`571.272.7822
`
`Paper No. 35
` Filed: September 21, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC., WHATSAPP INC., and LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01427 (Patent 8,995,433 B2)
`______________________________
`
`FACEBOOK, INC., WHATSAPP INC., LG ELECTRONICS, INC., and
`HUAWEI DEVICE CO., LTD.,
`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.
`
`ORDER
`Conduct of the Proceeding, 37 C.F.R. § 42.5
`
`
`
`IPR2017-01427
`IPR2017-01428
`Patent 8,995,433 B2
`On August 30, 2018, we held the oral argument for the above-
`captioned cases.1 During the argument for IPR2017-01428, the parties to
`both proceedings were given an opportunity to address Exhibit 3001, a
`dictionary definition of “instant messaging,” as a starting point for
`discussing the appropriate claim construction of the claim term “instant
`voice message,” recited in all the independent challenged claims. By way of
`introduction, the definition of “instant messaging,” according to that
`dictionary, in relevant part, is: “A service that alerts users when friends or
`colleagues are on line and allows them to communicate with each other in
`real time through private online chat areas.” Ex. 3001, 2. The panel gave
`the parties an opportunity to object to the entry of Exhibit 3001 in the record.
`Tr. 67:12−68:5. There were no objections.
`After review of the discussion on claim construction issues in the
`captioned cases, the panel requests additional briefing as detailed below. By
`way of background, we noted, in our Decision on Institution in IPR2017-
`01428, that Patent Owner’s argument regarding whether the prior art
`disclosed the required “instant voice message” was an issue of claim
`construction that required additional briefing. Decision on Institution, 11-12
`(Paper 8, IPR2017-01428). Patent Owner’s Response proposes that the
`Board construe “instant voice message” as “an audio file recording voice
`data.” IPR2017-01428, Paper 21, 6−7 (arguing lexicography because of the
`
`
`1 For IPR2017-01427, the transcript of the oral argument is filed as Paper 40,
`and for IPR2017-01428, the transcript of the oral argument is filed as Paper
`34 (“Tr.”). The discussion of claim construction for “instant voice message”
`was introduced in the oral argument for IPR2017-01428, but is applicable to
`IPR2017-01427 as both of these cases involve the same patent and all claims
`recite the “instant voice message” term.
`2
`
`
`
`
`
`IPR2017-01427
`IPR2017-01428
`Patent 8,995,433 B2
`repeated use of “i.e.” in certain embodiments). Petitioner’s Reply proposes
`that the construction is not limited to an audio file, but does not otherwise
`propose a construction stating that the term “instant voice message” “can be
`left to its plain and ordinary meaning, encompassing the instant voice
`messages disclosed by Zydney.”2 IPR2017-01428, Paper 29, 2−5. During
`oral argument we addressed with the parties the insufficiency of their
`respective briefs with regard to claim construction. Tr. 10:8−11:25,
`21:17−15, 25:7−27:24.
`After hearing argument on Exhibit 3001 and discussing claim
`construction alternatives, Petitioner agreed that the claimed “instant voice
`message” would be a “data structure including a representation of an audible
`message.” Id. at 13:6−11. Patent Owner agreed in principle that the scope
`of the term “instant voice message” would be the “data content including a
`representation of an audio message, not precluding the inclusion of fields.”
`Tr. 66:22−67:5. Patent Owner also argued the scope of the “content” in the
`“instant voice message” to clarify that the content (or audio data) cannot
`exist independently of the medium by which the content is transported. Id.
`at 64:3−66:1.
`Although there are many similarities between these positions, Patent
`Owner’s preference for the word “content” versus the word “structure”
`presents an issue that requires further consideration by the parties. Further,
`we find that the record does not adequately reflect the parties’ positions as to
`how the respective constructions that have been agreed to allegedly would or
`
`2 Zydney is PCT Application Publication No. WO 01/11824 A2, published
`February 15, 2001, and filed in IPR2017-01427 as Exhibit 1003 and in
`IPR2017-01428 as Exhibit 1103.
`
`
`
`3
`
`
`
`IPR2017-01427
`IPR2017-01428
`Patent 8,995,433 B2
`would not map to Zydney’s voice container, asserted by Petitioner to be the
`claimed “instant voice message” in these proceedings. Accordingly, the
`parties will be provided an opportunity to brief each other’s claim
`construction positions, as agreed to during the oral argument and
`summarized below. The brief should also address the applicability of each
`of these constructions to the asserted prior art. No new evidence will be
`allowed at this stage of the proceeding, and the arguments are to be limited
`to addressing solely the two claim construction positions, including the legal
`and factual reasons for each party’s position, and the application of those
`claim construction positions to Zydney’s voice container.
`III. ORDER
`
`
`
`Accordingly, it is:
`ORDERED that the parties shall brief the following claim
`construction alternatives for the term “instant voice message”:
`- “a data structure including a representation of an audible
`message”; and
`- “the data content including a representation of an audio message,
`not precluding the inclusion of fields”;
`FURTHER ORDERED that the parties shall address the applicability
`of these claim constructions to Zydney’s voice container;
`FURTHER ORDERED that the opening brief for both parties is
`limited to 8 pages and shall be filed simultaneously, by September 28;
`FURTHER ORDERED the parties may file a responsive brief, limited
`to 5 pages, by no later than October 5; and
`FURTHER ORDERED that no other papers are authorized and no
`new evidence shall be introduced.
`
`
`
`4
`
`
`
`IPR2017-01427
`IPR2017-01428
`Patent 8,995,433 B2
`For PETITIONER:
`
`Heidi L. Keefe
`Phillip E. Morton
`Mark R. Weinstein
`COOLEY LLP
`hkeefe@cooley.com
`pmorton@cooley.com
`mweinstein@cooley.com
`zpatdcdocketing@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
`James Etheridge
`Jeffrey Huang
`Ryan Loveless
`ETHERIDGE LAW GROUP
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`ryan@etheridgelaw.com
`
`
`
`5
`
`
`
`IPR2017-01427
`IPR2017-01428
`Patent 8,995,433 B2
`
`Sean D. Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`
`
`6
`
`