IPR2017-01668
`Petitioners’ Supplemental Brief
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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., WHATSAPP, INC.,
`Petitioner
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`
`
`Case IPR2017-01668
`Patent 8,724,622
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`PETITIONERS’ SUPPLEMENTAL BRIEF
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`Petitioners’ Supplemental Brief
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`FACEBOOK, INC., WHATSAPP, INC.,
`Petitioner
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`
`
`Case IPR2017-01668
`Patent 8,724,622
`
`
`PETITIONERS’ SUPPLEMENTAL BRIEF
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`TABLE OF CONTENTS
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`Page
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`CLAIM CONSTRUCTION OF “INSTANT VOICE MESSAGE” .............. 1
`Petitioners’ Construction Is Correct. .............................................................. 1
`Patent Owner’s Construction Is Incorrect. ..................................................... 4
`ZYDNEY DISCLOSES THE “INSTANT VOICE MESSAGE”
`UNDER BOTH IDENTIFIED CONSTRUCTIONS. .................................... 5
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`-i-
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`I.
`A.
`B.
`II.
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`IPR2017-01668
`Petitioners’ Supplemental Brief
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`I.
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`CLAIM CONSTRUCTION OF “INSTANT VOICE MESSAGE”
`A. Petitioners’ Construction Is Correct.
`Petitioners’ construction, “a data structure including a representation of an
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`audible message,” accurately captures the meaning of “instant voice message”
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`reflected in the specification and claims, for purposes of the disputed issues in these
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`proceedings1 and under the BRI standard applicable to these proceedings.
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`The specification provides multiple embodiments of instant voice messages.
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`In every embodiment, the instant voice message is a data structure including a
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`representation of an audible message.
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`For example, in a “record mode,” the instant voice message is an “audio file”
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`containing recorded sound data. (’622, 8:9-11 (an IVM client “records the user’s
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`speech into a digitized audio file 210 (i.e., instant voice message) . . .”), 18:6-7
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`(“transmits the recorded audio file 210 (instant voice message) . . .”).) The audio
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`file is a data structure constituting the instant voice message.
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`The specification also describes that in the “record mode,” documents or files
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`can be attached to the instant voice message (i.e., attached to the audio file). First,
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`the user’s device creates “the instant voice message (audio file 210).” (Id., 13:27-
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`1 It has not been disputed, for example, that the voice container in Zydney satisfies
`the “instant” limitation. (See, e.g., IPR2017-01667, Petition at 27-28 (quoting
`Zydney, 1:21-22, 16:14-15, 15:8-13, 10:19-11:3, 16:1-12).)
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`IPR2017-01668
`Petitioners’ Supplemental Brief
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`35.) Before transmitting the audio file, the user can review it “as well as attach one
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`or more files (i.e., documents).” (Id., 13:32-33.) “The attachment of one or more
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`files is enabled conventionally via a methodology such as ‘drag-and-drop’ and the
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`like, which invokes the document handler 306 to make the appropriate linkages to
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`the one or more files and flags the messaging system 320 that the instant voice
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`message also has the attached one or more files.” (Id., 13:33-38.)
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`In an “intercom mode” embodiment, “instead of creating an audio file 210,
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`one or more buffers (not shown) of a predetermined size are generated.” (Id., 11:36-
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`38.) “The one or more buffers are used to automatically write successive portions
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`of the instant voice message.” (Id., 21:10-12; see also id., 21:42-45.) The buffered
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`portions form a data structure constituting the instant voice message, instead of an
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`audio file.
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`The claims of the related patents likewise reflect that the instant voice message
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`is a data structure including a representation of an audible message. For example,
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`’433 patent claim 9 recites functions for “generating an instant voice message,”
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`“transmitting the instant voice message,” and “attach[ing] one or more files to the
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`instant voice message.” Dependent claims further recite functions such as creating
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`a “link between the instant voice message and the one or more files” (claim 14) and
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`IPR2017-01668
`Petitioners’ Supplemental Brief
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`buffering “each of a plurality of successive portions of the instant voice message
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`into the one or more buffers” (claim 18).
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`Claims of the parent ’622 patent (from which the ’433 patent is a continuation)
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`recite that the instant voice message includes various fields. The specification states
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`that a “message object” is created and transmitted that comprises an object field,
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`which may contain “a digitized instant voice message,” as well other fields. (’622,
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`14:3-42.) The claims, however, recite that the “instant voice message” itself
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`“includes” the various fields: “the instant voice message includes an object field
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`including a digitized audio file” (claim 3), “the instant voice message includes an
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`action field . . .” (claim 4), “the instant voice message includes an identifier field
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`including a unique identifier associated with the instant voice message” (claim 6),
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`“the instant voice message includes a source field . . .” (claim 7), “the instant voice
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`message includes a destination field . . .” (claim 8). Thus, the claimed “instant voice
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`message” is a data structure that may include an audio file as well as other data.
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`These specification teachings and claim recitations consistently reflect that
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`the “instant voice message” is a data structure that can be created, transmitted, and
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`stored, and one or more files can be attached to it. In each instance, the item that is
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`created, transmitted, and stored and may have files attached to it—the “instant voice
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`message”—is a data structure. The intrinsic evidence does not limit the type of data
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`IPR2017-01668
`Petitioners’ Supplemental Brief
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`structure that constitutes the “instant voice message.” For example, the instant voice
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`message may be an audio file or it may be transmitted in buffered portions, as noted
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`previously. The intrinsic evidence also does not limit an “instant voice message” to
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`consist only of audio data content. For example, an instant voice message may be a
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`data structure that contains a digitized audio file and also contains various fields
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`containing other types of data, as discussed above.
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`B.
`Patent Owner’s Construction Is Incorrect.
`Patent Owner’s proposal, which would narrow an “instant voice message” to
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`“the data content including a representation of an audio message, not precluding the
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`inclusion of fields” is not supported by the intrinsic evidence and is not the broadest
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`reasonable interpretation consistent with the specification. Nothing in the
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`specification or claim language requires that an “instant voice message” be limited
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`to only “the data content.” For example, as discussed previously, the ’622 patent
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`claims recite that an instant voice message contains a digitized audio file and various
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`data fields. The “instant voice message” in those claims is a data structure that
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`contains (at least) a digitized audio file and various non-audio data. Similarly, as
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`noted above, the specification states that an instant voice message can be an “audio
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`file,” not limited to the data content contained inside of that audio file. Indeed,
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`Patent Owner previously proposed to construe “instant voice message” as strictly
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`limited to an “audio file.” (E.g., IPR2017-01428, Paper 21 at 6-8 (“the claimed
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`IPR2017-01668
`Petitioners’ Supplemental Brief
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`‘instant voice message’ refers to, and is synonymous with, the audio file 210 . . .”).)
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`Likewise, as discussed above, the specification states that files can be attached to the
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`instant voice message (i.e., attached to the “audio file” in the “record mode”). In
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`contrast, there is no description that the files must be exclusively attached only to
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`“the data content” contained inside of the audio file (without being attached to the
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`audio file), nor is it clear exactly how that might possibly occur. For example, would
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`attaching new information simply make the content longer?
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`To narrowly construe “instant voice message” as limited to only “the data
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`content”—not encompassing an entire file or other complete data structure—would
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`impermissibly exclude these disclosed and claimed embodiments. Epos Techs. Ltd.
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`v. Pegasus Techs. Ltd., 766 F.3d 1338, 1347 (Fed. Cir. 2014). Even if data content,
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`alone, could be an “instant voice message,” there is no basis to narrowly construe
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`“instant voice message” as limited solely to data content. By contrast, construing
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`“instant voice message” as a data structure including a representation of an audible
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`message properly encompasses all of the claimed and described embodiments.
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`II. ZYDNEY DISCLOSES THE “INSTANT VOICE MESSAGE” UNDER
`BOTH IDENTIFIED CONSTRUCTIONS.
`Zydney’s voice container discloses the claimed “instant voice message” under
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`both identified constructions. Zydney describes that a user “digitally records
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`messages for one or more recipients using a microphone-equipped device.”
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`IPR2017-01668
`Petitioners’ Supplemental Brief
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`(Zydney, 16:1-2.) “To create a message, the software agent will address, pack and
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`send the message in a voice container.” (Id., 14:4-5.) Zydney defines “voice
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`container” to mean “a container object that contains no methods, but contains voice
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`data or voice data and voice data properties.” (Id., 12:6-8; id. at 12:6 (“The voice
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`data is transmitted in a voice container.”).) Figure 3 shows an example voice
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`container including voice data properties. (Id., 23:1-11, Fig. 3.) Zydney also
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`describes that the voice container is a “file,” referring to the “voice container file”
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`containing data content. (Id., Fig. 8 (item 1.2.4); see also id., Fig. 7 (item 1.1.5
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`(discussing “the file structure of the container”).)
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`Under Petitioners’ construction, the voice container discloses a data structure
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`(the voice container or voice container file) including a representation of an audible
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`message (the voice data representing an audible message that can be played by the
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`recipient). Patent Owner’s expert agrees that a “file” as disclosed in Zydney is a
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`“type of data structure.” (E.g., IPR2017-01667, Ex. 2001, ¶ 45.) Zydney also
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`teaches that the voice container may be formatted in other ways, such as MIME
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`formatting, that also disclose a data structure that includes a representation of an
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`audible message. (E.g., Zydney, 19:6-12; IPR2017-01667, Petition at 32-33, 56.)
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`Under Patent Owner’s construction, the voice container also discloses “the
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`data content including a representation of an audio message, not precluding the
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`IPR2017-01668
`Petitioners’ Supplemental Brief
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`inclusion of fields.” As noted previously, Zydney defines “voice container” as “a
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`container object that contains . . . voice data or voice data and voice data properties.”
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`(Zydney, 12:6-8.) Thus, the voice container comprises (1) voice data or (2) voice
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`data and voice data properties such as illustrated in Figure 3. In either form, the
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`voice container includes the audio content (“the data content including a
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`representation of an audio message”) and may include voice data properties as
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`shown in Figure 3 (“not precluding the inclusion of fields”).
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`Indeed, under any proper construction, Zydney discloses an “instant voice
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`message” because Zydney’s voice container is an audio “file,” which is an
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`embodiment of an “instant voice message” in the specification. (See ’622, 8:9-11;
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`Zydney, Fig. 8 (item 1.2.4), Fig. 7 (item 1.1.5).)
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`At the hearing, Patent Owner argued that Zydney does not attach one or more
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`files to “the data content” inside the voice container. (Tr. at 27:2-6.) But Zydney
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`discloses substantially the same “attachment” process as the patents. The
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`specification describes that in the “record mode” embodiment, the “instant voice
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`message” is embodied in an “audio file” and one or more files can be attached to
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`that audio file. (’622, 13:26-38.) Zydney describes the same thing—one or more
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`files can be attached to the voice container, which Zydney describes as a “file.” (See
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`IPR2017-01667, Petition at 54-56; Zydney, Fig. 8 (item 1.2.4), Fig. 7 (item 1.1.5).)
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`IPR2017-01668
`Petitioners’ Supplemental Brief
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`There is no basis to narrowly interpret or apply the claim limitations of “attaching”
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`one or more file to an instant voice message in a manner that would exclude
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`Zydney’s disclosure, because this would impermissibly exclude the patents’
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`preferred embodiment.
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`Furthermore, Zydney teaches that the voice container may use MIME
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`formatting to handle attachments, which further discloses attaching one or more files
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`to “the data content.” (See, e.g., IPR2017-01667, Petition at 32-33, 56.) As Zydney
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`describes, MIME specifies a “multipart message” format for “binary, audio, and
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`video” files and allows “attachments to be specified in the message headers.”
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`(Zydney, 19:6-12.) Thus, under Patent Owner’s construction, Zydney discloses
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`attaching one or more files (attachments specified in the MIME message headers) to
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`“the data content” (the voice data “audio” content in the MIME-formatted voice
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`container). (Id.; see also, e.g., IPR2017-01667, Ex. 1002 (Lavian) at ¶¶ 141-144,
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`215.)
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`IPR2017-01668
`Petitioners’ Supplemental Brief
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`Dated: September 28, 2018
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`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
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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 Petitioners
`Facebook, Inc. and WhatsApp,
`Inc.
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`IPR2017-01668
`Petitioners’ Supplemental Brief
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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
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`attached PETITIONERS’ SUPPLEMENTAL BRIEF, are being served on the
`28th day of September, 2018, by electronic mail on counsel of record for the Patent
`Owner as follows:
`
`Brett Mangrum (Reg. No. 64,783)
`brett@etheridgelaw.com
`Sean D. Burdick (Reg. No. 51,513)
`sean.burdick@unilocusa.com
`James Etheridge (Reg. No. 37,614)
`jim@etheridgelaw.com
`Jeffrey Huang (Reg. No. 68,639)
`jeff@etheridgelaw.com
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`
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`DATED: SEPTEMBER 28, 2018
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`COOLEY LLP
`ATTN: Patent Docketing
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington, D.C. 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
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`/ Heidi L. Keefe /
`Heidi L. Keefe
`Reg. No. 40,673
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`‐1‐
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