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`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.,
`Petitioners
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`v.
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`UNILOC USA, INC., and UNILOC LUXEMBOURG S.A.,
`Patent Owners
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`Case No. IPR2017-01668
`U.S. Patent No. 8,724,622 B2
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`PETITIONER’S RESPONSE TO PATENT OWNER’S
`OPENING BRIEF ON REMAND
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`IPR2017-01668
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`U.S. Patent No. 8,724,622 B2
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`In authorizing post-remand briefing, the Board made clear that “the parties are
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`not authorized to file or otherwise introduce any new evidence or to present any new
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`arguments with or in the briefs.” (Paper 42, at 4 (emphasis added).) Patent Owner’s
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`brief violates this directive by making new arguments about claims 4 and 5 that
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`should not be considered. And those new arguments, even if considered, fail.
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`Prior to remand, Patent Owner presented (and thus preserved) only one
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`argument directed to claims 4 and 5, appearing on pages 18-20 of its Patent Owner
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`Response – that Zydney “teaches away” from the proposed combination. (Paper 16,
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`at, 18-20; EX2001, ¶¶52-54.) Patent Owner argued that the Zydney voice container
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`“contains no methods,” and as such, teaches away from “an action field identifying
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`one of a predetermined set of permitted actions,” as recited in claim 4. (Id.)
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`Petitioner fully addressed and rebutted that argument by explaining that Patent
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`Owner had mischaracterized the Petition. Petitioner explained that it had mapped
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`the “instant voice message” of claims 4 and 5 to an HTTP message, and the “action
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`field” to the “Request-Line” element of an HTTP message. (Petition, Paper 2, at 37-
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`39; Petitioner Reply, Paper 22, at 10-12.) As the Federal Circuit observed in
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`summarizing Petitioner’s proposed combination for claims 4 and 5, “the required
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`‘instant voice message includ[ing] an action field’ was taught by an HTTP message
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`as a whole, in which the Request-Line portion contains the action field (specifically
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`a POST method) and the Entity-Body carries the Zydney voice container.” Uniloc
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`1
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`IPR2017-01668
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`2017 LLC v. Facebook, Inc., Nos. 2019-2159, 2019-2162, 2021 WL 5370480, at *7
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`U.S. Patent No. 8,724,622 B2
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`(Fed. Cir. Nov. 18, 2021). Because Petitioner’s proposed combination did not place
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`the “action field” within the Zydney voice container itself, the fact that the voice
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`container in Zydney “contains no methods” was irrelevant. (Paper 22, at 10-12.)
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`And that disposes of the only argument Patent Owner preserved with respect
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`to claims 4 and 5. All other arguments Patent Owner now makes in its post-remand
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`brief should be disregarded for exceeding the scope of the Board’s order. Moreover,
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`those new arguments, even if considered on their merits, fail.
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`A. New Arguments About the Claimed “Instant Voice Message”
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`Patent Owner’s arguments depend primarily on its construction of “instant
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`voice message,” i.e., “data content including a representation of an audio image,”
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`which the Board adopted. Patent Owner now appears to argue that the Board’s
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`construction excludes the HTTP message cited for the “instant voice message” of
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`claims 4 and 5. (Paper 43, at 1-2.) But Patent Owner never before argued that an
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`HTTP message could not qualify as an “instant voice message.”
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`This argument fails even if considered. The Board concluded that the Zydney
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`voice container qualifies as an “instant voice message” under the adopted
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`construction. (Final Written Decision, Paper 35, at 44-45.) In making this ruling,
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`the Board expressly rejected Patent Owner’s suggestion, now redirected towards
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`claims 4 and 5, that the “instant voice message” construction somehow limits the
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`2
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`IPR2017-01668
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`way in which data can be packaged or structured. The Board explained that “[t]he
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`U.S. Patent No. 8,724,622 B2
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`format of the data content or how it is packaged (i.e., structure) is not relevant, as
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`we focus on whether the voice container is data content notwithstanding additional
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`data and structure that ensures adequate transport or delivery of the data content.”
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`(Id. at 45 (emphasis added).) That holding was unaffected by the Federal Circuit
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`remand and is dispositive of Patent Owner’s new arguments against claims 4 and 5.
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`Because if the Zydney voice container qualifies as “instant voice message” (which
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`the Board found it does), then so too does an HTTP message that includes that same
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`Zydney voice container. The Final Written Decision made clear that an “instant
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`voice message” does not exclude “additional data and structure that ensures
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`adequate transport or delivery of the data content” (id.), which precisely describes
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`the additional data contained in an HTTP message as described in the Petition.
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`(Petition, Paper 2, at 37-40.) Accordingly, Patent Owner’s new contention that a
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`Zydney voice container is no longer an “instant voice message,” simply by virtue
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`of being packaged in an HTTP message, should be rejected.
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`B. New Arguments About the “Object Field” of Claim 3
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`Patent Owner makes a substantially similar argument with respect to the
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`claimed “object field containing a digitized audio file,” but that limitation does
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`not appear in claims 4 or 5. (Paper 43, at 2-3.) It appears instead in independent
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`claim 3, which the Board found unpatentable and the Federal Circuit affirmed.
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`3
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`IPR2017-01668
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`Patent Owner never before argued that reliance on an HTTP message for the “instant
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`U.S. Patent No. 8,724,622 B2
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`voice message” of claims 4 and 5 presented any issues with respect to how the prior
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`art applies to claim 3. But this argument also fails on the merits if considered.
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`As explained, the Board made clear that how data is packaged or structured is
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`“not relevant” to whether the data can qualify as an “instant voice message.” (Final
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`Written Decision, Paper 35, at 45.) Because a Zydney voice container by itself
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`qualifies as an instant voice message having “an object field containing a digitized
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`audio file,” as the Board correctly concluded, then so too does that same Zydney
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`voice container when packaged in an HTTP message.
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`C. New Arguments About Use of HTTP for Claim 4
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`Patent Owner also newly argues that Zydney’s transport mechanism would
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`not have worked with HTTP. (Paper 43, at 4-5 (citing Ex. 2001, ¶¶59-64).) But
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`prior to remand, Patent Owner only made these arguments with respect to the
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`“connection object messages” limitation of claim 24. (Paper 16 at 21-23; Ex. 2001,
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`¶¶59-64.) Patent Owner’s attempt to recast earlier arguments about claim 24 as new
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`arguments against claims 4-5 is improper. And the arguments also lack merit.
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`The Final Written Decision, in finding claim 24 unpatentable, devoted several
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`pages to specifically considering and rejecting the same arguments Patent Owner
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`now makes about the purported incompatibilities between Zydney and HTTP. (Final
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`Written Decision, Paper 35, at 104 (“Patent Owner further contends that Zydney
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`4
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`teaches away from using HTTP and that Zydney’s transport mechanism would not
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`U.S. Patent No. 8,724,622 B2
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`have worked with HTTP.”); id., at 107-108 (rejecting Patent Owner’s arguments).)
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`The Board credited the testimony of Petitioner’s expert that it would have been
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`obvious and straightforward to use HTTP to facilitate voice container delivery from
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`clients to the central server under the proposed combination. (Id. at 107-108.)
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`Petitioner’s expert explained, for example, that HTTP was built atop standard
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`TCP/IP, which Zydney expressly describes as its transport mechanism for all
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`communications. (Id. (quoting Ex. 1102, ¶319).) And further undermining Patent
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`Owner’s arguments, Zydney repeatedly references HTTP and even incorporates-by-
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`reference the published standard for HTTP requests, as explained in the Petition.
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`(Petition, Paper 2, at 41-44; Ex. 1011, ¶¶313-314, 317-318.)
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`The Federal Circuit affirmed the Board’s rejection of Patent Owner’s
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`arguments when it upheld the unpatentability of claim 24. See Uniloc 2017 LLC,
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`2021 WL 5370480, at *7. Accordingly, even if Patent Owner had properly preserved
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`these arguments against claims 4 and 5 (which it did not), those arguments would
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`fare no better against claims 4 and 5 than they did against claim 24.
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`D. Conclusion
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`The Board should find claims 4 and 5 unpatentable as obvious over Zydney,
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`Shinder, and Hethmon, as argued in the Petition.
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`5
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`U.S. Patent No. 8,724,622 B2
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`By:
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`Respectfully submitted,
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`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`Counsel for Petitioner
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`IPR2017-01668
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`Dated: April 11, 2022
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`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
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`IPR2017-01668
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`U.S. Patent No. 8,724,622 B2
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`CERTIFICATE OF SERVICE
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`I hereby certify, pursuant to 37 C.F.R. § 42.6, that a complete copy of the
`attached PETITIONER’S RESPONSE TO PATENT OWNER’S OPENING
`BRIEF ON REMAND is being served via electronic mail on the 11th day of April,
`2022, upon counsel of record for the Patent Owner as follows:
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`Ryan Loveless (ryan@etheridgelaw.com)
`Brett A. Mangrum (brett@etheridgelaw.com)
`Etheridge Law Group
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`Sean D. Burdick (sean.burdick@unilocusa.com)
`Uniloc USA, Inc.
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`DATED: April 11, 2022
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`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
`COOLEY LLP
`1299 Pennsylvania Ave. NW,
`Suite 700
`Washington, D.C. 20004
`Tel: (650) 843-5001
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`7
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