throbber
IPR2017-01428
`Petitioners’ Reply
`
`
`
`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.,1
`Petitioners
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`
`
`Case IPR2017-01428
`Patent 8,995,433
`
`
`REPLY OF PETITIONERS FACEBOOK, INC. AND WHATSAPP, INC.
`REGARDING INSTITUTED AND NON-ESTOPPED CLAIMS
`(CLAIMS 9-12, 14-17, 25, AND 26)
`
`
`
`
`
`
`1 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.
`
`
`
`

`

`TABLE OF CONTENTS
`
`
`Page
`
`B. 
`
`
`I. 
`
`II. 
`
`CLAIM CONSTRUCTION ........................................................................... 1 
`A. 
`“Instant Voice Message” Is Not Limited to an “Audio File” .............. 2 
`B. 
`“Receiving the Instant Voice Message and an Indication . . .” Is
`Properly Left to its Plain Meaning ....................................................... 6 
`THE CHALLENGED CLAIMS ARE UNPATENTABLE ........................... 8 
`A. 
`Zydney Discloses Attaching One or More Files to the Instant
`Voice Message (Claims 9 and 14) ........................................................ 8 
`Zydney Discloses the “Instant Voice Messaging Application”
`and “Client Platform System” Even Under Patent Owner’s
`Incorrect Claim Construction ............................................................. 10 
`Zydney Renders Obvious Claim 17 ................................................... 11 
`C. 
`Zydney Renders Obvious Claim 26 ................................................... 12 
`D. 
`Zydney and Greenlaw Render Obvious Claim 16 ............................. 13 
`E. 
`Zydney and Greenlaw Render Obvious Claims 11 and 15 ................ 15 
`F. 
`III.  CONCLUSION ............................................................................................. 16 
`
`
`
`
`
`
`-i-
`
`
`
`

`

`
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`
`Anchor Wall Sys., Inc. v. Rockwood Retaining Walls, Inc.,
`340 F.3d 1298, 1308 (Fed. Cir. 2003) .................................................................. 5
`CCS Fitness, Inc. v. Brunswick Corp.,
`288 F.3d 1359, 1366 (Fed. Cir. 2002) ................................................................ 11
`Epos Techs. Ltd. v. Pegasus Techs. Ltd.,
`766 F.3d 1338 (Fed. Cir. 2014) ...................................................................... 5, 13
`Thorner v. Sony Computer Entm’t Am. LLC,
`669 F.3d 1362 (Fed. Cir. 2012) .......................................................................... 11
`Statutes
`35 U.S.C. § 103 ........................................................................................................ 16
`
`
`
`
`
`
`-i-
`
`
`
`

`

`IPR2017-01428
`Petitioners’ Reply
`
`
`
`List of Exhibits
`
`Description of Document
`Ex. No
`1101 U.S. Patent No. 8,995,433 to Michael J. Rojas
`1102 Declaration of Tal Lavian, Ph.D.
`1103
`PCT Patent Application No. PCT/US00/21555 to Herbert Zydney et al.
`(filed August 7, 2000, published February 15, 2001 as WO 01/11824
`A2) (“Zydney”) (with added line numbers)
`1104 U.S. Patent No. 6,750,881 to Barry Appelman (filed February 24,
`1997, issued June 15, 2004)
`
`1105
`
`Excerpts from Margaret Levine Young, Internet: The Complete
`Reference (2d ed. 2002)
`
`1106
`
`Excerpts from Harry Newton, Newton’s Telecom Dictionary (2002)
`(“Newton”) (dated library copy)
`1107 U.S. Patent No. 6,757,365 B1 to Travis A. Bogard (filed October 16,
`2000, issued June 29, 2004)
`1108 U.S. Patent No. 6,725,228 to David Morley Clark et al. (filed Oct. 31,
`2000, issued April 20, 2004)
`
`1109
`1110
`
`1111
`
`1112
`
`1113
`
`Excerpts from Microsoft Computer Dictionary (3d ed. 1997)
`
`Excerpts from Raymond Greenlaw et al., Introduction to the Internet
`for Engineers (1999) (“Greenlaw”)
`
`Excerpts of Joint Claim Construction and Prehearing Statement filed
`on March 10, 2017 in Case No. 16-cv-00642 (E.D. Tex.), including
`Exhibit A
`
`PCT Patent Application No. PCT/US00/21555 to Herbert Zydney et al.
`(filed August 7, 2000, published February 15, 2001 as WO 01/11824
`A2) (as-published version without added line numbers)
`
`Library and date-stamped copy of excerpts from Raymond Greenlaw
`et al., Introduction to the Internet for Engineers (1999)
`
` 
`
`
`
` 
`
` 
`
`

`

`IPR2017-01428
`Petitioners’ Reply
`
`
`
`List of Exhibits
`
`1114
`Biography of Lowell Mead
`1115 Declaration of Lowell Mead ISO Motion for Pro Hac Vice Admission
`1116
`Biography of Mark R. Weinstein
`1117 Declaration of Mark R. Weinstein ISO Motion for Pro Hac Vice
`Admission
`
` 
`
`
`
` 
`
` 
`
`

`

`IPR2017-01428
`Petitioners’ Reply
`
`
`
`Petitioners Facebook, Inc. and WhatsApp, Inc. (“Petitioners”) respectfully
`
`submit this Reply in support of Inter Partes Review of claims 9-12, 14-17, 25, and
`
`26 of U.S. Patent No. 8,995,433 (Ex. 1101) (“’433 patent”) and addressing Patent
`
`Owner’s Response (Paper 21 (“Response”)). Petitioners are entitled to submit this
`
`Reply addressing claims 9-12, 14-17, 25, and 26, as these claims were not the
`
`subject to the AIA estoppel identified by the Board in its Order dated May 29,
`
`2018 in IPR2017-01427. Consistent with that Order, this Reply does not address
`
`Patent Owner’s arguments on claims 1-6 and 8.
`
`Patent Owner’s Response rehashes the arguments from the Preliminary
`
`Response, which the Board already considered and rejected in its Institution
`
`Decision (Paper 8). Patent Owner largely ignores the Board’s detailed analysis and
`
`instead recycles the same failed arguments. In fact, Patent Owner kept the same
`
`title, “Patent Owner Preliminary Response,” for its post-institution response.
`
`(Paper 21 at 1 (title); see also id. at 3 (Patent Owner “submits this Owner’s
`
`Preliminary Response . . . The Petition should be denied . . .”).) Patent Owner does
`
`not identify any error in the Board’s reasoning, let alone provide any basis for the
`
`Board to depart from the reasoned Institution Decision.
`
`I.
`
`CLAIM CONSTRUCTION
`In its Institution Decision, the Board determined that no express claim
`
`constructions were necessary. (Paper 8 at 6-10.) No express claim constructions
`1
`
`
`
`

`

`IPR2017-01428
`Petitioners’ Reply
`
`
`are needed to confirm the unpatentability of the claims at issue, which are invalid
`
`for obviousness under the plain and ordinary meaning of the claim language.
`
`In view of Uniloc’s positions, Petitioners accordingly concur with Uniloc
`
`that no explicit constructions of the terms “instant voice messaging application” or
`
`“client platform system” are necessary to confirm the unpatentability of the
`
`challenged claims, as discussed further below in this Reply. (Id.; Response at 8-11
`
`(contending that constructions are “unnecessary”).) Petitioners respond to the two
`
`claim constructions proposed by Patent Owner’s “Claim Construction” section in
`
`the following subsections. Petitioners also address additional claim interpretations
`
`raised by Patent Owner where applicable for specific challenged claims below.
`
`A.
`“Instant Voice Message” Is Not Limited to an “Audio File”
`Patent Owner erroneously contends that an “instant voice message” must be
`
`limited to “an audio file recording voice data.” (Response at 6-7.) Patent Owner’s
`
`narrow construction is not required by the intrinsic evidence, and is not the
`
`broadest reasonable interpretation of the claim language.
`
`The claim language does not support Patent Owner’s erroneous narrow
`
`interpretation. The ’433 patent claims at issue merely recite an “instant voice
`
`message” without specifying that it must be an “audio file.” On the contrary, the
`
`claims recite that a “file” can be attached to an instant voice message, suggesting
`
`that the instant voice message need not be a “file.” (’433, claim 9.) Patent Owner
`2
`
`
`
`

`

`IPR2017-01428
`Petitioners’ Reply
`
`
`cites various claim recitations that an instant voice message may be played or
`
`recorded (Response at 7), but those recitations do not require that the item being
`
`played must be an “audio file” as opposed to another type of file or data item that
`
`contains playable voice content and may also contain other information.
`
`Patent Owner points to a related patent, U.S. Patent No. 8,199,747, where
`
`institution was denied over prior art Zydney in IPR2017-01257. (Response at 18-
`
`19.) But that patent only illustrates why it would be incorrect to construe “instant
`
`voice message” as “an audio file recording voice data.” The ’747 patent contains
`
`the same written description as the ’433 patent. Claim 1 of the ’747 patent recites:
`
`“generating an instant voice message, wherein generating includes recording the
`
`instant voice message in an audio file and attaching one or more files to the audio
`
`file.” (IPR2017-01257, Ex. 1001, claim 1 (emphasis added).) This language
`
`distinguishes the “instant voice message” from the “audio file” and confirms that
`
`“instant voice message” is not synonymous with “an audio file recording voice
`
`data.” If every “instant voice message” was limited to an audio file as Patent
`
`Owner contends, then the recitation of recording the instant voice message “in an
`
`audio file” would be superfluous.
`
`The specification also does not support Patent Owner’s
`
`incorrect
`
`construction. Patent Owner cites an exemplary embodiment where the instant
`
`
`
`3
`
`

`

`IPR2017-01428
`Petitioners’ Reply
`
`
`voice message may take the form of an audio file. (Response at 6-7.) But that is
`
`merely one disclosed embodiment. Claim 9 and its dependent claims are not
`
`limited to that embodiment, especially under the broadest reasonable interpretation.
`
`In fact, in another preferred embodiment using an “intercom mode,” the “instant
`
`voice message” specifically is not an audio file and instead takes the form of a
`
`buffered transmission:
`
`[T]he instant voice messaging system 200 also supports an “intercom
`mode” of voice messaging. The “intercom mode” represents real-time
`instant voice messaging. In the “intercom mode,” instead of creating
`an audio file 210, one or more buffers (not shown) of a predetermined
`size are generated in the IVM client 206, 208 or local IVM server 202.
`The one or more buffers are used to automatically write successive
`portions of the instant voice message. . . . If the entire instant voice
`message or a successive portion thereof (such as a last successive
`portion in the instant voice message) written to either buffer is smaller
`the predetermined size, then the buffered content of less than the
`predetermined size
`is automatically
`transmitted
`to
`the IVM
`server 202. The foregoing buffering using the first and second buffers
`is repeated until the entire instant voice message has been transmitted
`to the IVM server 202 for transmission to the one or more IVM
`recipients. . . . The foregoing buffering and transmission allows a
`“real-time” instant voice message to be transmitted to the one or more
`IVM recipients.
`
`
`
`4
`
`

`

`IPR2017-01428
`Petitioners’ Reply
`
`
`(’433, 11:35-60 (underlining added).) Here, dependent claim 13 specifies
`
`“generating an instant voice message using an intercom mode,” indicating that the
`
`“instant voice message” recited in independent claim 9 must encompass an
`
`“intercom mode.” But Patent Owner’s proposed claim construction that an
`
`“instant voice message” must be an “audio file” would exclude the “intercom
`
`mode” preferred embodiment in the specification. A “claim construction that
`
`excludes a preferred embodiment . . . is rarely, if ever correct and would require
`
`highly persuasive evidentiary support.” Epos Techs. Ltd. v. Pegasus Techs. Ltd.,
`
`766 F.3d 1338, 1347 (Fed. Cir. 2014) (quoting Anchor Wall Sys., Inc. v. Rockwood
`
`Retaining Walls, Inc., 340 F.3d 1298, 1308 (Fed. Cir. 2003)). Patent Owner’s
`
`assertion that the specification equates “instant voice message” as “synonymous
`
`with” an “audio file” recording voice data (Response at 6) is simply not true.2 At
`
`most, the specification identifies an “audio file” as an illustrative example of an
`
`instant voice message
`
`in one embodiment among multiple alternative
`
`embodiments. Patent Owner’s proposed construction should be rejected and the
`
`term “instant voice message” can be left to its plain and ordinary meaning,
`
`encompassing the instant voice messages disclosed by Zydney. (Petition at 24-28.)
`
`
`2 In fact, Patent Owner itself relies on the “intercom mode” embodiment elsewhere
`
`in its arguments (e.g., Response at 15-16).
`
`
`
`5
`
`

`

`IPR2017-01428
`Petitioners’ Reply
`
`
`
`B.
`
`“Receiving the Instant Voice Message and an Indication . . .” Is
`Properly Left to its Plain Meaning
`For claim 17, Patent Owner rehashes the same erroneous claim construction
`
`argument that the Board rejected in its Institution Decision. (Response at 12-16;
`
`Paper 8 at 8-10.) Patent Owner does not cite the Board’s detailed analysis, much
`
`less demonstrate any error in the Board’s reasoning and conclusion.
`
`As the Board appreciated, the plain language of claim 17 recites that the
`
`system of claim 9 further comprises “an instant voice messaging server receiving
`
`the instant voice message and an indication of one or more intended recipients of
`
`the instant voice message.” (Paper 8 at 8.) Nothing in this language states or
`
`requires that the instant voice message and the indication of one or more recipients
`
`must be received separately, at separate times, as Patent Owner contends. The
`
`claim recites one step or function of “receiving.” As the Board noted, the claim
`
`recites that the server “receives two things: the instant voice message and the
`
`indication of one or more intended recipients.” (Id at 9.) The claim does not
`
`recite, for example, “receiving the instant voice message and at a separate time
`
`receiving an indication of one or more recipients” or the like, as Patent Owner
`
`would have it. As the Board noted, the patentee could have included a
`
`“separateness requirement” in the language of claim 17, but did not. (Paper 8 at 9.)
`
`In fact, in the present proceeding, Patent Owner previously indicated that it
`
`
`
`6
`
`

`

`IPR2017-01428
`Petitioners’ Reply
`
`
`planned to file a motion to amend the claims, but never filed that motion. (Paper
`
`14.)
`
`Patent Owner argues that an illustrative embodiment in the specification
`
`describes that an indication of recipients is transmitted separately from the instant
`
`voice message. (Response at 12-14.) But as the Board appreciated, that is a mere
`
`embodiment that does not limit the claim language. (Paper 8 at 9-10.) Nothing in
`
`the specification specifically disclaims embodiments where the server receives the
`
`instant voice message and the indication of recipients in the same act of
`
`“receiving”—which is what the claim language suggests.
`
`Patent Owner also points to a few dependent claims that are not challenged
`
`in this IPR proceeding (claims 18-21 which depend from claim 17) that recite
`
`“buffering” operations relating to the “intercom mode” embodiment. (Response at
`
`14-16.) But nothing in those dependent claims rewrites claim 17 to inject a
`
`“separateness” requirement into claim 17. In fact, those claims 18-21 recite
`
`nothing about receiving the “indication” of one or more intended recipients; those
`
`claims are silent as to any timing or separateness of receiving that indication.
`
`(’433, claims 18-21.) But even if those claims recited that the indication of
`
`recipients is received at a separate time from the instant voice message (which they
`
`do not), that would merely limit those dependent claims, not claim 17 itself.
`
`
`
`7
`
`

`

`IPR2017-01428
`Petitioners’ Reply
`
`
`II. THE CHALLENGED CLAIMS ARE UNPATENTABLE
`A. Zydney Discloses Attaching One or More Files to the Instant
`Voice Message (Claims 9 and 14)
`Based on its erroneous claim construction that “instant voice message”
`
`means “an audio file containing voice data,” Patent Owner argues that Zydney
`
`does not disclose that the instant voice message application “attaches one or more
`
`files to the instant voice message.” (Response at 16-21.) Patent Owner’s argument
`
`is premised on its incorrect claim interpretation: it contends that the claim requires
`
`attaching one or more files “to an audio file recording voice data” (id. at 16-17)
`
`and asserts that the “voice container” disclosed in Zydney does not disclose an
`
`“instant voice message” under Patent Owner’s construction (id. at 19, 21).
`
`However, as discussed previously as a matter of claim construction, an
`
`“instant voice message” is not limited to “an audio file containing voice data.”
`
`Zydney’s voice container discloses an “instant voice message” under the plain and
`
`ordinary meaning of the term. (Petition at 28.) As the Petition explained, Zydney
`
`discloses that voice containers “can be stored, transcoded and routed to the
`
`appropriate recipients instantaneously or stored for later delivery.” (Petition at 25
`
`(quoting Zydney, 1:21-22).) A recipient of the voice container “can reply in a
`
`complementary way, allowing for near real-time communication.” (Id. (quoting
`
`Zydney, 16:14-15).) Zydney describes this exchange of voice containers as “a
`
`
`
`8
`
`

`

`IPR2017-01428
`Petitioners’ Reply
`
`
`voice instant messaging session.” (Id. (citing Zydney, 15:8-13, 10:19-11:3, 16:1-
`
`12).)
`
`Given that Zydney’s voice container discloses an instant voice message,
`
`Zydney’s teaching of attaching files to voice containers discloses the claim
`
`limitation that the instant voice message application “attaches one or more files to
`
`the instant voice message.”
`
`For similar reasons, Zydney does not teach away from attaching a file to a
`
`voice container (an instant voice message), contrary to Patent Owner’s argument.
`
`(Response at 21-22.) Indeed, Patent Owner admits that a “fundamental purpose”
`
`of a voice container (an instant voice message) is “to have ‘media’ attached
`
`thereto.” (Id.)
`
`For the same reasons, Patent Owner’s follow-on argument as to dependent
`
`claim 14 is unpersuasive, which again depends on Patent Owner’s rejected position
`
`that Zydney’s voice container does not disclose an instant voice message.
`
`(Response at 22-23.) As shown in the Petition, Zydney discloses that software on
`
`the user’s device attaches one or more files to a voice container (which is an instant
`
`voice message), which discloses creating a link between the instant voice message
`
`and the one or more files. (Petition at 38-41.)
`
`
`
`9
`
`

`

`IPR2017-01428
`Petitioners’ Reply
`
`
`
`B.
`
`Zydney Discloses the “Instant Voice Messaging Application” and
`“Client Platform System” Even Under Patent Owner’s Incorrect
`Claim Construction
`Patent Owner repeats its argument that Petitioners have not shown that
`
`Zydney teaches or suggests an “instant voice messaging application” and “client
`
`platform system” under Patent Owner’s proposed constructions. (Response at 8-
`
`12.) The thrust of Patent Owner’s argument is that those terms should be limited
`
`to software and should not encompass hardware. To begin with, for the reasons
`
`explained in the Petition, to the extent the Board determined that any express claim
`
`constructions were required (which
`
`they are not), Petitioners’ proposed
`
`constructions are correct and Patent Owner’s should be rejected. (Petition at 9-15.)
`
`But even if these terms were limited to software only, the claim limitations would
`
`still be disclosed by the prior art. The Petition mapped them to Zydney’s software
`
`agent and features and functionality of its associated software components.
`
`(Petition at 28-33.) Patent Owner has not pointed to any place where Petitioners
`
`relied on hardware functionality as disclosing the claimed instant messaging
`
`application or client platform system.
`
`Patent Owner also appears to argue that the term “client platform system” is
`
`defined in a passage in the specification. (Response at 10.) But the cited passage
`
`purports to describe “an exemplary illustration of the architecture in the IVM
`
`client…” (’433, 12:6-8 (emphasis added).) The passage is not definitional. See,
`10
`
`
`
`

`

`IPR2017-01428
`Petitioners’ Reply
`
`
`e.g., Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir.
`
`2012) (“To act as its own lexicographer, a patentee must ‘clearly set forth a
`
`definition of the disputed claim term’ other than its plain and ordinary meaning.”)
`
`(quoting CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir.
`
`2002)). But even if this language were definitional (which it is not), the Petition
`
`already addressed how the prior art discloses it. In particular, Patent Owner
`
`focuses on the inclusion of a “client engine” that “controls other components.”
`
`(Response at 10-11.) The Petition anticipated this argument by explaining how
`
`Zydney discloses such a client engine. (Petition at 27-28 (explaining how “the
`
`software agent in Zydney generates a voice container by controlling various other
`
`components” including “software components”).)
`
`C. Zydney Renders Obvious Claim 17
`Patent Owner disputes the obviousness of claim 17 based solely on its
`
`erroneous claim construction that the claim requires “separately” receiving the
`
`instant voice message and the indication of one or more recipients. (Response at
`
`23-24.)
`
` As discussed previously, Patent Owner’s claim construction
`
`is
`
`unsupported and incorrect. Zydney discloses the limitations of claim 17 as shown
`
`in the Petition. (Petition at 43-46.) As Patent Owner admits, the voice container in
`
`Zydney (the instant voice message) includes the recipient information indicating
`
`one or more recipients. (Response at 24.) The server in Zydney receives the
`11
`
`
`
`

`

`IPR2017-01428
`Petitioners’ Reply
`
`
`instant voice message (voice container) and an indication of one or more recipients
`
`(the recipient information). (Petition at 43-46.)
`
`D. Zydney Renders Obvious Claim 26
`For claim 26, Patent Owner rehashes another claim construction argument
`
`that the Board already rejected in its institution decision. (Response at 24-28;
`
`Paper 8 at 15-17.) Claim 26 recites that the server, having received an instant
`
`voice message, transmits “the” instant voice message to one or more recipients.
`
`(’433, claim 26.) Patent Owner notes that Zydney discloses that the server may
`
`use a translator to convert the voice data inside voice containers “from the sender’s
`
`data format to the receiver’s data format.” (Response at 26-27 (citing Zydney,
`
`12:20-23, 13:7-10).) Patent Owner argues that when the data format is converted,
`
`the server is not delivering “the same instant voice message that was generated and
`
`transmitted by the client.” (Response at 27 (italics in original).)
`
`
`
`But the Patent Owner’s argument assumes a limitation that the claims simply
`
`do not impose – that the format of the data within the instant voice message must
`
`remain 100% identical between the (1) message received by the server from the
`
`sending client and (2) the message forwarded by the server to a recipient. On the
`
`contrary, as the Board correctly noted in its institution decision, the ’433 patent
`
`specification contemplates that the server may compress and encrypt the instant
`
`voice message (e.g., audio file) using compression and encryption algorithms
`12
`
`
`
`

`

`IPR2017-01428
`Petitioners’ Reply
`
`
`before forwarding the message to its recipient. (’433, 11:2-14, 11:24-33; Paper 8
`
`at 16-17.) Patent Owner’s interpretation should thus be rejected because, among
`
`other problems, it would exclude these embodiments that were disclosed in the
`
`specification. Epos, 766 F.3d at 1347. Zydney discloses the claim limitations
`
`because the claimed “instant voice message” maps to the voice container in
`
`Zydney. (Petition at 24-25.) The server receives the voice container (the instant
`
`voice message) from the sender and delivers the voice container (the instant voice
`
`message) to the recipient. (See id.)
`
`E.
`Zydney and Greenlaw Render Obvious Claim 16
`Patent Owner mischaracterizes claim 16, suggesting that the claim requires
`
`controls for reviewing, re-recording, or deleting the instant voice message before it
`
`is transmitted. (Response at 28-29.) But the claim recites only that the instant
`
`voice message application “displays one or more controls for performing at least
`
`one of reviewing, re-recording or deleting the instant voice message.” (’433, claim
`
`16.) The claim is directed to the “one or more controls” for performing the one or
`
`more functions. The claim recites no timing limitation regarding whether the
`
`instant voice message controls must be usable before or after the transmission.
`
`Zydney in view of Greenlaw renders the claim limitation obvious: the sender
`
`copies herself when sending an instant voice message, and then she can review or
`
`delete the instant voice message using those controls. (Petition at 53-57, 59.)
`13
`
`
`
`

`

`IPR2017-01428
`Petitioners’ Reply
`
`
`
`Patent Owner cites an illustrative embodiment where the controls may be
`
`used before the message is transmitted. (Response at 29 (citing ’433, 13:30-35).)
`
`But the claim language is not limited to that embodiment. The claim does not
`
`recite that the application “displays one or more controls for performing at least
`
`one of reviewing, re-recording or deleting the instant voice message before the
`
`message is transmitted” or the like. Again, Patent Owner elected not to move to
`
`amend its claims to recite such a limitation, and its attempt to improperly import it
`
`from the specification should be rejected.
`
`Patent Owner further asserts that to “review, re-record, or delete the message
`
`after it is sent is silly and totally defeats the purpose of the element,” as if using
`
`such controls would be “closing the barn door after the horse has bolted.”
`
`(Response at 29.) Patent Owner’s assertion is incorrect. The claim is satisfied by a
`
`control that allows for “reviewing” or “deleting” messages, which are appropriate
`
`actions that might be taken after the message is sent. Indeed, a key purpose of
`
`Greenlaw’s teaching is that the sender may wish to keep a record of the message
`
`she transmitted. (Petition at 53-54.) Of course, “reviewing” her already-
`
`transmitted messages is a natural part of maintaining the record, or assessing
`
`whether “deleting” the messages is appropriate. It would defeat Greenlaw’s stated
`
`purpose of retaining copies of “sent” messages if the sender could not review those
`
`
`
`14
`
`

`

`IPR2017-01428
`Petitioners’ Reply
`
`
`messages after the messages were sent. (See id.) Similarly, the ability to delete
`
`received messages—including messages sent by an individual to herself as “sent”
`
`messages—is fully consistent with the teachings and objectives of Zydney and
`
`Greenlaw. (See id.)
`
`F.
`Zydney and Greenlaw Render Obvious Claims 11 and 15
`Patent Owner raises essentially the same arguments that were rejected for
`
`claims 11 and 15 as it raises for claim 16. (Response at 30-32.) It argues that
`
`controls for “audibly playing the instant voice message” (claim 11) and displaying
`
`an attachment (claim 15) are not disclosed or obvious because, in Patent Owner’s
`
`view, a “purpose” of the controls and the display of attachments would be to play
`
`the message or see an attachment before the message is transmitted. (Response at
`
`30-32.) But Patent Owner’s perceived “purpose” is not set forth as a claim
`
`limitation. The claims do not recite “audibly playing the instant voice message
`
`before it is sent” or displaying an attachment “before it is sent” or the like, and as
`
`noted, Patent Owner has chosen not to add those limitations through a proposed
`
`amendment. As with claim 16, the controls for playing an instant voice message
`
`and displaying an attachment are fully consistent with the teachings of Zydney and
`
`Greenlaw. (Petition at 51-58.) A sender has good reason to copy herself on a
`
`message (including any attachments), as taught by Greenlaw, and thereafter can
`
`
`
`15
`
`

`

`IPR2017-01428
`Petitioners’ Reply
`
`
`play her message and view the attachments as disclosed by Zydney so that she
`
`knows what she sent. (Id.)
`
`III. CONCLUSION
`For the foregoing reasons, the Board should enter a final written decision
`
`finding claims 9-12, 14-17, 25, and 26 invalid under 35 U.S.C. § 103.
`
`
`Dated: June 5, 2018
`
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`
`
`
`
`By:
`
`
`
`
`Respectfully submitted,
`
`
`/Heidi L. Keefe/
`Heidi L. Keefe
`Reg. No. 40,673
`Counsel for Petitioners
`Facebook, Inc. and WhatsApp,
`Inc.
`
`
`
`
`
`16
`
`

`

`IPR2017-01428
`Petitioners’ Reply
`
`
`
`CERTIFICATE OF COMPLIANCE WITH WORD COUNT
`
`
`
`Pursuant to 37 C.F.R. § 42.24(d), I certify that this petition complies with
`the type-volume limits of 37 C.F.R. § 42.24(c)(1) because it contains 3,492 words,
`according to the word-processing system used to prepare this petition, excluding
`the parts of this petition that are exempted by 37 C.F.R. § 42.24(c) (including a
`table of contents, a table of authorities, a listing of facts which are admitted,
`denied, or cannot be admitted or denied, a certificate of service or word count, or
`appendix of exhibits).
`
`
`
`DATED: JUNE 5, 2018
`
`COOLEY LLP
`ATTN: Heidi L. Keefe
`Patent Docketing
`1299 Pennsylvania Ave. NW,
`Suite 700
`Washington, D.C. 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`
`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`
`
`
`
`
`
`1
`
`
`
`
`
`
`
`

`

`IPR2017-01428
`Petitioners’ Reply
`
`
`
`CERTIFICATE OF SERVICE
`
`
`I hereby certify, pursuant to 37 C.F.R. § 42.6, that a complete copy of the
`
`attached PETITIONERS’ REPLY and related documents, are being served on the
`5th day of June, 2018, by electronic mail on counsel of record for the Patent Owner
`as follows:
`
`Brett Mangrum (Reg. No. 64,783)
`brett@etheridgelaw.com
`James Etheridge (Reg. No. 37,614)
`jim@etheridgelaw.com
`Jeffrey Huang (Reg. No. 68,639)
`jeff@etheridgelaw.com
`ETHERIDGE LAW GROUP
`
`Sean D. Burdick (Reg. No. 51,513)
`sean.burdick@unilocusa.com
`UNILOC USA, INC.
`
`Anand Sharma
`Anand.sharma@finnegan.com
`Minjae Kang
`Minjae.kang@finnegan.com
`Joshua Goldberg
`Joshua.goldberg@finnegan.com
`Bradford Shulz
`Bradford.shulz@finnegan.com
`LG-Uniloc-IPR@finnegan.com
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
`
`Gregory Nieberg
`gnieberg@cov.com
`David Garr
`dgarr@cov.com
`Gregory Discher
`gdischer@cov.com
`Huawei-Uniloc-VOIP-IPR@cov.com
`COVINGTON & BURLING LLP
`
`
`
`2
`
`

`

`IPR2017-01428
`Petitioners’ Reply
`
`
`DATED: JUNE 5, 2018
`
`COOLEY LLP
`ATTN: Patent Docketing
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington, D.C. 20004
`
`
`
`
`
`
`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`
`
`
`3
`
`

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