UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FACEBOOK, INC., WHATSAPP INC., HUAWEI DEVICE CO., LTD., LG
`ELECTRONICS, INC., and APPLE INC.,
`Petitioner,
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`v.
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`UNILOC 2017 LLC,
`Patent Owner
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`Case IPR2017-01667
`Patent 8,724,622 B2
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`FACEBOOK, INC., WHATSAPP INC., and APPLE INC.,
`Petitioner,
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`v.
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`UNILOC 2017 LLC,
`Patent Owner
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`Case IPR2017-01668
`Patent 8,724,622 B2
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`PATENT OWNER’S REQUEST FOR
`REHEARING UNDER 37 C.F.R. § 42.71(D)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FACEBOOK, INC., WHATSAPP INC., HUAWEI DEVICE CO., LTD., LG
`ELECTRONICS, INC., and APPLE INC.,
`Petitioner,
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`v.
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`UNILOC 2017 LLC,
`Patent Owner
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`
`Case IPR2017-01667
`Patent 8,724,622 B2
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`FACEBOOK, INC., WHATSAPP INC., and APPLE INC.,
`Petitioner,
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`v.
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`UNILOC 2017 LLC,
`Patent Owner
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`
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`
`
`Case IPR2017-01668
`Patent 8,724,622 B2
`
`
`PATENT OWNER’S REQUEST FOR
`REHEARING UNDER 37 C.F.R. § 42.71(D)
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`IPR2017-01667
`IPR2017-01668
`Patent 8,243,723 B2
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`In response to the Final Written Decision entered January 16, 2019 (Paper 37)
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`and pursuant to 37 CFR § 42.71(d), Patent Owner hereby respectfully request a
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`rehearing and reconsideration by the Patent Trial and Appeal Board of its Final
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`Decision.
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`I.
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`APPLICABLE STANDARDS
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`“A party dissatisfied with a decision may file a request for rehearing, without
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`prior authorization from the Board.” 37 C.F.R. §42.71(d). “The request must
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`specifically identify all matters the party believes the Board misapprehended or
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`overlooked, and the place where each matter was previously addressed in a motion,
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`an opposition, or a reply.” Id. The Board reviews a decision for an abuse of
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`discretion. 37 C.F.R. §42.71(c).
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`Claim construction is a question of law. Markman v. Westview Instruments,
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`52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). In an inter
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`partes review, claim terms in an unexpired patent are interpreted according to their
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`broadest reasonable construction in light of the specification of the patent in which
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`they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct.
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`2131, 2142 -46 (2016).
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`2
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`IPR2017-01667
`IPR2017-01668
`Patent 8,243,723 B2
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`II. ARGUMENT
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`A. The Board misapplied its construction of “instant voice message”.
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`Patent Owner respectfully submits that the Board misapprehended the proper
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`application of its construction of “instant voice message”. In its decision, the Board
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`accepted Patent Owner’s definition, properly construing “instant message” as “data
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`content including a representation of an audio message.” Paper 37 at 15. The Board
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`correctly recognized that the “content” of the message refers to “user’s speech . . .
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`in some digitized form.” Id. at 16 (“These embodiments, thus, paint a picture of the
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`‘instant voice message’ as first and foremost being the content of the message, or
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`the user’s speech, in some digitized form.”) (emphasis added); id. at 17 (“In all
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`embodiments, the ‘instant voice message’ refers, at a minimum, to the digitized
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`speech, regardless of whether it is contained in an audio file, successive portions
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`stored in a buffer, or a block of data in an object field.”).
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`Claim 27 requires that the “instant voice message application includes a
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`document handler system for attaching one or more files to the instant voice
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`message.” See Paper 37 at 19. Substituting in the Board’s construction yields
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`“instant voice message application includes a document handler system for
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`attaching one or more files to [data content including a representation of an audio
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`message].”
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`3
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`IPR2017-01667
`IPR2017-01668
`Patent 8,243,723 B2
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`Rather than apply this construction, however, the Board held that its claim
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`construction “does not resolve all the disputes surrounding the term because Patent
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`Owner also argues that attaching files to an ‘instant voice message’ must be limited
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`to attachments to the data content itself.” Id. The Board later stated “we determine
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`that Patent Owner has not shown that the specification supports its narrow position
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`that the recited attachment to an ‘instant voice message’ involves a direct attachment
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`to only the data content.” Id. at 22 (emphasis added).
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`This was error. Having won on claim construction that instant voice message
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`means “data content,” it was not then Patent Owner’s burden to defend that
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`construction in application. Rather, it was Petitioner’s burden to show “attaching
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`one or more files to [data content including a representation of an audio
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`message].” This Petitioner did not do. It could not do so because it is undisputed
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`that Zydney does not disclose attaching one or more files to “data content,” which
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`the Board characterized as “user’s speech . . . in some digitized form.”
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`B. The Board applied the definition of “instant voice message” in a manner
`never urged by any party.
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`The Board also erred in suggesting this deficiency is somehow cured by
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`substituting the term “attaching” with, instead, the word “associating.”1 Even if the
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`1 Patent Owner does not hereby waive its objection to the improper construction of
`“attaching” to mean “associating”. Even accepting this erroneous construction of
`“attaching,” however, the Board’s correct construction of “instant voice message” –
`properly applied – should be dispositive in Patent Owner’s favor.
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`4
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`IPR2017-01667
`IPR2017-01668
`Patent 8,243,723 B2
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`Petition had attempted to defend such a claim construction with supportive argument
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`and evidence, and it does not, Petitioner nevertheless has still failed to prove
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`“[associating] one or more files to [data content]”—i.e., to the digitized speech.
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`In applying its construction of “instant voice message,” the Board advanced
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`an argument on behalf of Petitioner sua sponte. Paper 37 at 22 (“we determine that
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`Patent Owner has not shown that the specification supports its narrow position that
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`the recited attachment to an ‘instant voice message’ involves a direct attachment to
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`only the data content.”). No party argued that “associating” A to B is satisfied by
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`associating A to C (a distinct and separately-generated container for B).
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`It was Petitioner’s burden, not Patent Owner’s, to defend such a construction
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`and to prove invalidity under such a construction. A Board must evaluate the
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`Petition’s arguments as presented. See In re Magnum Oil Tools Int’l, Ltd., 829 F.3d
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`1364, 1380–81 (Fed. Cir. 2016) (rejecting an argument that the Board properly
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`“ma[de] an obviousness argument on behalf of [petitioner]” that “could have been
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`included in a properly-drafted petition,” because “petitioner . . . bears the burden of
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`proof” and, thus, the Board “must base its decision on arguments that were advanced
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`by a party, and to which the opposing party was given a chance to respond,” and is
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`not “free to adopt arguments on behalf of petitioners” (citations omitted)).
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`5
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`IPR2017-01667
`IPR2017-01668
`Patent 8,243,723 B2
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`By applying the construction of “instant voice message” in a way never urged
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`by Petitioner, the Board advanced an argument for Petitioner sua sponte, thereby
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`misapprehending the proper burden of persuasion and violating In re Mangum.
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`III.
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` CONCLUSION
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`In view of the foregoing, Patent Owner respectfully requests that the Board
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`grant a rehearing and reconsider its Final Written Decision.
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`Date: February 15, 2019
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`/s/ Brett A. Mangrum
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`Brett A. Mangrum
`brett@etheridgelaw.co
`m Reg. No. 64,783
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`Counsel for Patent Owner
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that the foregoing was served electronically on
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`February 15, 2019 on the following counsel of record for Petitioner at the below-
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`listed email address:
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`IPR2017-01667
`IPR2017-01668
`Patent 8,243,723 B2
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`Date: February 15, 2019
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`/Brett A. Mangrum/
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`Brett A. Mangrum
`brett@etheridgelaw.co
`m Reg. No. 64,783
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`Counsel for Patent Owner
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`7
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