UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`FACEBOOK, INC., ET AL.
`Petitioner
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner
`
`
`
`
`IPR2017-01427, -1428, -1667, and -1668
`U.S. Patent Nos. 8,995,433 and 8,724,622
`
`
`
`
`
`
`
`
`
`
`
`
`PATENT OWNER SUPPLEMENTAL CLAIM CONSTRUCTION BRIEF
`PURSUANT TO BOARD’S ORDER
`
`
`
`
`
`

`

`Supplemental Claim Construction Brief
`U.S. Patent Nos. 8,995,433 and 8,724,622
`
`I.
`
`Introduction
`The present dispute over the construction of “instant voice message” has
`relevance to those challenged claims which require attaching one or more files to the
`instant voice message itself.1 Specifically, independent claim 9 of the ’433 patent
`(challenged in IPR2017-01428) recites “wherein the instant voice message
`application attaches on or more files to the instant voice message;” and independent
`claim 27 of the ’622 patent (challenged in IPR2017-01667) recites “wherein the
`instant voice messaging application includes a document handler system for
`attaching one or more files to the instant voice message.”
`The parties essentially dispute whether the term “instant voice message”
`recited in these two claim sets 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.
`Petitioner has the burden to prove its unreasonably broad construction because it is
`the basis of Petitioner’s mapping of Zydney’s “voice container” onto the claimed
`“instant voice message.” Petitioner relies on such an overbroad construction because
`the Board has previously held that Zydney fails to disclose attaching one or more
`files to what Zydney refers to as the “voice data” or “message” that is transported
`within a distinct and separately-generated “voice container.”
`
`1 Patent Owner notes it has previously identified in the record several other fatal
`deficiencies, for each ground raised in these four related petitions, which are
`independent of the particular claim construction the Board may apply here for
`“instant voice message.”
`
`1
`
`

`

`Supplemental Claim Construction Brief
`U.S. Patent Nos. 8,995,433 and 8,724,622
`II. The specification consistently defines the “instant voice message” in
`terms of voice data content
`The intrinsic record reveals that independent claims 9 and 27 of the ’433 and
`’622 patents (respectively) each require an attachment of one or more files to “data
`content including a representation of an audio message”—i.e., the only viable
`construction offered for “instant voice message” in this context.2
`The original specification of the challenged patents is replete with defining
`descriptions revealing that the “instant voice message” is the voice data content
`itself, as opposed, for example, to a distinct and separately-generated data structure
`used only to transport that data content. In describing a preferred embodiment, for
`example, the specification states the “digitized instant voice message” is “the 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).
`In further emphasizing the distinction between the carrying structure and the
`separately-generated data content identified as the instant voice message, the same
`passage continues by stating that the “message object” may only require an action
`to be performed, without “necessarily requir[ing] any data content to be sent or
`received,” and thus “some of the message object’s fields may be left blank or
`ignored.” Id. at 42‒48.3 This further highlights the error in construing the “instant
`
`
`2 Because the intrinsic record resolves the construction dispute, resort to the extrinsic
`evidence introduced by the Board at the Oral Hearing (EX3001) is unnecessary. See
`Roxane Labs., Inc. v. Camber Pharm. Inc., 666 F. App'x 899, 905 (Fed. Cir. 2016).
`3 That a data structure need not contain any data content is the entire point of the
`argument offered at the Hearing, at TR. 64:3‒66:1, against a structure-based
`construction. To clarify, that argument should not be interpreted as positing, instead,
`
`
`2
`
`

`

`Supplemental Claim Construction Brief
`U.S. Patent Nos. 8,995,433 and 8,724,622
`
`voice message” recited in the attachment claims as being directed to a data structure
`that (only in certain instances) merely carries/includes distinct data content.
`The specification also makes repeated use of “i.e.”—well over a dozen
`times—to consistently define the “instant voice message” as voice data content. See
`TF3 Ltd. v. Tre Milano, LLC, 894 F.3d 1366, 1371‒72 (Fed. Cir. 2018) (rev’g PTAB
`invalidity finding as based on construing “the claims more broadly than the
`description in [the] specification, thereby enlarging the claims beyond their correct
`scope,” in part because the specification used “i.e.” to define claim language);
`Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1334 (Fed. Cir. 2009)
`(“[U]se of ‘i.e.’ signals an intent to define the word to which it refers.”).
`In describing the “record mode” embodiment, for example, the specification
`consistently and repeatedly uses “i.e.” to equate the instant voice message with voice
`data content generated as a “digitized audio file.” See, e.g., ’433 patent, 12:42–43;
`8:11–15; 8:21; 10:1; 10:42–43; 10:50; 16:24; 17:25–26; 18:8–9; 18:60; 18:66–67;
`19:49; 19:54; see also IPR2017-01428, Paper 21 at 6–7 and EX2001 ¶32. Similarly,
`in describing the “intercom mode” embodiment, the specification again repeatedly
`uses “i.e.” to define the instant voice message as voice data content generated as
`“input audio of the predetermined size [that] is written to the buffer.” See, e.g., ’433
`patent, 11:38–60; 21:8–47. This explicit lexicography precludes construing the
`disputed “instant voice message” terms as being directed, instead, to a carrying data
`structure. TF3, 894 F.3d at 1371‒72.
`
`
`that “the content cannot exit independently of the medium by which the content is
`transported,” as the Board inferred. See IPR2017-01428, Paper 35 at 3.
`
`3
`
`

`

`Supplemental Claim Construction Brief
`U.S. Patent Nos. 8,995,433 and 8,724,622
`
`It is not only significant and dispositive that the specification repeatedly and
`consistently defines (e.g., in its aforementioned descriptions addressing the
`“message object,” “record mode,” and “intercom mode” embodiments) the “instant
`voice message” as being voice data content itself, the express distinction made
`between those embodiments (e.g., storing input speech into an audio file 210 in the
`“record mode” and, instead, writing successive data portions of input speech to a
`buffer in the “intercom mode”) further confirms that the description of the term
`“instant voice message” consistently refers to voice data content, regardless of the
`particular data structure (if any) that may be used.
`The specification also includes the following description of attaching one or
`more files to an instant voice message in the context of the “record mode”
`embodiment: “[m]ore specifically, when an instant voice message is to be
`transmitted to the one or more IVM recipients, one or more documents may be
`attached to the instant voice message.” ’433 patent, 12:32–35 (emphasis added).4
`Just a few lines down that same passage reaffirms that “[a]udio file creation 312
`creates an instant voice message as audio file 210, and is responsible for receiving
`input speech for the instant voice message from audio input device 212 or via
`network 204 and storing the input speech into audio file 210.” Id. 12:42–46
`(emphasis added). The “record mode,” therefore, clearly involves attachment to the
`audio file 210 (i.e., instant voice message) itself. This reaffirms that the limitations
`
`4 This passage of the specification was cited by Applicant during prosecution as
`pertaining to the claim language (newly added by amendment) “a document handler
`system for attaching one or more files to the instant voice message.” See File History
`of the ’622 patent, Response dated Nov. 5, 2013 to Office Action dated June 5, 2013.
`
`4
`
`

`

`Supplemental Claim Construction Brief
`U.S. Patent Nos. 8,995,433 and 8,724,622
`
`at issue require an attachment to the data content, as opposed, for example, to a
`distinct and separately-generated data structure (like Zydney’s “voice container”)
`that is used only to transport that data content and that is subsequently discarded.
`The context provided by certain dependent claims further confirms that the
`attachment must be made to the data content itself. For example, dependent claim
`11 of the ’433 patent recites “audibly playing the instant voice message.” Applying
`the erroneous construction “a data structure including a representation of an audible
`message” would require “audibly playing [the data structure]” itself. See IPR2017-
`01428, Paper 21 (Patent Owner Response) at 7. As the Board recognized, however,
`Petitioner has argued here that Zydney discloses “play[ing] back the voice data”
`after it is unpacked from the container. IPR2017-01667, Paper 8 at 17 (quoting Pet.
`32). In addressing similar challenges to claim language recited in related U.S. Patent
`No. 7,535,890, the Board rejected grounds that “interchangeably” map the “instant
`voice message … to either (1) Zydney’s voice container or (2) the voice data or
`message that is stored in Zydney’s voice container.” IPR2017-02082, Paper 10 at 9.
`Analogous arguments defeating a structure-based construction arise from the
`limitation “re-recording . . . the instant voice message,” as recited in dependent claim
`16 of the ’433 patent. See IPR2017-01428, Paper 21 at 7. As with dependent claim
`11, the is no record evidence or argument to support the conclusion that the data
`structure of Zydney’s voice container is itself recorded in a manner consistent with
`the intrinsic evidence, much less that it may be “re-record[ed]” as claimed.
`The intrinsic record, including at least the lexicography and claim language
`emphasized above (and in Uniloc’s briefs), reveals that independent claims 9 and 27
`
`5
`
`

`

`Supplemental Claim Construction Brief
`U.S. Patent Nos. 8,995,433 and 8,724,622
`
`of the ’433 and ’622 patents (respectively) each require an attachment of one or more
`files to “data content including a representation of an audio message”—i.e., the
`only viable construction offered for “instant voice message” in this context.
`
`III.
`
`Independent claim limitations cannot be imputed to one another here
`It is anticipated that Petitioner will argue that claim 3 of the ’622 patent recites
`additional limitations directed to the “instant voice message” that, by differentiation,
`suggest the “instant voice message” terms recited in independent claims 9 and 27 of
`the ’433 and ’622 patents (respectively) each has a broader scope. This would
`introduce error. See, e.g., Atlas IP, LLC v. Medtronic, Inc., 809 F.3d 599, 607 (Fed.
`Cir. 2015) (rejecting claim differentiation argument based on other independent
`claims); Indacon, Inc. v. Facebook, Inc., 824 F.3d 1352, 1358 (Fed. Cir. 2016)
`(declining to apply claim differentiation between independent claims “not otherwise
`identical in scope”) (citations omitted); InterDigital Commc'ns, Inc. v. U.S. Int'l
`Trade Comm'n, 601 F. App'x 972, 978–80 (Fed. Cir. 2015) (declining to extract
`meaning by comparing independent claims that are distinguishable in other ways).
`Claim 3 of the ’622 patent explicitly redefines the term, in part, and for
`purposes of that claim only, as follows: “the instant voice message includes an object
`field.” This additional and redefining “field” requirement exclusively recited in
`independent claim 3 (and added by amendment during prosecution) confirms the
`“instant voice message” term is meant to have a different meaning in that claim set
`only (i.e., claim 3 and its dependent claims).5 Moreover, attempting to contrive a
`
`
`5 At the Oral Hearing, when addressing the negative limitation “not precluding the
`
`
`6
`
`

`

`Supplemental Claim Construction Brief
`U.S. Patent Nos. 8,995,433 and 8,724,622
`
`single construction (for all recitations of “instant voice message”) that includes the
`negative limitation “not precluding the inclusion of fields” risks departing from both
`the explicit definitional statement in claim 3 (which affirmatively requires the
`inclusion of an “object field”) and the written description (which, as explained
`above, attaches files only to the data content itself). See, e.g., ’433 patent, 12:32–46.
`Accordingly, the definitional statements modifying “instant voice message”
`in claim 3 cannot be imputed to all the independent claims of the ’622 patent, much
`less to all independent claims of the related patents belonging to this same family
`(e.g., the ’433 patent). In the absence of such modifying claim language, the
`lexicography in the shared specification controls, such that the claimed “attaches”
`and “attaching” must be made to the data content itself. TF3, 894 F.3d at 1371‒72.
`Even if it were appropriate and necessary here to contrive a single meaning
`for all claimed recitations of “instant voice message” that includes the negative
`limitation “not precluding the inclusion of fields” (and it is not), the record offers no
`proof that Zydney discloses attaching one or more files to any purported “field” of
`the voice container, let alone to a “field” that is itself defined as being data content
`and not data structure. On the contrary, it is undisputed that “Zydney does not use
`the word ‘field’ in relation to storage of voice data ….” See, e.g., IPR2017-01667,
`Pet. 32; see also id., Paper 17 (Patent Owner Response) at 22‒28 (addressing the
`“object field” deficiency of Zydney).
`
`inclusion of fields” proposed sua sponte by the Board, counsel for Patent Owner
`limited his first-impression remarks to only those claims expressly reciting the “field
`limitations.” See IPR2017-01428, Paper 34 (Hearing Transcript), TR 67:1–5.
`
`
`7
`
`

`

`Supplemental Claim Construction Brief
`U.S. Patent Nos. 8,995,433 and 8,724,622
`IV. A content-based construction of “instant voice message” in the context of
`attachment provides an independent reason (among others) for denial
`In addition to the other independent deficiencies identified in the record,6
`Petitioner’s reliance on Zydney’s “voice container” fails to prove obviousness of the
`“attaches” and “attaching” limitations at least when the “instant voice message” term
`of those claims is construed, consistent with the intrinsic record, to mean “data
`content including a representation of an audio message.”
`The PTAB has already repeatedly held that the same portion of Zydney relied
`upon in the Petition as allegedly teaching attachment of multimedia files to the voice
`container itself is distinguishable from, instead, attaching multimedia files to the
`distinct and separately-generated voice data or message contained within the voice
`container (which the PTAB has determined Zydney does not disclose). See, e.g.,
`IPR2017-01257, Paper 8 at 18; IPR2017-01799, Paper 9 at 22‒23; IPR2017-01800,
`Paper 8 at 22–23; IPR2017-02085, Paper 11 at 19 (applying a fortiori the conclusion
`in IPR2017-01257); IPR2017-02082, Paper 10 at 9 (denying petition, in part,
`because “Petitioner interchangeably maps—without explanation—the ‘instant voice
`message’ of the challenged claims to either (1) Zydney’s voice container or (2) the
`voice data or message that is stored in Zydney’s voice container.”); IPR2017-01524,
`Paper 7 at 17 (agreeing with Uniloc that Zydney distinguishes its voice container
`from its voice data or message); see also IPR2017-01428, Paper 21 at 16‒22.
`
`Date: September 28, 2018
`
`
`
`
`
`
`6 See n.1, supra.
`
`8
`
`Respectfully submitted,
`By: /s/ Brett A. Mangrum
`Brett A. Mangrum; Reg. No. 64,783
`Counsel for Patent Owner
`
`

`

`Supplemental Claim Construction Brief
`US. Patent Nos. 8,995,433 and 8,724,622
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that an electronic
`
`copy of the foregoing supplemental brief was served via the Patent Review
`
`Processing System (PRPS) and/or via email to Petitioners’ counsel of record at the
`
`following address:
`
`PETITIONERS LEAD COUNSEL
`
`PETITIONERS BACK-UP COUNSEL
`
`Phillip E. Morton (Reg- No- 57,835)
`pmorton@cooley.com
`zpatdcdocketing@cooley.com
`COOLEY LLP
`
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`
`
`
`
`
`
`
`Heidi L. Keefe (Reg. No. 40,673)
`hkeefe@cooley-com
`zpatdcdocketing@cooley.com
`COOLEY LLP
`
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`
`
`
`
`
`
`
`
`
`
`Washington, DC 20004
`Washington DC. 20004
`Tel: (650) 843-5001
`Tel: (703) 456—8668
`
`Fax: 650 849—7400
`Fax: 703 456—8 100
`
`Date: September 28, 2018
`
`Respectfully submitted,
`
`By: /s/ Brett A. Maxim
`Brett A- Mangrum
`Attorney for Patent Owners
`Reg. No. 64,783
`
`