UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FACEBOOK, INC., ET AL.
`Petitioner
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`v.
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`UNILOC LUXEMBOURG S.A.,
`Patent Owner
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`IPR2017-01428, -1667, and -1668
`U.S. Patent Nos. 8,995,433 and 8,724,622
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`PATENT OWNER RESPONSE TO PETITIONER’S SUPPLEMENTAL
`CLAIM CONSTRUCTION BRIEF
`PURSUANT TO BOARD’S ORDER
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`I.
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`Responsive Supp. Claim Construction Brief
`U.S. Patent Nos. 8,995,433 and 8,724,622
`Petitioner’s citations to the intrinsic evidence undermine the Petition
`Petitioner’s supplemental claim construction brief grossly mischaracterizes
`the specification of the challenged patents as purportedly disclosing that the “instant
`voice message” term is directed to data structure, as opposed to data content. See,
`e.g., IPR2017-01428, Paper 37 (“Br.”).1 Moreover, the passages Petitioner identifies
`as allegedly supporting its construction expressly refute Petitioner’s theory.
`Petitioner first concedes that in the “record mode” embodiment, “the instant
`voice message is an ‘audio file.”” Id. at 1 (underlining and emphasis added).
`Regardless whether the disclosed “audio file 210” is more accurately characterized
`as “a data structure” or “data content,” the record contains no proof that Zydney
`discloses attaching one or more files to an audio file itself. Indeed, the PTAB has
`repeatedly addressed this same validity challenge and rejected it: “We agreed with
`Patent Owner in [IPR2017-01257, Paper 8 at 18] 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.” IPR2017-02085, Paper 11 at 19 (applying a fortiori the conclusion in
`IPR2017-01257) (emphasis added). The admitted lexicographic description of the
`“instant voice message” in the “record mode” embodiment, therefore, only confirms
`that there is no proof of obviousness here.
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`1 For the sake of brevity and simplification, in its supplemental briefing Ordered by
`the Board, Patent Owner has offered citations only to the ’433 patent and the briefing
`addressing the same in IPR2017-01428. It should be apparent, however, that in each
`instance analogous citations can be made to the ’622 patent (which shares a
`specification in common) and to analogous (if not identical) arguments raised in the
`briefing in related-matters IPR2017-01667 and IPR2017-01668.
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`1
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`Responsive Supp. Claim Construction Brief
`U.S. Patent Nos. 8,995,433 and 8,724,622
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`Petitioner next alleges that the “intercom mode” embodiment supports
`Petitioner’s theory ostensibly because the specification states “one or more buffers
`are used to automatically write successive portions of the instant voice message.”
`Br. 2 (citing ’433 patent, 21:13‒15 and 21:45-47). Petitioner overlooks, however,
`the explicit description (in the very lines Petitioner cites) that the “instant voice
`message” is “the content of the first buffer” and that only “the content . . .” (described
`as “input audio”) “. . . is automatically transmitted to the IVM server 202.” ’433
`patent, 21:13‒21 (emphasis added); see also id. 11:41‒45 (same).2 To the extent one
`or more files may be attached, therefore, they must be attached to “the content” that
`is transferred. Id. This also refutes Petitioner’s reliance on Zydney’s “voice
`container” (which Zydney expressly distinguishes from its “voice data” or
`“message”) for the “attaches” and “attaching” limitations recited in independent
`claims 9 and 27 of the ’433 and ’622 patents, respectively.
`Petitioner also collects an assortment of claim recitations and argues, without
`explanation or evidentiary support, that the quoted language supports Petitioner’s
`theory. Br. 2‒3. The Board should not be expected to piece together how the quoted
`language allegedly fits into Petitioner’s theory, nor should the Board raise arguments
`on behalf of Petitioner concerning this language that Petitioner failed itself to
`articulate. In re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016).
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`2 To be clear, the specification does not describe the “buffer” as a data structure that
`is transmitted along with the content; and, indeed, the couplet “data structure”
`appears nowhere in the specification. Rather, the buffer is simply a memory location
`used to temporarily “write successive portions of the instant voice message” to
`facilitate transmitting only the “the content” (i.e., the instant voice message), a
`portion at a time. Id. Petitioner fails to prove otherwise with evidentiary support.
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`2
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`Responsive Supp. Claim Construction Brief
`U.S. Patent Nos. 8,995,433 and 8,724,622
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`In any event, the newly cited claim language does not advance Petitioner in
`its burden of proof. For example, that claim 9 of the ’433 recites both “transmitting
`the instant voice message” and “attaches one or more files to the instant voice
`message” does not mean that the attachment must be made to a “data structure”
`(a couplet that does not appear in the specification), as opposed to what the
`specification consistently describes as “the content” that is transmitted. Petitioner’s
`emphasis on the “buffer” claim language recited in certain dependent claims as also
`only helpful to Patent Owner. Br. 2‒3. Those dependent claims explicitly recite,
`consistent with the written description, that what is transmitted is “the content of a
`first buffer.” See, e.g., ’433 patent, 26:5 (emphasis added).
`Petitioner next makes passing reference to the “message object” embodiment
`of the ’433 patent. Br. 3. As detailed in Patent Owner’s opening supplemental brief
`(see, e.g., IPR2017-01428, Paper 36, at §III, pp. 6‒7), that passage teaches that the
`instant voice message is “[t]he content of the object field” and is “carried” by a
`distinct “message object” merely to facilitate communicating with a server. ’433
`patent, 14:39‒42 (emphasis added).3 This explicit distinction between the “message
`object” and the “instant voice message” described as “[t]he content of the object
`field” further confirms Zydney’s “voice container” is distinguishable from the
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`3 Petitioner appears to contrast the written description of the “message object”
`embodiment with what is recited in independent claim 3 of the ’622 patent. Br. 3
`(“The claims, however, . . . .”) (emphasis added). Patent Owner addressed in its
`supplemental brief why the modifying limitations of claim 3 should not be imputed
`to other independent claims, but rather it is the written description that is controlling
`for the “attaches” and “attaching” limitations recited in claims 9 and 27 of the ’433
`and ’622 patents, respectively. See, e.g., IPR2017-01428, Paper 36, at §III, pp. 6‒7.
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`3
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`Responsive Supp. Claim Construction Brief
`U.S. Patent Nos. 8,995,433 and 8,724,622
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`claimed “instant voice message” for the “attaches” and “attaching” limitations.
`Finally, Petitioner argues that a content-based construction would somehow
`preclude attaching one or more files to the disclosed audio file 210 and therefore
`excludes the “record mode” embodiment. Br. 5. Petitioner is wrong. As detailed
`above (and in Patent Owner’s opening supplemental brief), the specification teaches
`that the “instant voice message” may be generated at a client as an audio file and
`then communicated to a server as “the content” of an object field of a message object.
`This appears to be undisputed. It follows, under the explicit wording of the written
`description, that a content-based construction would not exclude attaching one or
`more files to an audio file (i.e., the instant voice message in this scenario) expressly
`described as being “the content” of the object field. Nevertheless, this scenario is
`distinguishable from Zydney at least because the attachment is made to the audio
`file itself, which the PTAB has repeatedly found Zydney does not disclose.
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`II.
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`Petitioner’s new attempt to equate Zydney’s “voice container” with the
`audio file 210 of the challenged patents is untimely and unavailing
`Petitioner improperly attempts to advance the new attorney argument, void of
`any expert testimony support or other citation to previously submitted argument and
`evidence, that Zydney’s voice container is itself a “file” that is somehow analogous
`to the audio file 210 disclosed in the specification of the challenged patents (and thus
`file attachment to Zydney’s voice container is purportedly the same as file
`attachment to the audio file 210 disclosed in the challenged patents). Br. 6–7.4
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`4 Petitioner’s sole basis for its new theory is unexplained citations to “Fig. 8 (item
`1.2.4), Fig. 7 (item 1.1.5).).” Id. The shorthand text Petitioner focuses on from those
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`4
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`Responsive Supp. Claim Construction Brief
`U.S. Patent Nos. 8,995,433 and 8,724,622
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`Setting aside the untimeliness of this new and unsupported theory, it is wrong. As
`noted above, the Board has had ample opportunity to scrutinize Zydney and has
`repeatedly found it “disclose[s] attaching additional files (e.g., a multimedia file) to
`a voice container, rather than to an audio file.” IPR2017-02085, Paper 11 at 19.
`There simply is insufficient proof to conclude Zydney’s voice container is the
`same as the audio file 210 disclosed in the challenged patents (either structurally or
`otherwise). On the contrary, both testifying experts agreed that the Zydney
`application (which never issued as a patent) discloses that its voice container and
`voice message are distinct, separately-generated elements. See, e.g., IPR2017-
`01428, Paper 21 (Patent Owner Response) at 16‒22 (citing, inter alia, EX2001 ¶¶
`65–68, 73–74, 85, 90–95 and EX1102 ¶ 54). It is also undisputed that Zydney’s
`voice container is used only for transport and thereafter is discarded (unlike the audio
`file 210). Id. (citing, inter alia, EX2001 ¶ 67‒72 and Zydney, at pp. 10‒11).
`Zydney’s voice container also bears no resemblance to the disclosed audio file that
`is itself generated as result of recording the user’s speech, audibly playable,
`re-recordable, etc., which are all defining features described in the specification and
`recited in various claims. Petitioner’s new and untimely theory should be rejected.
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`Date: October 1, 2018
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`Respectfully submitted,
`By: /s/ Brett A. Mangrum
`Brett A. Mangrum; Reg. No. 64,783
`Counsel for Patent Owner
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`citations is unavailing because Zydney does not describe its file attachment with
`reference to either ambiguous phrase “the voice container file” or “the file structure
`of the container.” Given that Zydney provides no written description for either block
`1.2.4 or 1.1.5, one can only guess as to whether Zydney is referring to the container
`itself, to a file transported within or attached to the container, or to something else.
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`5
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`Responsive Supp. Claim Construction Brief
`US. Patent Nos. 8,995,433 and 8,724,622
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that an electronic
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`copy of the foregoing supplemental brief was served via the Patent Review
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`Processing System (PRPS) and/or via email to Petitioners’ counsel of record at the
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`following address:
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`PETITIONERS LEAD COUNSEL
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`PETITIONERS BACK-UP COUNSEL
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`Phillip E. Morton (Reg- No- 57,835)
`pmorton@cooley.com
`zpatdcdocketing@cooley.com
`COOLEY LLP
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`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
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`Heidi L. Keefe (Reg. No. 40,673)
`hkeefe@cooley-com
`zpatdcdocketing@cooley.com
`COOLEY LLP
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`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
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`Washington, DC 20004
`Washington DC. 20004
`Tel: (650) 843-5001
`Tel: (703) 456—8668
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`Fax: 650 849—7400
`Fax: 703 456—8 100
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`Date: October 1, 2018
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`Respectfully submitted,
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`By: /s/ Brett A. Maxim
`Brett A- Mangrum
`Attorney for Patent Owners
`Reg. No. 64,783
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