Paper No. 32
`
`Trials@uspto.gov
` Filed: September 21, 2018
`571.272.7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC., WHATSAPP INC., LG ELECTRONICS, INC.,
`HUAWEI DEVICE CO., LTD., and APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01667 (Patent 8,724,622 B2)
`__________________________________
`
`FACEBOOK, INC., WHATSAPP INC., and APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LCC,
`Patent Owner.
`
`____________
`
`Case IPR2017-01668 (Patent 8,724,622 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
`
`
`
`
`
`
`Trials@uspto.gov
` Filed: September 21, 2018
`571.272.7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC., WHATSAPP INC., LG ELECTRONICS, INC.,
`HUAWEI DEVICE CO., LTD., and APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01667 (Patent 8,724,622 B2)
`__________________________________
`
`FACEBOOK, INC., WHATSAPP INC., and APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LCC,
`Patent Owner.
`
`____________
`
`Case IPR2017-01668 (Patent 8,724,622 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
`
`
`
`
`
`
`IPR2017-01667
`IPR2017-01668
`Patent 8,724,622 B2
`On August 30, 2018, we held the oral argument for the above-
`captioned cases.1 During the argument, 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 the captioned
`cases, 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,
`19−20 (Paper 8, IPR2017-01667); see also Decision on Institution, 23
`(Paper 8, IPR2017-01668). Patent Owner’s Response proposes that the
`Board construe “instant voice message” as “an audio file recording voice
`data.” See IPR2017-01667, Paper 17, 12−13 (arguing lexicography because
`of the repeated use of “i.e.” in certain embodiments). Petitioner’s Reply
`
`
`1 For IPR2017-01667, the transcript of the oral argument is filed as Paper 31,
`and for IPR2017-01668, the transcript of the oral argument is filed as Paper
`29 (“Tr.”).
`
`
`
`2
`
`
`
`IPR2017-01667
`IPR2017-01668
`Patent 8,724,622 B2
`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 IPR2017-01667, Paper 24,
`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
`would not map to Zydney’s voice container, asserted by Petitioner to be the
`
`2 Zydney is PCT Application Publication No. WO 01/11824 A2, published
`February 15, 2001, and filed in IPR2017-01667 as Exhibit 1003 and in
`IPR2017-01668 as Exhibit 1103.
`
`
`
`3
`
`
`
`IPR2017-01667
`IPR2017-01668
`Patent 8,724,622 B2
`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
`
`
`
`IPR2017-01667
`IPR2017-01668
`Patent 8,724,622 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
`
`Jason D. Eisenberg
`Michael D. Specht
`Trent W. Merrell
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`jasone-PTAB@skgf.com
`mspecht-PTAB@skgf.com
`tmerrell-PTAB@skgf.com
`
`
`
`
`
`5
`
`
`
`IPR2017-01667
`IPR2017-01668
`Patent 8,724,622 B2
`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
`
`Sean D. Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`
`
`6
`
`
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
