`Case IPR2017-00225 (filed by Apple Inc.), in which we instituted inter
`
`partes review on May 25, 2017, and Cases IPR2017-01427 and
`
`IPR2017-01428 (filed by Facebook, Inc., and WhatsApp Inc.), in which we
`
`2
`
`

`

`IPR2017-02088
`Patent 8,995,433 B2
`
`instituted inter partes review on December 4, 2017. See Paper 5. In
`
`addition, LG Electronics has filed another petition and motion for joinder in
`
`IPR2017-02087, where joinder is sought in connection with IPR2017-01427.
`
`B. The ’433 Patent
`
`The ’433 patent relates to Internet telephony, and more particularly, to
`
`instant voice over IP (“VoIP”) messaging over an IP network, such as the
`
`Internet. Ex. 1101, 1:1923. The ’433 patent acknowledges that “instant
`
`text messaging is . . . known” in the VoIP and public switched telephone
`
`network (“PSTN”) environments, with a server presenting the user a “list of
`
`persons who are currently ‘online’ and ready to receive text messages on
`
`their own client terminals.” Id. at 2:3542. In one embodiment, such as
`
`depicted in Figure 2 (reproduced below), the system of the ’433 patent
`
`involves an instant voice message (“IVM”) server and IVM clients. Id. at
`
`7:2122.
`
`3
`
`

`

`IPR2017-02088
`Patent 8,995,433 B2
`
`
`
`
`Figure 2 illustrates IVM client 206 interconnected via network 204 to
`
`local IVM server 202, where IVM client 206 is a VoIP telephone, and where
`
`legacy telephone 110 is connected to legacy switch 112 and further to media
`
`gateway 114. Id. at 7:2749. The media gateway converts the PSTN audio
`
`signal to packets for transmission over a packet-switched IP network, such
`
`as local network 204. Id. at 7:4953. In one embodiment, when in “record
`
`mode,” the user of an IVM client selects one or more IVM recipients from a
`
`list. Id. at 8:25. The IVM client listens to the input audio device and
`
`records the user’s speech into a digitized audio file at the IVM client. Id. at
`
`8:1215. “Once the recording of the user’s speech is finalized, IVM
`
`client 208 generates a send signal indicating that the digitized audio file 210
`
`4
`
`

`

`IPR2017-02088
`Patent 8,995,433 B2
`
`(instant voice message) is ready to be sent to the selected recipients.” Id. at
`
`8:1922. The IVM client transmits the digitized audio file to the local IVM
`
`server, which, thereafter, delivers that transmitted instant voice message to
`
`the selected recipients via the local IP network. Id. at 8:2526. Only the
`
`available IVM recipients, i.e., those recipients who are currently connected
`
`to the IVM server, will receive the instant voice message. Id. at 8:3638. If
`
`a recipient “is not currently connected to the local IVM server 202,” the
`
`IVM server temporarily saves the instant voice message and delivers it to the
`
`IVM client when the IVM client connects to the local IVM server (i.e., is
`
`available). Id. at 8:3843.
`
`The ’433 patent also describes an “intercom mode” of voice
`
`messaging. Id. at 11:3437. The specification states that the “intercom
`
`mode” represents real-time instant voice messaging. Id. at 11:3738. In this
`
`mode, instead of creating an audio file, one or more buffers of a
`
`predetermined size are generated in the IVM clients or local IVM servers.
`
`Id. at 11:3841. Successive portions of the instant voice message are
`
`written to the one or more buffers, which, as they fill, automatically transmit
`
`their content to the IVM server for transmission to the one or more IVM
`
`recipients. Id. at 11:4146. Buffering is repeated until the entire instant
`
`voice message has been transmitted to the IVM server. Id. at 11:4659.
`
`5
`
`

`

`IPR2017-02088
`Patent 8,995,433 B2
`
`
`C. Independent Claim
`
`Of the challenged claims, claim 9 is independent and is reproduced
`
`below. Each of claims 1012, 1417, 25, and 26 depends directly or
`
`indirectly from claim 9.
`
`9. A system comprising:
`
`an instant voice messaging application comprising:
`
`a client platform system for generating an instant voice message;
`
`a messaging system for transmitting the instant voice message
`over a packet-switched network, and
`
`wherein the instant voice message application attaches one or
`more files to the instant voice message.
`
`Ex. 1101, 24:6067.
`
`II.
`
`INSTITUTION OF INTER PARTES REVIEW
`
`On December 4, 2017, we instituted inter partes review in
`
`IPR2017-01428 based on the following prior art and grounds of
`
`unpatentability (Facebook IPR, slip op. at 2021 (PTAB Dec. 4, 2017)
`
`(Paper 8)):
`
`a) Zydney: PCT App. Pub. No. WO 01/11824 A2, published Feb. 15,
`
`2001, filed in this record as Exhibit 1103 (with line numbers added
`
`by Petitioner);
`
`b) Greenlaw: RAYMOND GREENLAW & ELLEN HEPP, INTRODUCTION
`
`TO THE INTERNET FOR ENGINEERS 125 (1999), filed in the record
`
`as Exhibit 1110; and
`
`6
`
`

`

`IPR2017-02088
`Patent 8,995,433 B2
`
`
`c) Newton: HARRY NEWTON, NEWTON’S TELECOM DICTIONARY (18th
`
`ed. 2002), filed in the record as Exhibit 1106.
`
`Challenged Claim(s)
`
`Basis
`
`Reference(s)
`
`9, 12, 14, 17, 25, and 26 § 103(a)
`
`Zydney
`
`11, 15, and 16
`
`10
`
`§ 103(a)
`
`§ 103(a)
`
`Zydney and Greenlaw
`
`Zydney and Newton
`
`The Petition in this proceeding asserts the same grounds as those we
`
`instituted in the Facebook IPR. Pet. 1; see also Joinder Motion 1. Petitioner
`
`relies also on a Declaration of Tal Lavian, Ph.D., filed as Exhibit 1102
`
`(“Lavian Declaration”). Petitioner asserts that the Lavian Declaration is
`
`identical to the Lavian Declaration filed in the Facebook IPR. Joinder
`
`Motion 1.
`
`Patent Owner’s Preliminary Response presents three procedural
`
`arguments not presented in the Facebook IPR. We address those arguments
`
`here. First, Patent Owner argues that we should deny the instant Petition
`
`because Petitioner’s Mandatory Notices (Pet. 1–4) omits some related
`
`administrative matters. Prelim. Resp. 47. Specifically, Patent Owner
`
`points out that the Petition does not give the Board notice of 22 inter partes
`
`review proceedings concerning the patent-at-issue and other interrelated
`
`patents. Id. The omission, according to Patent Owner, violates the Board’s
`
`rule regarding mandatory notices (37 C.F.R. § 42.8(b)(2)) and the relevant
`
`statutory requirement in 35 U.S.C. § 312(a)(4). Prelim. Resp. 67.
`
`Regarding the second argument, Patent Owner alleges that Petitioner
`
`failed to name all real parties-in-interest under 37 C.F.R. § 42.8(b)(1).
`
`7
`
`

`

`IPR2017-02088
`Patent 8,995,433 B2
`
`Prelim. Resp. 78. In particular, Patent Owner alleges that the unnamed real
`
`parties-in-interest pertain to the collection of co-defendants that, together
`
`with Petitioner, filed joint invalidity contentions in the district court
`
`litigation. Id. (referring to Exhibits 2002 and 2003). Patent Owner also
`
`argues that Huawei has coordinated with other entities to file other inter
`
`partes reviews regarding related patents. Id. at 8 (referring to
`
`IPR2017-02067, IPR2017-02080, and IPR2017-02081).
`
`As for the last procedural argument, Patent Owner proffers that
`
`Huawei has filed another petition challenging the patent-at-issue, i.e.,
`
`IPR2017-02067, and, therefore, Huawei has presented the same or
`
`substantially similar arguments relying on Zydney. Id. at 89. According to
`
`Patent Owner, the “redundancy” presented by this second petition on the
`
`same grounds presented previously based on Zydney is sufficient to deny the
`
`Petition. Id. at 9.
`
`We do not agree with any of Patent Owner’s arguments. Under the
`
`circumstances of this case, the alleged failure to identify either related
`
`matters or real parties-in-interest, alone,1 does not compel denial of the
`
`Petition. First, mandatory notices are updateable on an ongoing basis.
`
`37 C.F.R. § 42.8 (a)(3). Second, identification of real parties-in-interest is
`
`not a jurisdictional issue and may be corrected. See Lumentum Holdings,
`
`Inc., v. Capella Photonics, Inc., Case IPR2015-00739, slip op. at 5 (PTAB
`
`
`
` 1
`
` For example, Patent Owner does not allege any prejudice sufficient to
`consider the alleged deficiencies worthy of redress via denial of the Petition.
`8
`
`

`

`IPR2017-02088
`Patent 8,995,433 B2
`
`Mar. 4, 2016) (Paper 38) (precedential). Third, an allegation that defendants
`
`in district court filed joint invalidity contentions is not sufficient to show that
`
`all co-defendants are real parties-in-interest. See, e.g., Azure Gaming Mac.,
`
`Ltd., v. MGT Gaming, Inc., Case IPR2014-01288, slip op. at 1112 (PTAB
`
`Feb. 20, 2015) (Paper 13) (describing that the real party-in-interest is the
`
`relationship between a party and a proceeding, not the relationship between
`
`parties). Finally, the instant Petition is intentionally identical to the petition
`
`filed in the Facebook IPR, as it seeks joinder on the same grounds instituted
`
`therein. There is no “redundancy” or “multiple bites of the apple” as Patent
`
`Owner alleges. Indeed, joined cases avoid the multiplicity that Patent
`
`Owner criticizes. Accordingly, we decline Patent Owner’s request to deny
`
`the Petition based on the proffered procedural arguments.
`
`Patent Owner also advances two substantive arguments not presented
`
`previously in connection with the Facebook IPR. First, Patent Owner argues
`
`that the Petition is deficient in identifying the “instant voice message
`
`application attach[ing] one or more files to the instant voice message,”
`
`recited in claim 9. Prelim. Resp. 1820. In particular, according to Patent
`
`Owner, Zydney’s attachments to the voice container have not been shown to
`
`be performed by the “instant voice message application” and Zydney’s
`
`software agent does not meet the limitation. Id. Patent Owner supports its
`
`argument by emphasizing this panel’s actions in other decisions denying
`
`inter partes review, and characterizing those actions as somehow agreeing
`
`with Patent Owner that a “structural distinction” between the voice container
`
`and the voice message is equally applicable here. Id. at 19. We do not agree
`
`with either Patent Owner’s characterization of our decision in IPR2017-
`
`9
`
`

`

`IPR2017-02088
`Patent 8,995,433 B2
`
`01257 or that the Petition’s identification of the “software agent” is
`
`insufficient to satisfy the institution threshold. As we stated in the Facebook
`
`IPR, and we reiterate here, these arguments are premised on an implied
`
`construction of “instant voice message” as encompassing only the voice
`
`message and excluding all else. Indeed, Patent Owner’s declarant testimony
`
`makes a distinction between Zydney’s voice container and the “instant voice
`
`message” that appears to be rooted in characterizing the “instant voice
`
`message” as audio data only.2
`
`As to the second substantive argument, Patent Owner points out that
`
`Petitioner’s reliance on Zydney’s voice container as disclosing the “instant
`
`voice message” is further flawed because claim 11 recites that “the instant
`
`voice message application displays one or more controls for audibly playing
`
`the instant voice message.” Id. at 2223. According to Patent Owner,
`
`Zydney’s software agent does not audibly play the “voice container” itself,
`
`because the voice container is used only for transmission and only the voice
`
`message is played. Id. We are not persuaded by Patent Owner’s argument,
`
`because, again, the argument is rooted on an underdeveloped claim
`
`construction of “instant voice message” that limits the term to the audio and
`
`nothing else. On the record before us, we are not persuaded that Patent
`
`Owner has proffered facts, evidence, and argument sufficient to
`
`
`
` 2
`
` Claim 9 of the ’433 patent, challenged in this proceeding, recites attaching
`one or more files “to the instant voice message,” not to an “audio file” as
`recited in claim 1 of U.S. Patent No. 8,199,747 (subject of IPR2017-01257).
`10
`
`

`

`IPR2017-02088
`Patent 8,995,433 B2
`
`preliminarily construe the term. The parties will have the opportunity to
`
`brief properly, during trial, the disputed claim constructions.
`
`We have reviewed the Preliminary Response and find that the
`
`remaining arguments were presented and that we considered them in
`
`connection with the Facebook IPR. In view of the identicalness of the issues
`
`in the instant Petition and the Facebook IPR, and the already considered
`
`arguments from Patent Owner proffered in the Facebook IPR, we institute
`
`inter partes review in this proceeding on the grounds presented in the
`
`Petition for the same reasons stated in our Decision on Institution in the
`
`Facebook IPR.
`
`III. GRANT OF MOTION FOR JOINDER
`
`
`
`Joinder in inter partes review is subject to the provisions of 35 U.S.C.
`
`§ 315(c):
`
`(c) JOINDER.—If the Director institutes an inter partes review,
`the Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition under
`section 311 that the Director, after receiving a preliminary
`response under section 313 or the expiration of the time for filing
`such a response, determines warrants the institution of an inter
`parties review under section 314.
`
`
`
`As the moving party, Petitioner bears the burden of proving that it is
`
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
`
`should: (1) set forth the reasons joinder is appropriate; (2) identify any new
`
`grounds of unpatentability asserted in the petition; and (3) explain what
`
`impact (if any) joinder would have on the trial schedule for the existing
`
`review. See Frequently Asked Question H5, https://www.uspto.gov/patents-
`
`11
`
`

`

`IPR2017-02088
`Patent 8,995,433 B2
`
`application-process/appealing-patent-decisions/trials/patent-review-
`
`processing-system-prps-0.
`
`
`
`Petitioner asserts it has grounds for standing because, in accordance
`
`with 35 U.S.C. § 315(c), Petitioner filed a motion for joinder concurrently
`
`with the Petition and not later than one month after institution of the
`
`Facebook IPR. Joinder Motion 1. Patent Owner did not file an opposition
`
`to the Motion. We find that the Motion is timely. We also find that
`
`Petitioner has met its burden of showing that joinder is appropriate. For the
`
`challenged claims, the Petition here is substantively identical to the petition
`
`in the Facebook IPR. Joinder Motion 57. The evidence also is identical,
`
`including reliance on the same Lavian Declaration. Id.
`
`Petitioner further has shown that the trial schedule will not be affected
`
`by joinder. Id. at 78. No changes in the schedule are anticipated or
`
`necessary, and the limited participation, if at all, of Petitioner will not impact
`
`the timeline of the ongoing trial.
`
`Petitioner shall adhere to the existing schedule of IPR2017-01428 and
`
`the “second-chair” role it has agreed to assume. Id. at 6. More specifically,
`
`so long as any Facebook 1428 Petitioner entity is a party to IPR2017-01428,
`
`all filings of Petitioner in IPR2017-01428 shall be consolidated with the
`
`filings of the Facebook 1428 Petitioner. The page limits set forth in
`
`37 C.F.R. § 42.24 will apply to all consolidated filings.
`
`Petitioner is bound by any discovery agreements between Patent
`
`Owner and the Facebook 1428 Petitioner in IPR2017-01428, and shall not
`
`seek any additional discovery. Patent Owner shall not be required to provide
`
`any additional discovery or deposition time as a result of joinder. In
`
`12
`
`

`

`IPR2017-02088
`Patent 8,995,433 B2
`
`addition, if an oral hearing is requested and scheduled, Petitioners in
`
`IPR2017-01428 shall collectively designate attorneys to present at the oral
`
`hearing in a consolidated argument.
`
`The Board expects Petitioner to attempt to resolve any disputes among
`
`the entities involved and to contact the Board only if such matters cannot be
`
`resolved. This arrangement promotes the just and efficient administration of
`
`the ongoing trial and the interests of Petitioner and Patent Owner.
`
`
`
`In view of the foregoing, it is
`
`IV. ORDER
`
`
`
`ORDERED that IPR2017-02088 is hereby instituted on the
`
`following grounds:
`
`Challenged Claim(s)
`
`Basis
`
`Reference(s)
`
`9, 12, 14, 17, 25, and 26
`
`§ 103(a)
`
`Zydney
`
`11, 15, and 16
`
`§ 103(a)
`
`Zydney and Greenlaw
`
`10
`
`§ 103(a)
`
`Zydney and Newton
`
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`
`IPR2017-01428 is granted, and LG Electronics, Inc. and Huawei Device
`
`Co., Ltd. are hereby joined as petitioners in IPR2017-01428;
`
`
`
`FURTHER ORDERED that the Scheduling Order entered in
`
`IPR2017-01428 and schedule changes agreed to by the parties in
`
`IPR2017-01428 (pursuant to the Scheduling Order) shall govern the
`
`schedule of IPR2017-01428;
`
`13
`
`

`

`IPR2017-02088
`Patent 8,995,433 B2
`
`
`
`FURTHER ORDERED that all filings by the Petitioner entities in
`
`IPR2017-01428 will be consolidated and no filing by Petitioner alone will be
`
`allowed without prior authorization by the Board;
`
`FURTHER ORDERED that Petitioner is bound by any discovery
`
`agreements between Patent Owner and the Petitioner in IPR2017-01428, and
`
`that Petitioner shall not seek any additional discovery;
`
`FURTHER ORDERED that the Petitioner entities in IPR2017-01428
`
`shall collectively designate attorneys to present at the oral hearing in a
`
`consolidated argument;
`
`FURTHER ORDERED that a copy of this Decision be entered into
`
`the record of IPR2017-01428;
`
`
`
`FURTHER ORDERED that IPR2017-02088 is terminated under
`
`37 C.F.R. § 42.72 and all further filings are to be made in IPR2017-01428;
`
`and
`
`FURTHER ORDERED that the case caption in IPR2017-01428, from
`
`now on, shall reflect joinder with this proceeding in accordance with the
`
`attached example.
`
`
`
`
`
`14
`
`

`

`IPR2017-02088
`Patent 8,995,433 B2
`
`For PETITIONER:
`
`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.goldbert@finnegan.com
`Bradford.shulz@finnegan.com
`
`
`
`For PATENT OWNER:
`
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`Ryan Loveless
`ETHERIDGE LAW GROUP
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`ryan@etheridgelaw.com
`
`
`
`Sean D. Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`
`
`
`
`
`15
`
`

`

`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC., WHATSAPP INC., LG ELECTRONICS, INC., and
`HUAWEI DEVICE CO., LTD.,3
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01428
`Patent 8,995,433 B2
`____________
`
`
`
`
` 3
`
` LG Electronics, Inc. and Huawei Device Co., Ltd. filed a motion for
`joinder and petition in IPR2017-02088, which were granted, and, therefore,
`these entities have been joined to this proceeding.
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket