UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FACEBOOK, INC. and WHATSAPP, INC.,1
`Petitioners
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
`
`
`IPR2017-01668
`PATENT 8,724,622
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`PATENT OWNER OPENING BRIEF ON REMAND
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`1 Apple Inc., which filed a petition in Case IPR2018-00580, was previously joined
`as a petitioner but is no longer a party to this proceeding. See Order Conduct of
`Proceeding, Paper 42, n.2 and n.3. LG Electronics, Inc. and Huawei Device Co.,
`Ltd. also filed a motion for joinder and petition in IPR2017-02090.
`
`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`FACEBOOK, INC. and WHATSAPP, INC.,1
`Petitioners
`
`v.
`
`
`
`
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
`
`
`IPR2017-01668
`PATENT 8,724,622
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`
`PATENT OWNER OPENING BRIEF ON REMAND
`
`
`
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`1 Apple Inc., which filed a petition in Case IPR2018-00580, was previously joined
`as a petitioner but is no longer a party to this proceeding. See Order Conduct of
`Proceeding, Paper 42, n.2 and n.3. LG Electronics, Inc. and Huawei Device Co.,
`Ltd. also filed a motion for joinder and petition in IPR2017-02090.
`
`
`
`IPR2017-01668
`U.S. Patent 8,724,622
`
`Patent Owner submits the following brief pursuant to the Board’s Order
`(Paper 42) and in view of the Federal Circuit decision vacating and remanding for
`further consideration the Board’s determinations with respect to claims 4 and 5 of
`U.S. Patent No. 8,724,622 (“the ’622 patent”). Uniloc 2017 LLC v. Facebook, Inc.,
`Nos. 2019-2159, -2162, 2021 WL 5370480 (Fed. Cir. Nov. 18, 2021) (“Uniloc”).
`The overarching issue on remand is whether Petitioner had established that
`the “instant voice message” recited in claims 4 and 5 is rendered obvious by a
`combination of Zydney and Hethmon, in which an HTTP request message allegedly
`would transport Zydney’s voice container using Hethmon’s POST method. Uniloc,
`*12, 15-17. A review of the record reveals Petitioner did not meet its burden.
`Petitioner’s theory incorrectly equated the claimed “instant voice message”
`with a modified HTTP request message as a whole. The record reveals patentable
`distinctions. This issue squarely invokes, and should be deemed resolved by, the
`claim construction dispute the parties addressed during trial (in supplemental
`briefing) concerning the “instant voice message” term. Papers 31-34. In its briefing,
`Patent Owner summarized the claim construction dispute over this term as follows:
`The parties essentially dispute whether the term “instant voice
`message” . . . is directed to data content or, instead, to data
`structure. Petitioner advances a structure-based construction to
`broaden the scope of “instant voice message” to encompass a
`separately-generated structural container, even if it is used only
`to transport the voice data and then is subsequently discarded.
`Paper 31, 1 (boldface and underlining added, emphasis original).
`The Board resolved the claim construction dispute in Patent Owner’s favor.
`Paper 35, 15. In its Final Written Decision, the Board adopted Patent Owner’s
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`1
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`IPR2017-01668
`U.S. Patent 8,724,622
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`construction of “‘instant voice message’ to mean ‘data content including a
`representation of an audio message.’” Id. The Board rejected and distinguished
`Petitioner’s counterproposal, “a data structure including a representation of an
`audible message.” Id., 17 (emphasis by Board). This remains the law of the case.
`The Petition remains tainted by its application of an erroneous and rejected
`claim construction. Petitioner asserted that Hethmon’s HTTP request message as a
`whole (if modified to transport Zydney’s voice container) constitutes an “instant
`voice message” as claimed. As Patent Owner observed, the Petition unreasonably
`sought to expand the scope of “instant voice message” to encompass structure used
`only to transport voice data content. See generally Papers 31, 33 and 35. Such error
`is compounded where Petitioner interpreted “instant voice message” to encompass
`transporting structure not only in the form of Zydney’s voice container, but also the
`HTTP message used only to transport that container. Thus, the theory at issue on
`remand was doubly tainted by a construction that the Board flatly rejected. Id.
`Petitioner’s failure to establish obviousness is further underscored by
`Petitioner’s purported mapping of certain limitations of claims 4 and 5 expressly
`qualifying the “instant voice message” term. Patent Owner addressed distinctions
`arising from at least the requirements that the “instant voice message” must include
`(1) “an object field including a digitized audio file” and (2) “an action field
`identifying one of a predetermined set of permitted actions requested by the user.”
`Resp., 8-20; Hearing Transcript (Paper 29), 57-61.
`For the “object field” limitation, Petitioner asserted that “the voice data is
`contained in a field of the [Zydney] voice container.” Reply, 35 (emphasis added).
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`2
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`IPR2017-01668
`U.S. Patent 8,724,622
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`In rebuttal, Patent Owner offered the declaration testimony of Dr. Easttom, who
`testified that Zydney does not expressly or inherently disclose its voice container has
`“an object field” as claimed. Ex. 2001, ¶¶ 49-51.2 Petitioner opted to not cross-
`examine Dr. Easttom during trial or to submit rebuttal testimony in its Reply.
`Petitioner’s misplaced reliance on Zydney’s voice container for supplying the
`“object field” presented another fundamental flaw. Petitioner’s combination theory
`relied on the untethered and rejected claim interpretation that the “instant voice
`message” need not itself have both required fields and, instead, it encompasses
`structure of an HTTP message merely used to transport a structurally distinct voice
`container. Specifically, Petitioner asserted the “entity body” of the modified HTTP
`message would carry a structurally distinct “voice container” having its own internal
`“fields” (a disputed fact), one of which allegedly contains what Petitioner refers to
`as “voice data.” Petitioner’s theory remains tainted by its reliance on the rejected
`interpretation that the claimed “instant voice message” encompasses structure used
`only to transport voice data content. Paper 31, 1; Paper 35, 15.
`These deficiencies were further underscored by how the Petition addressed
`the “action field” term. Pointing to structure of the HTTP message itself, Petitioner
`asserted that “[t]he ‘Method’ field in the ‘Request-Line’” satisfies the “action field”
`limitations. Pet., 38. Thus, Petitioner pointed to transporting structure of the HTTP
`message itself for certain limitations qualifying the “instant voice message” term,
`yet Petitioner pointed to Zydney’s voice container as transporting structure for other
`
`
`2 Dr. Easttom was a doctoral candidate when he submitted his declaration, and he
`has since obtained his doctorate. Id., CV at 1.
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`3
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`IPR2017-01668
`U.S. Patent 8,724,622
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`limitations further qualifying that same term. This theory is not salvaged by arguing
`Zydney’s voice container is part of the HTTP message as a whole. At a minimum,
`such a theory conflicts with the Board’s adoption of “Patent Owner’s position that
`the ’622 patent specification consistently refers to the ‘instant voice message’ as
`content,” not transport structure. Paper 35, 15 (emphasis added).
`Petitioner also failed to persuasively defend its combination theory against the
`teach-away rebuttal of record. Resp., 18-20. Zydney refers to its transport
`mechanism as a “voice container” that is purposefully designed as “contain[ing] no
`methods.” Id. (quoting Ex. 1103, 13:6-7). The proposed combination, however,
`would require a distinct transport mechanism that relied on a POST method. As Dr.
`Easttom testified, the combination theory would thus violate Zydney’s definitional
`design constraint expressly directed to its specific transport mechanism. Ex. 2001,
`¶¶ 52-54. Petitioner did not cross-examine Dr. Easttom nor offer rebuttal testimony.
`Petitioner failed to persuasively counter this teach-away issue by offering
`mere attorney argument that “[t]he combination would not result in the voice
`container itself containing any methods.” Reply, 11. Petitioner overlooked that
`Zydney’s transport mechanism is the voice container. See Ex. 1103, 13:6 (“The
`voice data is transmitted in a voice container.”). Zydney’s definitional description
`of its voice container thus constrains the transport mechanism itself. Ex. 2001,
`¶¶ 52-54. Moreover, Petitioner cannot reasonably argue on the one hand that the
`Board should consider the modified HTTP message as a whole, while arguing on
`the other hand that Hethmon’s POST method should be considered separate and
`apart from Zydney’s voice container to which that method allegedly would apply.
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`4
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`IPR2017-01668
`U.S. Patent 8,724,622
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`As an additional basis to find insufficient motivation to combine Zydney with
`Hethmon, Dr. Easttom testified that “Zydney’s transport mechanism would not have
`worked with HTTP at that time.” Ex. 2001, ¶¶ 59-64.3 Dr. Easttom emphasized the
`teaching in Zydney that “[t]he transport mechanism for all communications will be
`over TCP/IP, Universal Data Protocol (UDP), and the PSTN between all software
`agents and the server.” Id., ¶ 61 (quoting Zydney, 29:1-3) (emphasis original). Dr.
`Easttom further identified “several technical differences” between HTTP and the
`distinct communication protocols relied upon in Zydney. Id., ¶ 62. He also testified
`that certain transport requirements for Zydney’s voice container were not enabled
`by HTTP at the time. Id., ¶ 64. In view of these distinct differences, among others,
`Dr. Easttom concluded it would not have been obvious to attempt to combine
`Zydney with Hethmon. Id., ¶¶ 52-54, 59-64. Dr. Easttom’s testimony stands
`unrebutted, and he was not cross-examined on any of these points of record.
`Accordingly, as the foregoing summary of the record reveals, Petitioner failed
`to establish obviousness under its shifted combination theory that purports to rely on
`a modified HTTP request message as a whole (in the alternative to Zydney’s voice
`container in isolation). Upon further review of the record, therefore, the Board
`should again “conclude that Petitioner has not shown by a preponderance of the
`evidence that either claim 4 or claim 5, dependent therefrom, is unpatentable over
`the combination of Zydney, Shinder, and Hethmon.” Paper 35, 103.
`
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`3 Dr. Easttom did not state his generalized opinions concerning the lack of
`motivation to combine Zydney with Hethmon is applicable only to claim 24.
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`5
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`IPR2017-01668
`U.S. Patent 8,724,622
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`
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`Date: March 11, 2022
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`Respectfully submitted,
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`By:
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`/s/ Ryan Loveless
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`Ryan Loveless; Reg. No. 51,970
`Brett A. Mangrum; Reg. No. 64,783
`Attorneys for Patent Owners
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`6
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`IPR2017-01668
`U.S. Patent 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 was served, pursuant to 37 C.F.R. § 42.107(a), along with the
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`accompanying exhibits, via email and the Patent Review Processing System (PRPS)
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`to Petitioner’s counsel of record:
`
`PETITIONER’S LEAD COUNSEL:
`Heidi L. Keefe
`hkeefe@cooley.com
`1299 Pennsylvania Avenue NW Suite 700
`Washington, D.C. 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
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`Date: March 11, 2022
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`Respectfully submitted,
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`By:
`
`/s/ Ryan Loveless
`
`
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`Ryan Loveless; Reg. No. 51,970
`Brett A. Mangrum; Reg. No. 64,783
`Attorneys for Patent Owners
`
`7
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