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
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`IPR2017-01668
`PATENT 8,724,622
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`PATENT OWNER REPLY 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
`
`
`PATENT OWNER REPLY BRIEF ON REMAND
`
`
`
`
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`
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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
`
`Petitioner wrongly accused Uniloc of presenting new arguments on remand
`and pleads with the Board to not consider their merits. Paper 44, 1. What Petitioner
`mischaracterized as new argument is simply Uniloc’s discussion of (and citation to)
`arguments of record concerning claim language clearly at issue on remand. Each
`one of the patentable distinctions Uniloc had identified arise from limitations
`directed to the “instant voice message” claim term (hereinafter, “IVM”), when read
`in the context and further qualifications recited in claims 4 and 5. Paper 43, 1-5.
`Certain distinctions of record arise from the proper construction of the IVM term
`itself (id., 1-2), while others arise from the requirement that the IVM must itself
`include multiple fields, each having respective limitations (id., 2-5).
`Petitioner’s brief on remand only underscores the necessity of carefully
`reviewing the record as it concerns the dispute over, and ultimate construction of,
`the IVM term. Petitioner erroneously suggests the Board found in its Final Written
`Decision that Zydney’s voice container in its entirety is accurately characterized as
`“data content including a representation of an audio message.” Paper 44, 2.
`Petitioner overlooks that the Board recognized there is a clear distinction between
`voice data content and structure used only for transporting such content. This is
`evident at least by the Board (1) adopting a construction focused on content while
`rejecting one focused on structure, and (2) recognizing a distinction between voice
`data content within Zydney’s voice container and “additional data and structure
`that ensures adequate transport or delivery of the [voice] data content.” FWD, 45
`(emphasis added). To use an analogy, just because a person remains a person while
`being transported by a bus, it does not follow that the bus itself is also a person.
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`1
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`IPR2017-01668
`U.S. Patent 8,724,622
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`Compounding its error, Petitioner falsely asserted that Uniloc’s argument on
`remand is that Zydney’s “voice container is no longer an ‘instant voice message,’
`simply by virtue of being packaged in an HTTP message.” Paper 44, 3. Not so.
`Uniloc has maintained its consistent argument of record that “data content including
`a representation of an audio message” does not itself encompass distinct structure
`used only to transport voice data content. Paper 43, 2 (citations omitted). This does
`not mean that the presence of such distinct transporting structure precludes the
`existence of “data content including a representation of an audio message.” Rather,
`Uniloc has consistently maintained that such extraneous additional data and
`structure cannot supply what the claimed IVM itself must include, such as the
`“action field” recited in claim 4 and further qualified in claim 5. Paper 43, 1-5.
`Petitioner’s brief on remand also underscores deficiencies of the Petition
`regarding the “action field” term. Petitioner relied on Zydney’s voice container as
`allegedly including therein the required IVM term, under the adopted construction
`of “data content including a representation of an audio message.” Yet Petitioner
`acknowledged its “proposed combination did not place the ‘action field’ within the
`Zydney voice container itself.” Paper 44, 2 (emphases original). Thus, the alleged
`“action field” is admittedly not included within what Petitioner had relied upon as
`allegedly being “data content including a representation of an audio message.”
`Paper 43, 3-5. Uniloc previously summarized arguments of record concerning the
`“object field” of the IVM, in part, to underscore the failure to establish that the
`proposed combination would have provided “data content including a representation
`of an audio message” that itself includes the requisite fields. Id., 2-3.
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`2
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`IPR2017-01668
`U.S. Patent 8,724,622
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`Petitioner also failed to persuasively defend its combination theory against the
`teach-away rebuttal of record. Paper 43, 4 (citing Resp., 18-20). Petitioner’s
`proposed combination admittedly would require a transport mechanism that relied
`on a POST method, whereas Zydney expressly restricts its transport mechanism as
`purposefully “contain[ing] no methods.” Id. Petitioner attempted to waive away the
`express constraint in Zydney as “irrelevant” ostensibly because Petitioner’s
`combination theory placed the “action field” outside of Zydney’s voice container
`(and hence also outside of what Petitioner alleged is the “data content including a
`representation of an audio message”). Paper 44, 2. At a minimum, Petitioner offered
`no basis to dispute that “Zydney’s definitional description of its voice container …
`constrains the transport mechanism itself.” Paper 43, 4 (citation omitted). Petitioner
`also failed to defend against the identified inconsistencies of its theory. Id.
`Petitioner’s remand discussion of Board findings concerning claim 24 only
`confirms their present relevance. Paper 44, 4-5. The Board found it significant that
`claim 24 did not require the “connection objects” to be included within the instant
`voice message itself. FWD, 107. The Board thus concluded that “even if the
`HTTP/1.1 Request-Line Method field is properly understood to include a ‘method’
`within the meaning of that term as used in Zydney’s definition of a voice container,
`we disagree with Patent Owner’s argument that Zydney teaches away from a
`combination in which the HTTP POST method described by Hethmon would be
`used.” Id. (emphasis and underlining added). Claims 4 and 5, however, both require
`that the “action field” must be included within the instant voice message itself.
`For brevity, Uniloc stands on its prior briefing for previously addressed points.
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`3
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`Date: April 25, 2022
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`IPR2017-01668
`U.S. Patent 8,724,622
`Respectfully submitted,
`
`By:
`
`/s/ Ryan Loveless
`
`Ryan Loveless; Reg. No. 51,970
`Brett A. Mangrum; Reg. No. 64,783
`Attorneys for Patent Owners
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`4
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`IPR2017-01668
`U.S. Patent 8,724,622
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`
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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:
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`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: April 25, 2022
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`Respectfully submitted,
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`By:
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`/s/ Ryan Loveless
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`
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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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`5
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