Trials@uspto.gov
`571-272-7822
`
`
`Paper 34
`Entered: May 15, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS AMERICA. INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01797 and IPR2017-01798
`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)
`
`

`

`IPR2017-01797 and IPR2017-01798
`Patent 8,724,622 B2
`
`
`I.
`
`INTRODUCTION
`
`On January 31, 2019, the Board issued a consolidated Final Written
`
`Decision in the above-captioned proceedings. Paper 321 (“Final Dec.”). In
`
`that Final Written Decision, we determined that Petitioner had shown by a
`
`preponderance of the evidence that claims 3, 4, 6–8, 10–19, 21–35, 38, and
`
`39 of U.S. Patent No. 8,724,622 B2 (the ’622 patent) are unpatentable. Id. at
`
`104. On March 4, 2019, Patent Owner filed a Request for Rehearing.
`
`Paper 33 (“Req. Reh’g”). The Request for Rehearing raises two principal
`
`arguments. First, Patent Owner contends, the Board’s findings concerning
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`limitations requiring “connecting” a client device to a packet-switched
`
`network or that a client device be “connected to” a packet-switched network
`
`are “based on an overbroad construction and a misunderstanding of Griffin.”
`
`Req. Reh’g 3–8. Second, Patent Owner contends, the Board misapplied its
`
`construction of the claim term “instant voice message.” Id. at 8–10.
`
`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. We address each of Patent Owner’s arguments in turn.
`
`
`1 Unless otherwise noted, all Paper and Exhibit numbers cited herein refer
`to identical papers and exhibits filed in both captioned cases.
`
`2
`
`

`

`IPR2017-01797 and IPR2017-01798
`Patent 8,724,622 B2
`
`
`II. ANALYSIS
`
`A. “Connecting” and “Connected To” Limitations
`
`Claims 27 and 38 of the ’622 patent each recite “a network interface
`
`coupled to [a] client device and connecting the client device to a packet-
`
`switched network.” Ex. 1001, 26:19–20, 27:13–14 (emphasis added).
`
`Claim 3 of the ’622 patent similarly recites “a network interface connected
`
`to a packet-switched network.” Id. at 24:13–14 (emphasis added). In the
`
`Final Written Decision, we explained that we understood Patent Owner’s
`
`arguments in its analysis of the prior art to imply that the recited network
`
`interface must be “directly” connected to the “packet-switched network.”
`
`Final Dec. 18 (citing IPR2017-01797, Paper 12, 13–19 (Patent Owner’s
`
`Response to Petition)). We considered those arguments, but we agreed with
`
`Petitioner that such a reading is contrary to both the disclosure of the ’622
`
`patent itself and Patent Owner’s expert’s deposition testimony. Id. at 18–19
`
`(citing IPR2017-01797, Paper 17, 6–8 (Petitioner’s Reply to Patent Owner’s
`
`Response); Ex. 1001, 1:66–2:21, 7:37–52, 8:32–39, 9:17–21, 22:67–23:3,
`
`Fig. 5; Ex. 1040, 103:10–104:22, 139:20–146:22, 61:7–13).
`
`In the Request for Rehearing, Patent Owner argues that “[t]he Board
`
`should reconsider its claim construction because it impermissibly renders the
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`‘connecting’ and ‘connected to’ claim language meaningless in this
`
`context.” Req. Reh’g 3. According to Patent Owner:
`
`the connecting
`identifies
`language expressly
`The claim
`component as a “network interface”—i.e., a physical structure
`of the “client device” that, as the term itself expresses,
`interfaces the “client device” with a network. The claim
`language also expressly identifies the specific network to which
`the “network interface” must interface—i.e., the “packet-
`switched network.” The surrounding context, therefore,
`
`3
`
`

`

`IPR2017-01797 and IPR2017-01798
`Patent 8,724,622 B2
`
`
`confirms the claim language would be rendered meaninglessly
`empty if read broadly to include two distant elements which are
`not connected to and interface with each other, but rather only
` See Ethicon
`communicate via
`intervening elements.
`Endo-Surgery, Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1579
`(Fed. Cir. 1996) (finding the term “connected to” in the phrase
`“connected to the slots” would be rendered “meaninglessly
`empty” if read broadly to include two distant elements which
`are separated by interposed elements).
`
`Req. Reh’g 3–4.
`
`Patent Owner further contends that “[t]he Board appears to have
`
`misunderstood the ’622 patent” in referring to an embodiment in which a
`
`legacy telephone is connected indirectly to a packet-switched network as
`
`supporting the interpretation adopted in the Final Written Decision, and
`
`“overlooked a much more relevant passage of the ’622 patent that uses
`
`‘connected to’ language in the context of a client.” Id. at 4–5 (citing Final
`
`Dec. 18; Ex. 1001, 4:1–18). According to Patent Owner, the passage cited
`
`by the Board in the Final Written Decision “does not support the Board’s
`
`construction at least because it does not identify the legacy telephone 110 as
`
`being a ‘client’ as claimed,” whereas, in the passage cited by Patent Owner,
`
`“a client and server communicate with each other, though the patent
`
`describes the client as ‘connected to the local network’ and the server as
`
`‘connected by the external network.’” Id. (emphasis in original). Patent
`
`Owner contends, “[t]here can be no question that the ’622 patent uses
`
`‘connected to’ in this passage to refer to direct connections only,” and
`
`“interpreting the ‘connecting’ and ‘connected to’ limitations as
`
`encompassing so-called indirect connections would make the patent’s
`
`description nonsensical, given that the client and server are described as
`
`4
`
`

`

`IPR2017-01797 and IPR2017-01798
`Patent 8,724,622 B2
`
`‘connected to’ only selective ones of either the local network or the external
`
`network, but not both.” Id. at 5 (emphases in original).
`
`We have considered Patent Owner’s arguments but are not persuaded
`
`of any error in our Final Written Decision. First, Patent Owner’s arguments
`
`do not persuade us that a connection to a network would be understood by a
`
`person of ordinary skill in the art to require a direct physical connection akin
`
`to the connection to the slots at issue in the Ethicon case cited by Patent
`
`Owner. Whether or not a network interface is itself a “physical structure,”
`
`we do not understand a “packet-switched network” to be a physical structure
`
`in the same sense. To be sure, there may be physical structures such as
`
`routers, switches, and cables within such a network, but we do not
`
`understand any of those components themselves to be the network.
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`Accordingly, it is unclear what it would mean for a network interface to be
`
`connected “directly” to a network, even if the claims had included such a
`
`recitation.
`
`Second, notwithstanding Patent Owner’s contention that the cited
`
`embodiments do not identify legacy telephone 110 as being a “client,” we
`
`remain persuaded by Petitioner’s argument that Patent Owner’s expert,
`
`Mr. Easttom, confirmed in his deposition that “the specification supports
`
`[the Board’s] understanding by describing embodiments that ‘facilitat[e]
`
`instant voice messaging according to the present invention’ using a legacy
`
`telephone 110 that has an indirect connection to a packet-switched network
`
`through a [public switched telephone network] PSTN network.” IPR2017-
`
`01797, Paper 17, 6 (quoting Ex. 1001, 7:37–52) (citing Pet. 13; Ex. 1001,
`
`5
`
`

`

`IPR2017-01797 and IPR2017-01798
`Patent 8,724,622 B2
`
`1:66–2:21; Ex. 1040, 103:10–104:22).”2 Whether telephone 110 is a
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`“client” is not the question, but rather whether it has a connection to a
`
`packet-switched network through the PSTN. We are persuaded by
`
`Petitioner’s contentions that it does.
`
`Third, the fact that the ’622 patent describes a client as connected to a
`
`local network and a server as connected to an external network (Ex. 1001,
`
`4:1–18) does not mean that the client is not also connected, through the
`
`local network, for example, to the external network. Indeed, without such a
`
`connection, it is unclear how the client and server would communicate, as
`
`Patent Owner concedes that they do. Req. Reh’g 5 (“In that passage, a client
`
`and server communicate with each other . . . .”). Patent Owner provides no
`
`support for its contention that “the client and server are described as
`
`‘connected to’ only selective ones of either the local network or the external
`
`network, but not both.” Id. (emphasis in original).3
`
`
`2 Contrary to Patent Owner’s contention (Req. Reh’g 4), we did not “offer”
`the entirety of the above quotation “as a direct quotation from the
`specification,” but rather as a direct quotation from Petitioner’s Reply in
`IPR2017-01797, which in turn quoted only the phrase “facilitat[e] instant
`voice messaging according to the present invention” from the specification.
`
`3 For essentially the same reasons, we also are not persuaded by Patent
`Owner’s related argument that Petitioner’s declarant, Dr. Haas, “similarly
`described Fig. 2 of Griffin in a manner that confirms the mobile terminals
`are only connected to the wireless carrier infrastructure.” Req. Reh’g 5.
`(citing Ex. 2007 [sic], 48:18–49:2). Even apart from the fact that there is no
`Exhibit 2007 in either of the present cases and we are unable to locate the
`cited testimony, the fact that Dr. Haas may not have expressly testified that
`the mobile terminals are themselves connected to network 203 is not
`persuasive evidence that a person of ordinary skill in the art would not have
`regarded them as being connected. Indeed, we understand from the alleged
`testimony that the mobile terminals are connected to network 203 through
`
`
`6
`
`

`

`IPR2017-01797 and IPR2017-01798
`Patent 8,724,622 B2
`
`
`Finally, because we stand by our determination that the claims do not
`
`require “direct” connection, we are not persuaded of error by Patent Owner’s
`
`remaining arguments concerning the “connecting” and “connected to”
`
`limitations (Req. Reh’g 5–8), which allege non-obviousness of modification
`
`of Griffin to have its terminals directly connect to network 203.
`
`B. “Instant Voice Message”
`
`Claim 27 of the ’622 patent recites that an “instant voice message
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`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
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`the Final Written Decision that the term “instant voice message” refers to a
`
`“data content including a representation of an audio message.” Final Dec.
`
`14. Further, we agreed with Petitioner that, although neither claim 27 nor
`
`the specification of the ’622 patent recites any particular structure for the
`
`recited “document handler system,” the cited combination of Griffin and
`
`Zydney discloses a component or functionality that performs the recited
`
`functions of the document handler system. Id. at 54. We agreed, in
`
`particular, that it would have been obvious for Griffin to attach a file to a
`
`speech chat message, based on Zydney’s teachings of attaching a file to a
`
`voice container, using the well-known MIME standard. Id.
`
`Patent Owner contends that Petitioner did not meet its burden to prove
`
`obviousness under the construction of “instant voice message” set forth in
`
`the Final Written Decision, alleging that “it is undisputed that neither Griffin
`
`
`wireless carrier 1 or wireless carrier 2. Id. (quoting Dr. Haas as testifying
`that “Figure 2 . . . shows that the mobile terminal 1, 2, 3, 4 are connected to
`wireless carrier 1 or wireless carrier 2, and those two, wireless carrier 1 and
`wireless carrier 2, are connected to the network 203”).
`
`7
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`

`

`IPR2017-01797 and IPR2017-01798
`Patent 8,724,622 B2
`
`nor Zydney expressly or inherently discloses attaching one or more files to
`
`data content.” Req. Reh’g 9. Patent Owner further contends that “[t]he
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`Board has repeatedly observed that Petitioner concedes Griffin does not
`
`describe attaching one or more files to the audio file in the speech chat
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`message.” Id. (citing Final Dec. 27; IPR2017-01800, slip op. at 28 (PTAB
`
`Jan. 31, 2019) (Paper 34)). According to Patent Owner, Griffin
`
`distinguishes between message 400 and message content 406, and Griffin
`
`does not teach attachments 407 are attached to the message content 406
`
`itself. Id. at 9 n.3 (citing Ex. 1005, 6:38–44). We are not persuaded by
`
`Patent Owner’s argument. First, we could not have misapprehended or
`
`overlooked Patent Owner’s argument regarding Griffin’s “attachment”
`
`because Patent Owner did not make any arguments in this proceeding
`
`concerning Griffin’s attachment 407.
`
`Second, we do not agree with Patent Owner’s characterization of
`
`Griffin. According to Patent Owner, Griffin does not teach that attachment
`
`407 is “attached” to the “message content.” Id. at 9 n.3. Griffin, however,
`
`explains that the payload of the message “may” contain attachments, such as
`
`icons and ring-tones, implying that the attachments need not be included in
`
`the outbound chat message itself. Ex. 1005, 6:5052. What is important
`
`here is that Griffin associates the attachment with the speech chat message
`
`that is embodied by message 400. When Griffin includes the attachment in
`
`the payload of the message, such an attachment is associated not only with
`
`the message 400 (by virtue of the attachment being part of message 400), but
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`also is associated also with the audio file, in the data content of the message.
`
`Therefore, Patent Owner’s arguments are not persuasive and do not show
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`error in our determination that Griffin teaches the “attaching” limitation.
`
`8
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`

`

`IPR2017-01797 and IPR2017-01798
`Patent 8,724,622 B2
`
`Moreover, whereas Patent Owner contends that Zydney cannot cure the
`
`deficiency of Griffin “because it is undisputed that Zydney, at best, only
`
`attaches to a voice container, which Zydney expressly distinguishes as
`
`distinct and separately generated from anything resembling data content in
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`the form of speech” (Req. Reh’g 10), we disagree. As we previously
`
`explained,
`
`Zydney discloses attaching a digitized greeting card or other
`data types to the voice container to be transported to the
`recipient. Ex. 1006, 19:1–7 (stating that an important part of
`voice exchange and distribution is “attaching other media to
`the voice container” and that voice containers may have
`“digitized greeting cards appended
`to
`them”). Zydney
`describes “attachment” as “associating” in referring to Figure
`6, which discloses that the software agent asks the user “what
`multimedia file to associate [to] this voice container.” Ex.
`1006, Fig. 6 (emphasis added). Figure 16 of Zydney also
`describes, at step 5.1.4, “associating the multimedia file with
`the originator’s voice container, as well as networked
`voices.” Ex. 1003, Fig. 16, 35:15–17, Fig. 17. These
`disclosures of Zydney teach attaching one or more files to a
`voice container as an association of the one or more files to
`that voice container.
`Zydney’s teaching of performing the attachment is
`further informed by the use of the MIME standard. For
`example, Zydney discloses formatting voice containers using
`the MIME format, which allows attachment of files to be
`specified in a message header. Ex. 1006, 19:6–12. According
`to
`this embodiment then, a voice container would be
`formatted under
`the MIME standard, where a header
`identifies the file or files attached to the MIME-formatted
`voice container. Id. We find that this MIME-formatted voice
`container, which includes the voice data or digitized audio,
`includes the information necessary in the header to link the
`files that the user has attached to the voice container.
`
`9
`
`

`

`IPR2017-01797 and IPR2017-01798
`Patent 8,724,622 B2
`
`Final Dec. 55–56.
`
`Patent Owner further argues that the Board erred in “substituting the
`
`term ‘attaching’ with, instead, the word ‘associating.’” Req. Reh’g 10. We
`
`disagree. Our analysis highlighted the challenge presented by this and the
`
`related cases in which the claims sometimes required an attachment of a file
`
`to the instant voice message and sometimes required an attachment of a file
`
`to the audio message. Based on the foregoing, we stand by our decision
`
`based on the parties’ arguments during trial and at oral argument. Patent
`
`Owner has been given ample opportunity to address the term “instant voice
`
`message” and the related “attaching” limitation as these are issues that span
`
`multiple related matters and were extensively discussed at oral argument.
`
`See Paper 31, 75:2087:3 (Hearing Transcript). Patent Owner does not
`
`provide any support for the contention that a person of ordinary skill in the
`
`art understands “attaching” as being narrower than or different from
`
`“associating” files.
`
`C. Conclusion
`
`In conclusion, we are not persuaded that Patent Owner has shown that
`
`we misapprehended or overlooked the matters raised on rehearing and we
`
`see no reason to disturb our Final Written Decision in these proceedings.
`
`III. ORDER
`
`Patent Owner’s Request for Rehearing is denied.
`
`
`
`10
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`

`

`IPR2017-01797 and IPR2017-01798
`Patent 8,724,622 B2
`
`For PETITIONER:
`
`Naveen Modi
`Joseph E. Palys
`Phillip W. Citroen
`Michael Wolfe
`PAUL HASTINGS
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`phillipcitroen@paulhastings.com
`michaelwolfe@paulhastings.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
`
`
`11
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`