throbber
Trials@uspto.gov
`571-272-7822
`
`
`Paper 37
`Entered: May 15, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC., WHATSAPP INC., HUAWEI DEVICE CO., LTD.,
`LG ELECTRONICS, INC., and APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2017-016671
`Patent 8,724,622 B2
`__________________________________________
`
`
`
`FACEBOOK, INC., WHATSAPP INC., and APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2017-016682
`Patent 8,724,622 B2
`
`1 Huawei Device Co., Ltd. and LG Electronics, Inc., which filed a petition in
`Case IPR2017-02090, and Apple Inc., which filed a petition in Case
`IPR2018-00579, have been joined as petitioners in IPR2017-01667.
`
`2 Apple Inc., which filed a petition in Case IPR2018-00580, has been joined
`as a petitioner in IPR2017-01668.
`
`

`

`IPR2017-01667 and IPR2017-01668
`Patent 8,724,622 B2
`
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`DECISION
`ON PATENT OWNER’S REQUEST FOR REHEARING
`37 C.F.R. § 42.71(d)
`
`2
`
`

`

`IPR2017-01667 and IPR2017-01668
`Patent 8,724,622 B2
`
`
`I.
`
`INTRODUCTION
`
`On January 16, 2019, the Board issued a consolidated Final Written
`
`Decision in the above-captioned proceedings. Paper 373 (“Final Dec.”). In
`
`that Final Written Decision, we determined that Petitioner had shown by a
`
`preponderance of the evidence that claims 3, 6–8, 10–35, 38, and 39 of U.S.
`
`Patent No. 8,724,622 B2 (the ’622 patent) are unpatentable. Id. at 112. On
`
`February 15, 2019, Patent Owner filed a Request for Rehearing. IPR2017-
`
`Paper 38 (“Req. Reh’g”). The Request for Rehearing contends the Board
`
`misapplied its construction of the claim term “instant voice message.” Id. at
`
`3–6.
`
`According to 37 C.F.R. § 42.71(d), “[t]he burden of showing a
`
`decision should be modified lies with the party challenging the decision,”
`
`and the “request must specifically identify all matters the party believes the
`
`Board misapprehended or overlooked.” The burden here, therefore, lies with
`
`Patent Owner to show we misapprehended or overlooked the matters it
`
`requests that we review. We are not persuaded that Patent Owner has shown
`
`that we misapprehended or overlooked the matters raised in the Request for
`
`Rehearing.
`
`II. ANALYSIS
`
`Claim 27 of the ’622 patent recites that an “instant voice message
`
`application includes a document handler system for attaching one or more
`
`files to [an] instant voice message.” Ex. 1001, 26:28–30. We determined in
`
`the Final Written Decision that the term “instant voice message” refers to a
`
`
`3 Unless otherwise noted, all Paper and Exhibit numbers cited herein refer to
`filings in IPR2017-01667.
`
`3
`
`

`

`IPR2017-01667 and IPR2017-01668
`Patent 8,724,622 B2
`
`“data content including a representation of an audio message.” Final Dec.
`
`15. Also, we construed the term “attach[ing] . . . to the instant voice
`
`message” to mean indicating that another file (or files) is associated with the
`
`“instant voice message.” Id. at 22.
`
`In its Request for Rehearing, Patent Owner contends the Board
`
`misapplied its construction of instant voice message by determining that that
`
`construction did not resolve all of the disputes surrounding that term. Req.
`
`Reh’g 4 (citing Final Dec. 19). More particularly, Patent Owner alleges that
`
`the Board erred in determining that “Patent Owner ha[d] not shown that the
`
`specification supports its narrow position that the recited attachment to an
`
`‘instant voice message’ requires a direct attachment to only the data
`
`content.” Id.; Final Dec. 22. In particular, according to Patent Owner,
`
`“[h]aving won on claim construction that instant voice message means ‘data
`
`content,’ it was not then Patent Owner’s burden to defend that construction
`
`in application,” but “[r]ather, it was Petitioner’s burden to show ‘attaching
`
`one or more files to [data content including a representation of an audio
`
`message].” Req. Reh’g 4. Patent Owner further contends that the Board
`
`applied the definition of “instant voice message” in a manner never urged by
`
`any party, and, according to Patent Owner, “advanced an argument for
`
`Petitioner sua sponte.” Id. at 5–6. In particular, Patent Owner asserts, “[n]o
`
`party argued that ‘associating’ A to B is satisfied by associating A to C (a
`
`distinct and separately-generated container for B),” and “[i]t was Petitioner’s
`
`burden, not Patent Owner’s, to defend such a construction and to prove
`
`invalidity under such a construction.” Id. at 5.
`
`We have carefully considered Patent Owner’s contentions but are not
`
`persuaded that we misapprehended or overlooked the issues Patent Owner
`
`4
`
`

`

`IPR2017-01667 and IPR2017-01668
`Patent 8,724,622 B2
`
`raises. In essence, Patent Owner acknowledges that it had an opportunity to
`
`brief claim construction but faults us for determining the scope of the phrase
`
`“document handler system for attaching one or more files to the instant
`
`voice message.” The Decisions on Institution in the captioned proceedings
`
`noted that the construction of that term was raised in connection with Patent
`
`Owner’s arguments in its Preliminary Responses and that the parties would
`
`have an opportunity during trial to fully brief claim construction.” Paper 6,
`
`23. Similarly, in our Final Written Decision we noted that simply construing
`
`“instant voice message,” without more, does not resolve the dispute of the
`
`parties because Patent Owner raised arguments distinguishing the prior art
`
`on the basis of “attaching” a file to the data content itself. Final Dec. 19.
`
`The Board construes terms that resolve the dispute of the parties, and
`
`“attaching” was one of those terms. Id.; see Nidec Motor Corp. v.
`
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017);
`
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`
`1999) (“[O]nly those terms need be construed that are in controversy, and
`
`only to the extent necessary to resolve the controversy.”).
`
`Patent Owner, therefore, had notice of the issues needed to be
`
`resolved based on its own arguments distinguishing the prior art. More
`
`significantly, the Petition gave Patent Owner notice of Petitioner’s reliance,
`
`in part, on Figure 6 of Zydney (referring to “associat[ing]” a multimedia file
`
`to a voice container), and Patent Owner included argument regarding
`
`“attachments” in its Supplemental Brief on claim construction, which we
`
`considered. See Final Dec. 19, 21–22 (citing Paper 33, 4–5); see also, e.g.,
`
`Paper 36 (arguing that files must be attached to the content that is transferred
`
`or to an audio file, but not to the data structure). Thus, Patent Owner had an
`
`5
`
`

`

`IPR2017-01667 and IPR2017-01668
`Patent 8,724,622 B2
`
`opportunity to refine its position on “attaching” in its Patent Owner
`
`Response and supplemental claim construction briefing, to respond to
`
`Petitioner’s assertions and to expand on its position in its Supplemental
`
`Brief on claim construction, in which Patent Owner continued its arguments
`
`that the prior art did not disclose the required “attachment.” To be sure, and
`
`we acknowledge, Patent Owner focused much of its arguments on the term
`
`“instant voice message.” However, once we resolved the scope of that term,
`
`the dispute as to the “attaching” limitation was not resolved, especially in
`
`light of Patent Owner’s arguments attempting to distinguish the prior art
`
`based on that limitation.
`
`Moreover, regarding Patent Owner’s argument that we sua sponte
`
`engaged in an analysis where Petitioner did not present the arguments
`
`considered, we do not agree that we have not followed the holding in In re
`
`Magnum Oil Tools Int’l, 829 F.3d 1364 (Fed. Cir. 2016). Req. Reh’g 5. We
`
`relied, in part, on Petitioner’s highlighting of the “associat[ing]” step in
`
`Figure 6 of Zydney in the Petition as corresponding to the “attaching”
`
`function in claim 27 (see Final Dec. 58 (citing Paper 2, 54–55), and,
`
`accordingly, we did not engage in proscribed sua sponte analysis in
`
`rendering the Final Written Decision.
`
`Finally, Patent Owner’s request for rehearing fails to show that we
`
`misapprehended or overlooked any of Patent Owner’s evidence or
`
`arguments or that our construction for the term “attaching” is incorrect in
`
`any way and requires reconsideration and correction. In sum, we do not
`
`agree with Patent Owner’s contention that our construction of the
`
`“attaching” limitation is improper or that Patent Owner did not have an
`
`opportunity to brief the issue in light of the developed record.
`
`6
`
`

`

`IPR2017-01667 and IPR2017-01668
`Patent 8,724,622 B2
`
`
`III. ORDER
`
`Patent Owner’s Request for Rehearing is denied.
`
`
`
`7
`
`

`

`IPR2017-01667 and IPR2017-01668
`Patent 8,724,622 B2
`
`For PETITIONER:
`
`Heidi L. Keefe
`Phillip E. Morton
`Mark R. Weinstein
`Lowell Mead
`Lisa Schwier
`Andrew Mace
`COOLEY LLP
`hkeefe@cooley.com
`pmorton@cooley.com
`mweinstein@cooley.com
`lmead@cooley.com
`lschwier@cooley.com
`amace@cooley.com
`
`
`David A. Garr
`Gregory S. Discher
`COVINGTON & BURLING
`dgarr@cov.com
`gdischer@cov.com
`
`
`Anand K. Sharma
`Minjae Kang
`Joshua L. Goldberg
`Bradford C. Schulz
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P
`anand.sharma@finnegan.com
`minjae.kang@finnegan.com
`joshua.goldberg@finnegan.com
`bradford.schulz@finnegan.com
`
`
`
`
`8
`
`

`

`IPR2017-01667 and IPR2017-01668
`Patent 8,724,622 B2
`
`
`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
`
`
`
`
`For PATENT OWNER:
`
`Brett Mangrum
`Ryan Loveless
`ETHERIDGE LAW GROUP
`brett@etheridgelaw.com
`ryan@etheridgelaw.com
`
`
`Sean D. Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`
`
`9
`
`

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