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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FACEBOOK, INC., WHATSAPP INC., LG ELECTRONICS, INC., and
`HUAWEI DEVICE (SHENZHEN) CO. LTD. D/B/A HUAWEI DEVICE,
`Petitioners
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner
`
`Case IPR2017-01428
`Patent 8,995,433
`
`
`
`PATENT OWNER’S REQUEST FOR
`REHEARING UNDER 37 C.F.R. § 42.71(D)
`
`
`
`In response to the Final Written Decision entered November 30, 2018,
`
`(Paper 40, hereinafter “Decision”) and pursuant to 37 CFR § 42.71(d), Uniloc
`
`2017 LLC (“Patent Owner”) hereby respectfully requests a rehearing and
`
`reconsideration by the Patent Trial and Appeal Board (“Board”) of its Final
`
`Decision finding unpatentable Claims 9−12, 14−17, 25, and 26 of the ’433
`
`patent. Patent Owner’s request for rehearing is based upon the following
`
`considerations.
`
`I.
`
`APPLICABLE STANDARDS
`“A party dissatisfied with a decision may file a request for rehearing,
`
`without prior authorization from the Board.” 37 C.F.R. §42.71(d). “The request
`
`must specifically
`
`identify all matters
`
`the party believes
`
`the Board
`
`misapprehended or overlooked, and the place where each matter was
`
`previously addressed in a motion, an opposition, or a reply.” Id. The Board
`
`reviews a decision for an abuse of discretion. 37 C.F.R. §42.71(c).
`
`Claim construction is a question of law. Markman v. Westview
`
`Instruments, 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370
`
`(1996). In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to their broadest reasonable construction in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo
`
`Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 2142 -46 (2016).
`
`
`
`2
`
`
`
`II. ARGUMENT
`
`
`
`The Board sua sponte provided a definition of the term “attaches” that
`
`was not advanced by Petitioner or supported by any evidence of record. Such
`
`an approach denies Patent Owner due process and is also is contrary to the
`
`Federal Circuit’s decision in In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364,
`
`1380–81 (Fed. Cir. 2016).
`
`
`
`The term “attaches” appears in Independent Claim 9 as follows:
`
`
`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 messaging application attaches one or
`more files to the instant voice message.
`
` In multiple related proceedings (and this proceeding as well), Patent Owner
`
`argued that “attaches” means what it says – the one or more files must be
`
`attached to the audio file (i.e., the instant voice message). The Board previously
`
`agreed with this interpretation of attaching.
`
`
`
`In particular, in a first decision denying institution of a petition advanced
`
`by some of the same Petitioners as here, the Board concluded the applied
`
`Zydney reference failed to disclose the claimed attaching because Zydney
`
`discloses “attaching additional files (e.g., a multimedia file) to a voice
`2
`
`
`
`
`
`container, rather than to an audio file.” Facebook et al. v. Uniloc Luxemburg
`
`S.A., IPR2017-01257 (Paper 8) at 18 (PTAB Dec. 4, 2017) (emphasis added).
`
`
`
`Similarly, in a second decision the Board reached the same interpretation
`
`of “attaches”:
`
`We agree with Patent Owner that our reasoning in denying the petition in
`IPR2017-01257, wherein claim 1 was asserted to have been obvious over
`Zydney, is applicable here as well. In that case, we were not persuaded
`that the petitioner there had established sufficiently that Zydney teaches
`or suggests “attaching one or more files to the audio file,” as recited in
`claim 1, to demonstrate a reasonable likelihood of succeeding on the
`asserted ground. We agreed with Patent Owner in that case 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 as recited in claim 1.
`
`Google LLC v. Uniloc Luxemburg S.A., IPR2017-02085 (Paper 11) at 19
`
`(PTAB April 16, 2018) (emphasis added).
`
`
`
`To emphasized the meaning of “attach,” the Board quoted itself in the
`
`‘1257 Decision:
`
`“[e]ven if we regard Zydney’s voice data as being an audio file, however,
`we are not persuaded that Zydney’s disclosure that another file may be
`attached to a voice container that contains such an audio file teaches or
`suggests attaching that other file to the audio file.”
`
`Id. at quoting the ‘1257 Decision.
`
`
`
`Now, in a contrary fashion, the Board sua sponte concluded that
`
`“attaches” does not require attaching; rather, the Board opined that things that
`
`are attached simply requires some degree of “association” between them.
`
`3
`
`
`
`
`
`
`
`
`
`
`
`More particularly, the Board determined that the Claim 9 no longer
`
`requires an attachment of the one or more files to the audio file (i.e., the instant
`
`voice message). Decision at 20-21. Rather, the Board opined that “as long as
`
`the client has sufficient information that the “instant voice message” has an
`
`attachment, the recited “attachment” is performed.” Id. at 21. In reaching this
`
`new interpretation, the Board points to no evidence of record or arguments
`
`advanced by Petitioner. Rather, the Board engaged in a new sua sponte
`
`analysis. This was improper. A Board must evaluate the Petition’s arguments
`
`as presented. See In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380–81
`
`(Fed. Cir. 2016) (rejecting an argument that the Board properly “ma[de] an
`
`obviousness argument on behalf of [petitioner]” that “could have been included
`
`in a properly-drafted petition,” because “petitioner . . . bears the burden of
`
`proof” and, thus, the Board “must base its decision on arguments that were
`
`advanced by a party, and to which the opposing party was given a chance to
`
`respond,” and is not “free to adopt arguments on behalf of petitioners” (citations
`
`omitted)).
`
`
`
`Cognizant of due process consideration, the Board was concerned with
`
`an interpretation of “instant voice message” and invited post-hearing briefing
`
`on the issue; however, the Board did not invite any briefing on the meaning of
`
`“attaches.” Accordingly, the new sua sponte analysis of a separate term was
`
`surprising – especially given the Board’s contrary determinations of the same
`4
`
`
`
`
`
`term.
`
`III. CONCLUSION
`
`In view of the foregoing, Patent Owner respectfully requests that the
`
`Board grant a rehearing and reconsider its Final Written Decision
`
`
`
`Date: December 30, 2018
`
`Brett A. Mangrum
`brett@etheridgelaw.com
`Reg. No. 64,783
`
`Ryan Loveless
`ryan@etheridgelaw.com
`Reg. No. 51,970
`
`Counsel for Patent Owner
`
`5
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that the foregoing Patent Owner’s Notice
`
`Deposition Under 37 C.F.R. 42.53 was served electronically on December 29,
`
`2018 on the following counsel of record for Petitioner at the below-listed email
`
`address:
`
`Heidi Keefe
`
`Phillip Morton
`
`David Garr
`
`Greg Discher
`
`Anand Sharma
`
`Minjae Kang
`
`Joshua Goldberg
`
`Bradford Schulz
`
`
`hkeefe@cooley.com
`
`pmorton@cooley.com
`
`dgarr@cov.com
`
`gdischer@cov.com
`
`anand.sharma@finnegan.com
`
`minjae.kang@finnegan.com
`
`joshua.goldberg@finnegan.com
`
`bradford.schulz@finnegan.com
`
`Date: December 30, 2018
`
`/Brett A. Mangrum/
`
`
`
`Brett A. Mangrum
`brett@etheridgelaw.com
`Reg. No. 64,783
`
`Counsel for Patent Owner
`
`6
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