UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`APPLE, INC.,
`Petitioner
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
`
`
`
`
`
`
`
`
`IPR2017-00225
`PATENT 8,995,433
`
`
`
`
`
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
`
`
`
`
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`APPLE, INC.,
`Petitioner
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
`
`
`
`
`
`
`
`
`IPR2017-00225
`PATENT 8,995,433
`
`
`
`
`
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
`
`
`
`
`
`
`
`
`
`I.
`II.
`
`
`
`Tables of Contents
`
`IPR2017-00225
`U.S. Patent 8,995,433
`
`1
`3
`3
`4
`8
`8
`
`9
`12
`15
`17
`
`19
`20
`20
`
`21
`23
`25
`
`25
`28
`
`30
`30
`30
`
`31
`
`INTRODUCTION
`BACKGROUND OF THE '433 PATENT
`Priority of the '433 Patent through its Patent Family
`
`Overview of the '433 Patent
`
`III. THE PETITION PRESENTS UNJUSTIFIED REDUNDANCIES
`The Redundant Challenges Are Not Entitled to Consideration
`
`1. Petitioner Presents a Pair of Horizontally Redundant Grounds
`Against Each Challenged Claim
`2. Petitioner Also Presents Vertically Redundant Theories
`Väänänen is Cumulative with the Prosecution Record
`Petitioner’s Abusive Pattern of Redundancy is Improper
`
`IV. NO REASONABLE LIKELIHOOD THAT AT LEAST ONE
`OF THE CHALLENGED CLAIMS IS UNPATENTABLE
`Claim Construction
`
`1. “displays at least one of the plurality of instant voice messages”
`2. “the instant voice messaging application includes a message
`database storing the instant voice message”
`Overview of Applicable Law
`No Prima Facie Obviousness for Grounds 1 through 3
`1. No prima facie case for “the instant voice messaging application
`includes a message database storing the instant voice message”
`2. No Motivation to Combine Abburi with Holtzberg
`3. Grounds 1, 2, and 3 Fail to Present a Prima Facie Case of
`Obviousness for Even One Challenged Claim
` Grounds 4 and 5 Present Redundant and Cumulative Challenges
`1. Two Independent and Fully Dispositive Procedural Defects
`2. No prima facie case for “the instant voice messaging application
`includes a message database storing the instant voice message”
`
`
`
`
`
`ii
`
`
`
`IPR2017-00225
`U.S. Patent 8,995,433
`
`I.
`
`INTRODUCTION
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107(a), Uniloc Luxembourg
`
`S.A. (“Patent Owner”) submits this Preliminary Response to the Petition for Inter
`
`Partes Review (“the Petition”) of U.S. Patent No. 8,995,433 (“the '433 Patent”) filed
`
`by Apple, Inc. (“Petitioner”). The Board should deny the Petition in its entirety
`
`because of procedural and substantive defects.
`
`Petitioner follows the same impermissible strategy in challenging the '433
`
`Patent that it uses in each one of the six concurrently-filed petitions (IPR2017-00220
`
`through IPR2017-00225), which collectively challenge a total of sixty-five (65)
`
`claims of four related patents. Petitioner consistently presents at least a pair of
`
`redundant obviousness theories for every challenged claim. As an apparent
`
`afterthought, Petitioner then offers an illusory justification that is applicable, if at
`
`all, to only a mere fraction of those redundant challenges.
`
`The Board has long held that redundant grounds are not entitled to
`
`consideration unless the petitioner provides a sufficient bi-directional explanation of
`
`the relative strengths and weaknesses of each redundant ground. In the present
`
`Petition, Grounds 1-3 rely on Abburi (Ex. 1005) as the primary reference, while
`
`Grounds 4-5 redundantly challenge the same claims but rely, instead, primarily on
`
`Väänänen (Ex. 1006).
`
`1
`
`
`
`IPR2017-00225
`U.S. Patent 8,995,433
`At least with respect to independent Claim 1, Petitioner makes no attempt to
`
`articulate any substantive strength of Väänänen over Abburi based on their
`
`respective disclosures; and Petitioner offers only an illusory justification for its
`
`redundant challenge against independent Claim 6 (the only other independent claim
`
`challenged in the Petition). Moreover, the cited Väänänen reference is cumulative
`
`with what the Examiner had expressly considered during prosecution of this patent
`
`family. Accordingly, the Board should find Grounds 4 and 5 are impermissibly
`
`redundant and cumulative and thus not entitled to consideration.
`
`Notwithstanding the redundancies in the Petition, and because the Board has
`
`yet to decide which grounds it intends to dismiss as impermissibly redundant, Patent
`
`Owner identifies herein example instances where each ground of the Petition
`
`overlooks various claim limitations and thus fails to “specify where each element of
`
`the claim is found in the prior art patents or printed publications relied upon.” 37
`
`C.F.R. § 42.104(b)(4). For the reasons disclosed herein, the Petition should be denied
`
`in its entirety as failing to meet the threshold burden of proving there is a reasonable
`
`likelihood that at least one challenged claim is unpatentable.1
`
`
`1 Should the Board institute proceedings in this matter, Patent Owner does not
`concede the legitimacy of any arguments in the Petition that are not specifically
`addressed herein. Patent Owner expressly reserves the right to rebut any such
`arguments in its Patent Owner Response.
`
`2
`
`
`
`IPR2017-00225
`U.S. Patent 8,995,433
`
`II. BACKGROUND OF THE '433 PATENT
`
`Priority of the '433 Patent through its Patent Family
`
`The '433 Patent is titled “SYSTEM AND METHOD FOR INSTANT VOIP
`
`MESSAGING.” Ex. 1001. The '433 Patent issued from U.S. Patent Application No.
`
`14/244,125, which is a continuation of U.S. Patent No. 8,724,622, 8,243,723, which
`
`is a continuation of U.S. Patent No. 7,535,890, filed on Dec. 18, 2003. The '433
`
`Patent issued on March 31, 2015.
`
`Below is a picture of the family tree for the four patents Petitioner challenges
`
`in a series of six consecutively filed petitions (IPR2017-00220
`
`through
`
`IPR2017-00225).
`
`
`
`IPR2017-00222
`
`IPR2017-00223 &
`IPR2017-00224
`
`IPR2017-00225
`
`Challenged by Petitioner in
`IPR2017-00220 and IPR2017-00221
`
`3
`
`
`
`
`
`IPR2017-00225
`U.S. Patent 8,995,433
`
` Overview of the '433 Patent
`
`The
`
`'433 Patent
`
`recognized
`
`that
`
`conventional
`
`circuit-switched
`
`communications enabled traditional telephony yet had a variety of technical
`
`disadvantages that limited developing other forms of communication over such
`
`networks. According
`
`to
`
`the
`
`'433 Patent, “[c]ircuit switching provides a
`
`communication path (i.e., dedicated circuit) for a telephone call from the telephone
`
`terminal to another device 20 over the [public switched telephone network or] PSTN,
`
`including another
`
`telephone
`
`terminal. During
`
`the
`
`telephone call, voice
`
`communication takes place over that communication path.” Ex. 1001, 1:29-34.
`
`The '433 Patent expressly distinguishes circuit-switched networks from
`
`packet-switched networks (e.g., the Internet) at least in that the latter routes
`
`packetized digital information, such as “Voice over Internet Protocol (i.e., “VoIP”),
`
`also known as IP telephony or Internet telephony.”2 Id., 1:35-36. Because legacy
`
`
`2 Consistent with the '433 Patent specification, the USPTO has also recognized there
`are significant differences between circuit-switched and packet-switched networks
`during the relevant timeframe. See, e.g., U.S. Application No. 90/012,728 and
`90/012,789 (Notice of Intent to Issue Ex Parte Reexamination Certificate, dated
`April 10, 2014) at page 9, where the USPTO confirmed the following:
`
`Ethernet packet switching protocol, including TCP/IP, are very specific
`connectionless/packet switched protocols. In contrast to connection-
`oriented protocols, connectionless/packet switched protocols do not
`need to set up a dedicated path in advance. Rather, routers send
`fragmented messages or “packets” to their destination independently.
`Connectionless protocols have a number of advantages over
`
`4
`
`
`
`IPR2017-00225
`U.S. Patent 8,995,433
`circuit-switched devices were unable to communicate directly over packet-switched
`
`networks, media gateways (114) were designed to receive circuit-switched signals
`
`and packetize them for transmittal over packet-switched networks, and vice versa.
`
`Id., 2:8-18. The conversion effected by media gateways (e.g., 114 and 118)
`
`highlights the fact that packetized data carried over packet-switched networks (e.g.,
`
`IP network 102) are different from, and are incompatible with, an audio signal
`
`carried over a dedicated packet-switched circuit. Id., 2:8-21.
`
`The '433 Patent further recognized that, notwithstanding the advent of instant
`
`text messages, at the time of the claimed invention there was no similarly convenient
`
`analog to leaving an instant voice message over a packet-switched network. Id.,
`
`2:22-53. Rather, “conventionally, leaving a voice message involves dialing the
`
`recipient’s telephone number (often without knowing whether the recipient will
`
`answer), waiting for the connection to be established, speaking to an operator or
`
`navigating through a menu of options, listening to a greeting message, and recording
`
`the message for later pickup by the recipient. In that message, the user must typically
`
`identify himself or herself in order for the recipient to return the call.” Id., 2:26-33.
`
`The inventor observed, therefore, that “notwithstanding the foregoing
`
`advances in the VoIP/PSTN voice communication and voice/text messaging, there
`
`
`connection-oriented protocols, including better use of available
`bandwidth.
`
`5
`
`
`
`IPR2017-00225
`U.S. Patent 8,995,433
`is still a need in the art for providing a system and method for providing instant VoIP
`
`messaging over an IP network.” Id., 2:47-51. In certain disclosed embodiments the
`
`'433 Patent addressed that need, in part, by providing a user-accessible client (208)
`
`that is specially configured for instant voice message (IVM) and for direct
`
`communication over a packet-switched network (e.g., through an Ethernet card). Id.,
`
`12:13-14. More specifically, the '433 Patent teaches that certain clients (208) are
`
`specially configured to “listen[] to the input audio device 212,” “record[] the user’s
`
`speech into a digitized audio file 210 (i.e., instant voice message) stored on the IVM
`
`client 208,” and “transmit[] the digitized audio file 210” as packetized data (e.g.,
`
`using TCP/IP) over a packet-switched network (e.g., network 204) “to the local IVM
`
`server 202.” Id., 8:8-11 and 8:21-22.
`
`The Petition redundantly challenges two independent claims (1 and 6) and
`
`five dependent claims (2, 3, 4, 5, and 8). For the convenience of the Board,
`
`independent Claims 1 and 6 are reproduced below:
`
`1. A system comprising:
`an instant voice messaging application including a client
`platform system for generating an instant voice
`message and a messaging system for transmitting the
`instant voice message over a packet-switched network
`via a network interface;
`wherein the instant voice messaging application displays
`a list of or one or more potential recipients for the
`instant voice message;
`
`6
`
`
`
`IPR2017-00225
`U.S. Patent 8,995,433
`wherein the instant voice messaging application includes
`a message database storing the instant voice message,
`wherein the instant voice message is represented by a
`database record including a unique identifier; and
`wherein the instant voice messaging application includes
`a file manager system performing at least one of
`storing, deleting and retrieving the instant voice
`messages from the message database in response to a
`user request.
`
`
`
`
`
`
`6. A system comprising:
`an instant voice messaging application including a client
`platform system for generating an instant voice
`message and a messaging system for transmitting the
`instant voice message over a packet-switched network
`via a network interface;
`wherein the instant voice messaging application displays
`a list of one or more potential recipients for the instant
`voice message;
`wherein the instant voice messaging application includes
`a file manager system performing at least one of
`storing, deleting and retrieving the instant voice
`messages from a message database in response to a user
`request; and
`wherein the instant voice messaging application includes
`a compression/decompression system for compressing
`the instant voice messages to be transmitted over the
`packet-switched network and decompressing
`the
`instant voice messages received over the packet-
`switched network.
`
`7
`
`
`
`IPR2017-00225
`U.S. Patent 8,995,433
`III. THE PETITION PRESENTS UNJUSTIFIED REDUNDANCIES
`As shown in the table below, the Petition challenges the patentability of
`
`certain claims of the '433 Patent under 35 U.S.C. § 103(a) over the following
`
`redundant and cumulative grounds:
`
`Ground
`Petition
`IPR2017-00225 1
`2
`3
`
`4
`5
`
`Claims
`1, 2, 4, 8
`3
`5, 6
`
`Reference(s)
`Abburi3 & Holtzberg4
`Abburi, Holtzberg, & Vuori5
`Abburi, Holtzberg, & Logan6
`
`1, 2, 4, 5, 6, 8 Väänänen7 & Holtzberg
`3
`Väänänen, Holtzberg & Vuori
`
` The Redundant Challenges Are Not Entitled to Consideration
`
`The Board has long held that multiple grounds for unpatentability for the
`
`same claim will not be considered unless the petition itself explains the relative
`
`strengths and weaknesses of each ground. See Liberty Mut. Ins. Co. v. Progressive
`
`Cas. Ins. Co., No. CBM2012-00003 (P.T.A.B. Oct. 25, 2012), Paper 7; see also
`
`Ford Motor Co. v. Paice LLC et al., No. IPR2014-00570 (P.T.A.B. Nov. 26, 2014),
`
`Paper 17 (“[T]he proper focus of a challenge based on multiple grounds is not
`
`simply whether a difference exists between the grounds. Rather, the petitioner must
`
`explain some meaningful advantage for proceeding on multiple grounds in terms of
`
`
`3 Ex. 1005, U.S. Patent Application Publication No. 2003/0147512 (“Abburi”).
`4 Ex. 1007, U.S. Patent No. 6,625,261 (“Holtzberg”).
`5 Ex. 1009, U.S. Patent Application Publication No. 2002/0146097 (“Vouri”).
`6 Ex. 1008, U.S. Patent No. 5,732,216 (“Logan”).
`7 Ex. 1006, U.S. Patent No. 7,218,919 (“Väänänen”).
`
`8
`
`
`
`IPR2017-00225
`U.S. Patent 8,995,433
`their variant strengths and weaknesses as applied to the challenged claim.”). This is
`
`because “numerous redundant grounds would place a significant burden on the
`
`Patent Owner and the Board, and would cause unnecessary delays,” contrary to 37
`
`C.F.R. §42.1(b), which calls for the “just, speedy, and inexpensive resolution of
`
`every proceeding.” Id.
`
`The Board has recognized at least two types of impermissible redundancy:
`
`horizontal and vertical. Id. at 3. The Petition presents multiple unjustified instances
`
`of both types of redundancy; and those redundant challenges are not entitled to
`
`consideration.
`
`1.
`
`Petitioner Presents a Pair of Horizontally Redundant Grounds
`Against Each Challenged Claim
`The Petition on its face presents a pair of redundant grounds against each
`
`challenged claim of the '433 Patent. The redundant grounds principally differ in that
`
`Grounds 1-3 assert Abburi (Ex. 1005) as the primary reference in an obviousness
`
`combination, while Grounds 4-5, instead, assert Väänänen (Ex. 1006) as the primary
`
`reference.
`
`Petitioner impermissibly pursues what the Board refers to as horizontal
`
`redundancy. Horizontal redundancy occurs when multiple references are relied upon
`
`to “provide essentially the same teaching to meet the same claim limitation, and the
`
`associated arguments do not explain why one reference more closely satisfies the
`
`9
`
`
`
`IPR2017-00225
`U.S. Patent 8,995,433
`claim limitation at issue in some respects than another reference, and vice versa.”
`
`Liberty Mut., CBM2012-00003, Paper 7 at 3 (emphasis original).
`
`The Board’s unwillingness to consider references presented in a horizontally
`
`redundant manner demonstrates its aversion to art that is cumulative of other art
`
`presented to it, where the multiple references are essentially interchangeable and
`
`used to allegedly disclose the same claim features.
`
`It is Petitioner’s obligation to explain why the Board should institute trial on
`
`multiple redundant grounds. Id. As discussed herein, not only has Petitioner not met
`
`that obligation, it has not even attempted to provide explanations which would
`
`justify dedication of the Board’s resources toward analyzing redundant challenges.
`
`The Petition does not purport to articulate relative strengths and weaknesses
`
`between the pair of redundant grounds consistently asserted against each challenged
`
`claim. With respect to Claim 1, for example, the sole explanation for offering two
`
`redundant challenges is that “Abburi better teaches ‘storing … the instant voice
`
`messages … in response to a user request.” Pet. 3.8 Taking Petitioner at its word,
`
`and given that Petitioner does not even allege that Väänänen better teaches other
`
`language recited in Claim 1, Petitioner has effectively conceded it would be
`
`
`8 Notably, Petitioner does not state that Väänänen fails to disclose this limitation.
`Rather, Petitioner states “Väänänen’s disclosure relies in part on the knowledge of
`a POSITA.” Pet. at 3 (emphasis added). Petitioner later argues that Väänänen
`discloses the claim language (Pet. 58), thereby undercutting Petitioner’s own alleged
`distinction between Abburi and Väänänen.
`
`10
`
`
`
`IPR2017-00225
`U.S. Patent 8,995,433
`unnecessarily redundant to consider the proposed Väänänen-Holtzberg challenge to
`
`Claim 1 (under Ground 4).
`
`Apart from the above “storing” limitation, the only distinction Petitioner
`
`makes between Abburi and Väänänen that is applicable to independent Claim 6 (the
`
`only other independent claim challenged in the Petition) is that Väänänen
`
`purportedly “better teaches ‘compressing the instant voice messages’ and
`
`‘decompressing the instant voice messages.’” Pet. 3-4. The sole explanation
`
`Petitioner offers for that distinction is that “Väänänen explicitly recites that
`
`‘compression and cryptography methods may be employed with the data file and/or
`
`the packet stream.’ (Väänänen, 2:12-13).” Id.
`
`That explanation for the alleged distinction makes no sense in view of
`
`Petitioner’s observation that Abburi also “teaches compressing an audio message
`
`prior to transmitting to a selected recipient: ‘device 300 in one embodiment records
`
`an audio message provided by the user into a WAV file, compresses the file, and
`
`then routes it to the network interface 310 for transmission to the system 200.’
`
`(Abburi, [0040].).” Pet. 45. Petitioner’s own contentions undermines the alleged
`
`distinction between Abburi and Väänänen.
`
`It would appear, therefore, that Petitioner merely offered an illusory
`
`distinction between Abburi and Väänänen in a desperate attempt to avoid having the
`
`Board dismiss the redundant challenge against independent Claim 6. As is the case
`
`11
`
`
`
`IPR2017-00225
`U.S. Patent 8,995,433
`with Claim 1, Petitioner has not expressed any real relative weakness for both
`
`Abburi and Väänänen. Consequently, the horizontally redundant challenge against
`
`Claim 6 is not entitled to consideration. See Ford Motor Co., No. IPR2014-00570,
`
`Paper 17.
`
`The other distinctions Petitioner offers apply only to dependent claims and
`
`are of no moment to the extent the Board finds the challenges against the
`
`independent Claims 1 and 6 have horizontal redundancies.
`
`Accordingly, at a minimum, the Board should deny Grounds 4-5 as redundant
`
`with Grounds 1-3, and thus not entitled to consideration, for at least the following
`
`reasons: (1) Petitioner identifies Abburi as having a relative strength, but no relative
`
`weakness, with respect to independent Claim 1; (2) that same purported strength of
`
`Abburi also applies to independent Claim 6; (3) Petitioner offers only an illusory
`
`“strength” of Väänänen over Abburi that is relevant, if at all, to independent Claim
`
`6 only; and (4) Petitioner undermines that illusory distinction by presenting
`
`inconsistent arguments. Petitioner’s paired horizontal redundancies are further
`
`compounded by vertical redundancies, as explained in the following section.
`
`2.
`Petitioner Also Presents Vertically Redundant Theories
`Petitioner repeatedly attempts to introduce vertically redundant theories with
`
`the ambiguous statement “to the extent [a partial combination of reference(s)] does
`
`not explicitly teach or suggest” certain claim language, then the language is obvious
`
`12
`
`
`
`IPR2017-00225
`U.S. Patent 8,995,433
`in view of a fuller combination that includes additional references. Pet. 27, 37, 45,
`
`58, and 71. For example, Petitioner argues “[t]o the extent that Abburi does not
`
`explicitly teach that the audio message is stored in a database at user device 300,
`
`storing voice messages in a database was well-known in the prior art, e.g., as
`
`explicitly taught in Holtzberg.”
`
`It is unclear whether Petitioner offers that example statement as a concession
`
`concerning what Abburi fails to explicitly disclose or, instead, as an introduction to
`
`a “backup” argument in the event the Board rejects the implicit allegation that
`
`Abburi alone renders obvious the claim language at issue. At least in this example,
`
`Petitioner appears to offer the “to the extent that …” statement as a concession,
`
`because the Petition does not even purport to identify any explicit disclosure in
`
`Abburi of an audio message stored in a database at user device 300. But neither the
`
`Board nor Patent Owner should e required to speculate as to the intent of such
`
`ambiguous “to the extent …” statements in the Petition, which invoke vertical
`
`redundancy concerns.
`
`Vertical redundancy “involves a plurality of prior art applied both in partial
`
`combination and in full combination. In the former case, fewer references than the
`
`entire combination are sufficient to render a claim obvious, and in the latter case the
`
`entire combination is relied on to render the same claim obvious.” Liberty Mut.,
`
`CBM2012-00003, Paper 7 at 3. In such instances where a larger group of relied upon
`
`13
`
`
`
`IPR2017-00225
`U.S. Patent 8,995,433
`references and a subset thereof are both alleged to be sufficient to render a claim
`
`obvious, “[t]here must be an explanation of why the reliance in part may be the
`
`stronger assertion as applied in certain instances and why the reliance in whole may
`
`also be the stronger assertion in other instances.” Id. (emphasis in original).
`
`If one of the alternative grounds is better from all perspectives, then the Board
`
`should only consider the stronger ground and not burden the Patent Owner and the
`
`Board with the weaker ground. Further, if there is no difference in the grounds, the
`
`Petitioner should only assert one of the grounds. Id. at 12. “Only if the Petitioner
`
`reasonably articulates why each ground has strength and weakness relative to the
`
`other should both grounds be asserted for consideration.” Id.
`
`Petitioner makes no effort to justify its vertically redundant theories by
`
`explaining why “the reliance in part [e.g., on the primary reference alone] may be
`
`the stronger assertion as applied in certain instances and why the reliance in whole
`
`[e.g., the full combination of identified references] may also be the stronger
`
`assertion in other instances.” Id. Rather, in each instance of vertical redundancy,
`
`Petitioner simply suggests that “to the extent” the Board does not adopt an initial
`
`theory based on a single reference or partial combination, then a fuller combination
`
`provides a backup argument (albeit one that is vertically redundant and meritless).
`
`14
`
`
`
`IPR2017-00225
`U.S. Patent 8,995,433
`The Board in Eizo Corp. v. Barco N.V.9 flatly rejected a similar attempt to
`
`hedge bets and unnecessarily multiply the work of both the Board and the Patent
`
`Owner. The Board there found insufficient the petitioner’s “conclusory assertion”
`
`that “[t]o the extent [the first prior art reference] may not explicitly teach” the
`
`limitation, the second prior art reference “explicitly teaches this limitation.” The
`
`Board explained that “such an assertion fails to resolve the exact differences sought
`
`to be derived from” the second prior art reference. Id. (finding that petitioner had not
`
`shown a reasonable likelihood of prevailing on that ground).
`
`
`
`Väänänen is Cumulative with the Prosecution Record
`
`Yet another procedural defect of redundant Grounds 4 and 5 is that the
`
`Väänänen reference is cumulative with the prosecution record for this patent family.
`
`Under 35 U.S.C. § 325(d), the Board need not and should not second-guess issues
`
`of patentability that the Office addressed before issuing this patent. Specifically,
`
`§ 325(d) authorizes the Office to reject grounds for inter partes based on the same
`
`prior art previously presented to the Office:
`
`In determining whether to institute or order a proceeding under
`this chapter, chapter 30, or chapter 31, the Director may take
`into account whether, and reject the petition or request because,
`the same or substantially the same prior art or arguments
`previously were presented to the Office.
`
`
`
`
`9 IPR2014-00358, Paper 11 (P.T.A.B. July 23, 2014).
`
`15
`
`
`
`IPR2017-00225
`U.S. Patent 8,995,433
`
`35 U.S.C. § 325(d) (emphasis added).
`
`The Examiner considered the same Väänänen (also published as U.S. Patent
`
`Application Pub. No. 2004/00114456) as early as October 18, 2011 during
`
`prosecution of U.S. Patent No. 8,243,723, which is the grandparent patent from
`
`which the '433 Patent claims priority. See Apple Inc. v. Uniloc Luxembourg S.A.,
`
`No. IPR2017-00222 (P.T.A.B. Nov. 14, 2016), Ex. 1002 ('723 File History) at 56.
`
`Under M.P.E.P. ch. 609.02, “[w]hen filing a continuing application that
`
`claims benefit under 35 U.S.C. 120 to a parent application (other than an
`
`international application that designated the U.S.), it will not be necessary for the
`
`applicant to submit an information disclosure statement in the continuing
`
`application that lists the prior art cited by the examiner in the parent application
`
`unless the applicant desires the information to be printed on the patent issuing from
`
`the continuing application (for continued prosecution applications filed under 37
`
`CFR 1.53(d), see subsection A.1. below). The examiner of the continuing
`
`application will consider information which has been considered by the Office in
`
`the parent application.”
`
`Consistent with that instruction, an Information Disclosure Statement was
`
`filed on March 24, 2014, during prosecution of the application that issued as the
`
`'433 Patent, to make certain that the same Väänänen disclosure (published as U.S.
`
`16
`
`
`
`IPR2017-00225
`U.S. Patent 8,995,433
`Patent Application Pub. No. 2004/00114456) would appear on the face of the issued
`
`patent. Ex. 1002 ('433 File History) at 184.
`
`Accordingly, § 325(d) confirms the Petitioner’s reliance on Väänänen is both
`
`redundant and cumulative with the same prior art considered by the Examiner during
`
`prosecution of the '433 Patent.
`
`It is significant that Petitioner ignores § 325(d) altogether and makes no
`
`attempt to explain why its cumulative reliance on Väänänen does not invoke that
`
`statute. See Baker Hughes Oilfield Operations, Inc. v. Smith International, Inc., No.
`
`IPR2016-01450 (P.T.A.B. Dec. 22, 2016), Paper 10 at 10-11 (finding the reliance
`
`on references previously presented to the Office was not entitled to consideration
`
`due to “the failure of Petitioner to address the impact of § 325(d)”).
`
`
`
`Petitioner’s Abusive Pattern of Redundancy is Improper
`
`Petitioner has exhibited an abusive pattern of redundancy in each of the six
`
`petitions it filed the same week against the same family of patents.10 Considering
`
`those six petitions on their face, Petitioner admittedly offers multiple horizontally
`
`redundant grounds against every challenged claim (65 challenged claims in total).
`
`That redundancy is further compounded by rampant vertically redundant arguments
`
`contained within each petition (which may not be apparent on the face of the
`
`
`10 See, e.g., IPR2017-0220, IPR2017-00221, IPR2017-00222, IPR2017-00223,
`IPR2017-00224 and IPR2017-00225.
`
`17
`
`
`
`IPR2017-00225
`U.S. Patent 8,995,433
`petitions). Yet in every instance Petitioner offers only an illusory explanation for
`
`certain horizontally redundant challenges; and Petitioner makes no attempt to justify
`
`any of the myriad of vertically redundant challenges.
`
`Petitioner further compounds its error by repeatedly relying on cumulative
`
`references that the Examiner expressly cited and considered during prosecution of
`
`the application that issued as the challenged patent. In every instance, Petitioner
`
`neglects to inform the Board that the reference is cumulative with the prosecution
`
`history and makes no attempt to explain why the Board should not reject such
`
`cumulative arguments under 35 U.S.C. § 325(d).
`
`Given the consistent pattern of unjustified redundancy across all six petitions,
`
`it appears the Petitioner has the false perception that multiplying patentability
`
`challenges (for whatever reason) somehow multiplies the chances that the Board
`
`might institute trial. Or, perhaps Petitioner mistakenly believes that the Board will
`
`be inclined to consider all redundant arguments and “split the baby” by instituting
`
`trial for whichever redundant argument is deemed strongest. In either case,
`
`Petitioner has misunderstood precedent.
`
`The Board does not award such gamesmanship with an increased probability
`
`of institution, but rather it repeatedly and consistently declines to consider
`
`unjustified redundant arguments altogether, for the well-articulated reasons set forth
`
`in Liberty Mutual. Even King Solomon (acting as judge) had no intention of
`
`18
`
`
`
`IPR2017-00225
`U.S. Patent 8,995,433
`“splitting the baby,” but rather he wisely understood that threatening such an
`
`extreme solution would expose which party was being disingenuous.
`
`IV. NO REASONABLE LIKELIHOOD THAT AT LEAST ONE OF THE
`CHALLENGED CLAIMS IS UNPATENTABLE
`For the reasons presented above, the Board need not and should not reach the
`
`merits of the redundant grounds presented in the Petition. While Patent Owner has
`
`explained why Grounds 4-5 should be rejected as being impermissibly redundant
`
`with Grounds 1-3, Patent Owner nevertheless identifies herein substantive
`
`deficiencies found in all grounds presented in the Petition. Patent Owner offers this
`
`additional analysis out of an abundance of caution and to further demonstrate the
`
`futility of the Petition.
`
`Petitioner has the burden of proof to establish they are entitled to their
`
`requested relief. 37 C.F.R. § 42.108(c). Because the Petition only presents theories
`
`of obviousness, Petitioner must demonstrate a reasonable likelihood that at least one
`
`of the challenged patent claims would have been obvious in view of the art cited in
`
`the Petition. Petitioner “must specify where each element of the claim is found in
`
`the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4).
`
`The Board should reject any non-redundant, non-cumulative grounds that remain (if
`
`any) because Petitioner fails to meet this burden.11
`
`
`11 While certain deficiencies in the Petition are addressed herein, Patent Owner
`hereby expressly reserves the right to address other deficiencies of the Petition in a
`
`19
`
`
`
`IPR2017-00225
`U.S. Patent 8,995,433
`
` Claim Construction
`
`1.
`“displays at least one of the plurality of instant voice messages”
`The only phrase Petitioner identifies for construction, “displays at least one of
`
`the plurality of instant voice messages,” requires no construction and should be
`
`accorded its plain and ordinary meaning.12
`
`The Board need not resolve the dispute concerning this phrase because Petition
`
`fails to present a case of prima facie obviousness for independent Claim 1 and the
`
`term proposed for construction appears only in challenged dependent Claim 3. See
`
`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.”). Nevertheless, Patent Owner explains herein
`
`why Petitioner’s proposed construction is not the broadest reasonable interpretation.
`
`Petitioner seeks to construe “displays at least one of the plurality of instant
`
`voice messages” (as recited in dependent Claim 3) to mean “displaying the content
`
`or identifying information of at least one of the plurality of instance voice messa
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
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.
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.
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
