UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A.
`Patent Owner
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`IPR2017-1797
`PATENT 8,724,622
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. §42.107(a)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner
`
`v.
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`UNILOC LUXEMBOURG, S.A.
`Patent Owner
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`
`
`IPR2017-1797
`PATENT 8,724,622
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. §42.107(a)
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`IPR2017-1797
`U.S. Patent 8,724,622
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`Table of Contents
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`1
`2
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`4
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`11
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`13
`13
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`13
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`16
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`18
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`19
`20
`23
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`24
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`24
`28
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`30
`34
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`INTRODUCTION
`I.
`II. RELATED MATTERS
`III. THE PETITION SHOULD BE DENIED AS HORIZONTALLY
`AND VERTICALLY REDUNDANT.
`IV. THE PETITION SHOULD BE DENIED UNDER THE
`BOARD’S DISCRETION
`THE ’622 PATENT DESCRIBES INSTANT VOICE
`MESSAGING OVER A PACKET-SWITCHED NETWORK.
`A.
`Effective Filing Date of the ’622 Patent
`B.
`The ’622 Patent Describes and Claims Instant Voice
`Messaging over a Packet-Switched Network.
`The Challenged Claims of the ’622 Patent Recite a Method for
`Instant Voice Messaging over a Packet-Switched Network.
`VI. THERE IS NO REASONABLE LIKELIHOOD THAT ANY OF
`THE CHALLENGED CLAIMS WOULD HAVE BEEN
`RENDERED OBVIOUS.
`A.
`Zydney is Materially the Same as the art Cited During
`Prosecution of the ʼ622 Patent and Therefore is Demonstrably
`Duplicative for the Purposes Relied on by Petitioner.
`1.
`Zydney is Cumulative to Dahod
`2.
`Zydney also is Cumulative to Bernstein
`The Combination of Griffin plus Zydney Does Not Disclose
`Various Elements of the Challenged Claims
`1.
`Petitioner's Reliance on Griffin to Disclose an “Instant
`Voice Message” Fails to Establish a Prima Facie Case
`Griffin Does Not Disclose an “Instant Voice Message”
`Griffin plus Zydney Does Not Disclose a Network
`Interface Connected to a Packet-Switched Network
`Petitioner Does Not Support Its Arguments
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`V.
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`C.
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`B.
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`2.
`3.
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`4.
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`ii
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`IPR20 1 7-1 797
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`US. Patent 8,724,622
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`Griffin plus Zydney Does Not Render Obvious
`“Wherein the Instant Voice Message Includes an Object
`Field Including a Digitized Audio File”
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`Griffin plus Zydney Does Not Render Obvious
`“Wherein the Instant Voice Messaging Application
`Includes a Document Handler System for Attaching One
`or More Files to the Instant Voice Message”
`
`C-
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`A PHOSITA Would Not Combine Griffin and Zydney as
`Suggested by Petitioner
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`1.
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`2.
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`3.
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`4.
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`The Combination of Griffin and Zydney is Inoperable
`for Text-only Buddies
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`The Combination of Griffin plus Zydney Would Render
`Zydney Inoperable for Its Intended Purpose.
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`The Combination of Griffin plus Zydney Would Result
`in Zydney’s Messages Being Lost.
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`Griffin’s and Zydney’s Methods of Managing
`Availability are Incompatible.
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`VII. THE SUPREME COURT IS CURRENTLY REVIEWING THE
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`CONSTITUTIONALITY OF INTER PARTES REVIEW
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`VIII. CONCLUSION
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`List of Exhibits
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`
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`2001
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`Declaration of William C. Easttom II
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`2002
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`US. Pat. No. 7,372,826 (Dahod)
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`2003
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`US. Pat. App. Pub. No 2004/0128356 (Bernstein)
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`2004
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`Invalidity Contentions Submitted on December 16, 2016 in the
`underlying consolidated case of Uniloc USA, Inc. v. Samsung
`Electronic America ’s, Inc, Case No. 2: l6-cv-642
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`iii
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`37
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`41
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`44
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`47
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`50
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`52
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`53
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`59
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`60
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`INTRODUCTION
`Uniloc Luxembourg S.A. (the “Patent Owner”) submits this Owner’s
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`IPR2017-1797
`U.S. Patent 8,724,622
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`
`I.
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`Preliminary Response to Petition IPR2017-1797 for Inter Partes Review (“Pet.” or
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`“Petition”) of United States Patent No. 8,724,622 B2, System and Method for Instant
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`VoIP Messaging, (“the ’622 Patent” or “EX1001”) filed by Samsung Electronics
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`America, Inc. (“Petitioner”).
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`Petitioner argues that Claims 3, 4, 6–8, 10–13, 18, 21–23, 27, 32, 34–35, 38–
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`39 would have been rendered obvious to a person having ordinary skill in the art (a
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`“PHOSITA”) in 2003 in view of a user interface patent, U.S. Pat. No. 8,150,922 to
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`Chris Michael Griffin et al. (“Griffin,” EX1005) and International Pat. App. Pub.
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`No. WO 01/11824 A2 to Herbert Zydney et al. (“Zydney,” EX1006).
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`The Board should deny IPR2017-1797 in its entirety. First, the petition,
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`references, and grounds stated, are duplicative and redundant over IPR2017-1667.
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`Second, Petitioner fails to satisfy the All Elements Rule. Instead, Petitioner
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`impermissibly attempts to fill in missing limitations, at least in part, by offering
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`claim interpretations that are expressly proscribed by the unambiguous claim
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`language. The user interface patent to Griffin does not describe or enable instant
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`voice messaging. In addition, the references cannot and should not be combined as
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`the Petition suggests.
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`1
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`
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`II. RELATED MATTERS
`The ’622 Patent is in a family of patents including United States Patent Nos.
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`IPR2017-1797
`U.S. Patent 8,724,622
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`7,535,890 (“the ’890 Patent”); 8,243,723 (“the ’723 Patent”); 8,199,747 (“the ’747
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`Patent”); and 8,995,433 (“the ’433 Patent”).1 The diagram below how this family of
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`patents is interrelated.
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` 1
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` All five related patents derive from United States Patent Application
`No. 10/740,030 and are referred to collectively as members of the ’622 Patent’s
`“family.”
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`2
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`Petitioner has initiated six of the thirty-six IPRs initiated against these five
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`patents, as highlighted below. Eighteen IPR petitions initiated against these five
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`IPR20 1 7-1 797
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`US. Patent 8,724,622
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`patents predate Petitioner’s six filings.
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`Petitioner
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`Apple
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`Apple
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`pp—pv—ppN
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`14-Nov-16
`
`
`Apple
`IPR2017—0224
`14—Nov—16
`’622
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`Apple
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`Facebook / WhatsApp
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`14-Nov-16
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`7-Apr—l7
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`’43 3
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`’747
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`Facebook / WhatsApp
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`1 l-May-l 7
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`Facebook / WhatsApp
`IPR2017-1428
`11—May-17
`’433
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`Facebook / WhatsApp
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`Facebook / WhatsApp
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`Snap
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`IPR2017-1612
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`Facebook / WhatsApp
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`2-Jun-1 7
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`2-Jun—17
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`16-Jun-17
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`1 6—Jun- 1 7
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`’ 890
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`’890
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`’890
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`’433
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`Facebook / WhatsApp
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`’890
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`20-Jul-17
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`20-Jul-17
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`20-Jul-17
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`20-Jul-17
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`—————
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`[PR2017-l797
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`IPR2017-l798
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`IPR2017-l799
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`IPR2017-1800
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`IPR2017-1801
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`Samsung Elec
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`Samsung Elec
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`Samsung Elec
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`Samsung Elec
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`Samsung Elec
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`3
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`
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`IPR201 7-1 797
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`US. Patent 8,724,622
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`Petitioner
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`1%
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`Samsung Elec
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`IPR2017-1802
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`20-Jul-17
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`Apple
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`Apple
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`IPR2017—1804
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`20—Jul—17
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`IPR2017-l805
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`20-Jul-17
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`Huawei / LG Electronics
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`IPR20 l 7-2090
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`1 l-Sep- 1 7
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`LG Electronics
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`IPR20 1 7—2087
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`1 l-Sep— l 7
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`LG Electronics / Huawei
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`IPR2017-2088
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`1 1-Sep-17
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`Google/Huawei/Motorola
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`IPR2017-208O
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`12-Sep—17
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`Google/Huawei/Motorola
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`IPR2017-2081
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`12-Sep-17
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`Google/Huawei/Motorola
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`IPR2017-2082
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`11-Sep-17
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`Google/Huawei/Motorola
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`IPR2017-2083
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`11-Sep—17
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`Google/Huawei/Motorola
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`IPR201 7-2084
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`1 l-Sep- 1 7
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`Google/Huawei/Motorola
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`IPR2017-2067
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`12-Sep—17
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`Google/Huawei/Motorola
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`IPR201 7-2085
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`1 l-Sep- 1 7
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`’622
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`’622
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`43
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`’433
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`’622
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`’622
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`’890
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`890
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`’ 890
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`’433
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`’ 747
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`It is worth noting that Petitioner filed its six IPRs the same day (July 20, 2017)
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`that Apple filed two additional IPRs. Although presumably the parties coordinated
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`their efforts (see also fn. 3, infra), neither party identifies the other as a real party in
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`interest. The instant Petition does provide what appears to be an accurate summary
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`of pending litigation related to the ’622 Patent. Pet. at 1—4.
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`III. THE PETITION SHOULD BE DENIED AS HORIZONTALLY AND
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`VERTICALLY REDUNDANT.
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`Petitioner concurrently filed six IPR Petitions, IPRs 2017-1797 through 1802,
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`against the ’622 Patent family. Those Petitions could be the poster children for the
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`abusive filing of redundant inter partes review petitions. In addition to IPR2017-
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`
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`IPR2017-1797
`U.S. Patent 8,724,622
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`1797 and IPR2017-1798 challenging independent Claims 3 and 27 and claims
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`depending therefrom in the '622 Patent, Petitioner redundantly brings against Claims
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`3–4, 6–8, 10–13, 18, 21–23, 27, 32, 34–35, 38–39 of the ’622 Patent a reference,
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`Zydney, on grounds similar to those that are already before the Board in other
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`Petitions. Petitioner has not met its obligation to justify through reasoned
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`explanation why it should again tax the Board and the Patent Owner with these
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`redundant filings. See Liberty Mutual Insurance Co. v. Progressive Casualty
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`Insurance Co., CBM2012-0003, Paper 7, Order (P.T.A.B. October 25, 2012) at 2-
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`3.2
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`Petitioner concurrently filed six IPR petitions (IPR2017-1797 through 1802)
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`challenging at least 80 patent claims, many on multiple grounds, in five related
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`patents—the ’433, ’622, ’723, ’747, and ’890 Patents—using at least 10
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`combinations of 9 now-familiar references (in this section, references retread from
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`
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` 2
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` When the Board promulgated these Regulations, it considered the effect on the
`economy, the integrity of the patent system, the efficient administration of justice,
`and the ability of the Office to timely complete proceedings as mandated by 35
`U.S.C. §326(b). Because Petitioner thus frustrates Congressional intent, see Liberty
`Mutual, Paper No. 7 at 2, the Petition should be denied.
`
`
`5
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`
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`IPR2017-1797
`U.S. Patent 8,724,622
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`earlier proceedings are in bold italics): Aravamudan, Clark, Griffin, Lee, Low,
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`Malik, Väänänen, Vuori, and Zydney.3
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`In April and June 2017, Petitioner Facebook filed nine IPR petitions
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`(IPR2017-1257, 1365, 1427, 1428, 1523, 1524, 1634, 1667, and 1668) challenging
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`over at least 96 claims of the same five related patents—using at least 18
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`combinations of 16 references: Abburi, Appelman, Clark, Greenlaw, Hethmon,
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`Holtzberg, Logan, Malik, Martin-Flatin, Microsoft, Moghe, Newton, Shinder,
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`Väänänen, Vuori, and Zydney.
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`And a year ago, on Nov. 14, 2016, Petitioner Apple concurrently filed six IPR
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`petitions (IPRs 2017-0220 through 0225), challenging at least 71 patent claims in
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`four of the five related patents—the ’433, ’622, ’723, and ’890 Patents—using at
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`
` 3
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` Petitioner and Facebook (along with Apple and others) jointly submitted invalidity
`contentions on December 16, 2016 in the underlying consolidated case of Uniloc
`USA, Inc. v. Samsung Electronic America’s, Inc., Case No. 2:16-cv-642 (EX2004).
`Since such a filing, Petitioner, Facebook, and Apple have coordinated in IPR filings.
`These filings have been based on references known before the original IPR was filed.
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`
`6
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`
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`IPR2017-1797
`U.S. Patent 8,724,622
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`least 18 combinations of 13 references: Abburi, Dahod, Daniell, Deshpande,
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`Hogan, Holtzberg, Lerner, Logan, Malik, SMSS, Stubbs, Väänänen, Vuori.4
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`More recently, in September 2017, Petitioner Google filed seven IPR
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`Petitions, IPR2017-2067 and IPR2017-2080 through 2085, challenging at least 150
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`patent claims in four of the five related patents—the ’433, ’622, ’747, and ’890
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`Patents—using at least 19 combinations of 17 references: Aggarwal, Appelman,
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`Bartholemew, Boneh, Coussement, Demsky, Enete, Erekson, Gralla, Katsef, Okano,
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`Oppenheimer, RFC793, RFC2131, Stern, Trapani, and Zydney.
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`IPR2017-1667 and IPR2017-1668 argued that claims of the ’622 Patent are
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`obvious over Zydney plus Shinder5. Those IPRs rely on Zydney and Shinder to show
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`
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` 4
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` Dahod and Vuori are cumulative, and Dahod had been before the Office during
`prosecution. Petitioner Apple admitted, and the Board found, that Apple elucidated
`no significant difference between Dahod and Vuori. IPR2017-0224 Order Denying
`Institution, Paper No. 7, May 25, 2017, at 7 (“Petitioner attempting to distinguish
`the Dahod application from the ‘Vuori’ reference relied upon in concurrently filed
`IPR2017-00223 on the basis that the latter ‘is not susceptible to a potential §325(d)
`attack’”). Petitioner Apple admitted that Dahod had been before the Examiner during
`prosecution.
`5 Excerpts from Debra Littlejohn Shinder, COMPUTER NETWORKING ESSENTIALS
`(Cisco Press, 2002).
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`7
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`IPR2017-1797
`U.S. Patent 8,724,622
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`the claimed “network interface,” for which Petitioner currently relies on Griffin.
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`E.g., 1667 Pet., p. 18-23, 1668 Pet., p. 21-26. In the present Petition, Griffin is used
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`with Zydney in a similar manner as Shinder was used with Zydney in IPR2017-1667
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`and IRP2017-1668. These Petitions, references, and grounds are redundant. Yet,
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`Petitioner does not provide any reasoned explanation to justify needlessly burdening
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`the Board and the Patent Owner with this redundant Petition.6
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`To the contrary, Petitioner admits that Zydney is “at issue in other IPRs
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`challenging the ’622 Patent.” Pet., p. 7. Rather than justify the imposition of this
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`unnecessary burden on the Board, Petitioner relies on the excuse that “Grounds 1–3
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`rely on Griffin as a primary reference, which is not at issue in the other IPRs. Thus,
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`the Board should consider and adopt Grounds 1–3 because they are different than
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`those in the other IPRs.” Pet., pp. 7–8.
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`If all that is needed to file another IPR is that each IPR Petition is “different”
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`then there will never be an end to Petitioners' (Samsung, Apple, and others) abuse
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`of the system and harassment of Patent Owner. Thus, IPR2017-1797 should be
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`denied. It is clear that Petitioner is gaming the system. Petitioner appears to be
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`
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` 6
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` Petitioner uses Griffin only as a wedge to pry open the door for an additional IPR
`Petition. The substance of Petitioner’s arguments relies on Zydney (again).
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`
`8
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`
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`IPR2017-1797
`U.S. Patent 8,724,622
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`playing the odds: If Petitioners keep filing IPR Petitions against the ’622 Patent
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`family, Petitioners will eventually overwhelm the Board and Patent Owner.7 “The
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`absence of any restrictions on follow-on petitions would allow petitioners the
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`opportunity to strategically stage their prior art and arguments in multiple petitions,
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`using our decisions as a roadmap, until a ground is found that results in the grant of
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`review.” General Plastic Industrial Co. Ltd v. Canon Kabushiki Kaisha, IPR2016-
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`1357, Decision Denying Petitioner’s Request for Rehearing, Paper No. 19 at 17.8
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`For at least the reasons presented above. IPR2017-1797 should be denied as
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`redundant. “Multiple grounds, which are presented in a redundant manner by a
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`petitioner who makes no meaningful distinction between them, are contrary to the
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`regulatory and statutory mandates, and therefore are not all entitled to
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`
`
` 7
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` “You will kill ten of my men but we will kill one of yours. And in the end, it is you
`that will tire [of it first].” Ho Chi Minh, September 1946, at the close of negotiations
`with the French. Seeds of Revolution, Todd McCain, iUniverse LLC (Bloomberg
`2009) at p. 229.
`8 See also LG Elecs. Inc. v. Core Wireless Licensing S.A.R.L., Case IPR2016-00986
`(P.T.A.B. Aug. 22, 2016) (Paper 12) (“The Board’s resources would be more fairly
`expended on first petitions rather than on a follow-on petition like the Petition in this
`case”); Butamax Advanced Biofuels LLC v. Gevo, Case IPR2014-00581, slip op. at
`12–13 (P.T.A.B. Oct. 14, 2014) (Paper 8) (“[T]he four obviousness grounds are
`‘second bites at the apple’”).
`
`9
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`
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`IPR2017-1797
`U.S. Patent 8,724,622
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`consideration.” Liberty Mutual, Paper 7 at 2. See also 37 C.F.R. §42.1(b) which
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`mandates a “just, speedy, and inexpensive resolution of every proceeding.”
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`Of the thirty-six IPRs that have been initiated against the patents in this family,
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`at least twenty-five IPRs rely on Zydney as a primary reference. Although Petitioner
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`asserts that Griffin is the “primary reference,” Zydney actually is substance-over-
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`form the primary reference doing most of the work in the instant Petition. Of the
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`three challenged independent claims (Claims 3, 27, 38), Petitioner uses Zydney for
`
`more than half the limitations. Pet., pp. 9–30, 61–67, 70–71. For independent Claim
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`3—the independent claim that Petitioner analyzes most thoroughly—Petitioner
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`relies heavily on Zydney for “a network interface connected to a packet-switched
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`network” and “a communication platform system maintaining connection
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`information for each of the plurality of instant voice message client systems
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`indicating whether there is a current connection to each of the plurality of instant
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`voice message client systems.” Pet., pp. 13–16, 23–26. Petitioner relies on Zydney
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`similarly for the remaining independent claims. Id. at 61–67, 70–71. More telling,
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`of the 15 dependent claims challenged under Ground 1, Petitioner relies on Zydney
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`for 11 of them. Id. at 30–54, 56–59, 67–69, 71.
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`The inter partes review system is not a piñata party in which each colluding
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`Petitioner can take a turn whacking at Patent Owner’s patents with the Zydney stick.
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`The Board should therefore reject the instant Petition outright.
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`10
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`
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`IPR2017-1797
`U.S. Patent 8,724,622
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`The Board should disregard redundant grounds. See Berk-Tek LLC v. Belden
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`Techs. Inc., No. IPR2013-00057, Paper No. 21, Decision on Request for Rehearing
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`at 4-5 (P.T.A.B. May 14, 2013) (When “petitioner makes no meaningful distinction
`
`between certain grounds, the Board may exercise discretion by acting on one or more
`
`grounds and regard the others as redundant” because “allowing multiple grounds
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`without meaningful distinction by the petitioner is contrary to the legislative intent”);
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`Oracle Corp. v. Clouding IP, LLC, No. IPR2013-00075, Paper No. 8, Decision
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`Institution of Inter Partes Review at 13-14 (P.T.A.B. May 3, 2013) (denying various
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`grounds of unpatentability because they were redundant); AmkorTech., Inc. v.
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`Tessera, Inc., No. IPR2013-00242, Paper No. 37, Decision Institution of Inter Partes
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`Review at 32-33 (P.T.A.B. Oct. 11, 2013) (ditto). IPR2017-1797 should be denied
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`as redundant.
`
`IV. THE PETITION SHOULD BE DENIED UNDER THE BOARD’S
`DISCRETION
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108 make it clear that institution of an
`
`inter partes review is discretionary. Various factors have been considered by the
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`Board in determining whether to exercise discretion to deny review. Blue Coat
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`Systems LLC v. Finjan, Inc., No. IPR2016-01443, Paper 13, Decision Denying
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`Institution of Inter Partes Review at 8-9 (P.T.A.B. Jan. 23, 2017) provides a listing
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`of eight such factors (collecting cases, internal citations omitted):
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`11
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`
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`IPR2017-1797
`U.S. Patent 8,724,622
`
`
`(1) the finite resources of the Board;
`(2) the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than one year after the date on which the
`Director notices institution of review;
`(3) whether the same petitioner previously filed a petition directed to
`the same claims of the same patent;
`(4) whether, at the time of filing of the earlier petition, the petitioner
`knew of the prior art asserted in the later petition or should have
`known of it;
`(5) whether, at the time of filing of the later petition, the petitioner
`already received the patent owner’s preliminary response to the
`earlier petition or received the Board’s decision on whether to
`institute review in the earlier petition;
`(6) the length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the later petition and the filing of
`the later petition;
`(7) whether the petitioner provides adequate explanation for the time
`elapsed between the filing dates of multiple petitions directed to the
`same claims of the same patent; and
`(8) whether the same or substantially the same prior art or arguments
`previously were presented to the Office.
`
`
`These factors favor a discretionary decision of non-institution. Even if the
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`Board considers factors (2)-(7) inapplicable because there are no earlier-filed IPR
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`Petitions listing Samsung Electronics America, Inc. as Petitioner, factors (1) and (8)
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`12
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`
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`IPR2017-1797
`U.S. Patent 8,724,622
`
`counsel against institution. The first factor, “the finite resources of the Board,”
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`disfavors permitting the serial filing of multiple petitions against the same patent
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`using the same Zydney reference and associated arguments (which Patent Owner
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`would otherwise have no choice but to serially rebut in the same manner).
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`The eighth factor also favors denial because “the same or substantially same
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`prior art or arguments were previously presented to the office.” As explained above,
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`Petitioner provides no explanation for why the arguments and art cited in the instant
`
`Petition differ in any way from either the art cited during prosecution or for the
`
`horizontal or vertical redundancy reflected by the IPRs pending against this patent
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`family.
`
`The Board should therefore exercise its discretion to deny institution of any
`
`ground presented in the instant Petition.
`
`V. THE ’622 PATENT DESCRIBES INSTANT VOICE MESSAGING
`OVER A PACKET-SWITCHED NETWORK.
`A. Effective Filing Date of the ’622 Patent
`
`The ’622 Patent is titled “System and Method for Instant VoIP Messaging.”
`
`The ’622 Patent issued May 13, 2014 from U. S. Pat. App. No. 13/546,673, which
`
`is a Continuation of U.S. Pat. App. No. 12/398,063, filed on March 4, 2009, which
`
`is a Continuation of U.S. Pat. App. No. 10/740,030, filed on Dec. 18, 2003.
`
`B.
`
`The ’622 Patent Describes and Claims Instant Voice Messaging
`
`13
`
`
`
`over a Packet-Switched Network.
`’622 Patent
`describes
`how
`
`The
`
`IPR2017-1797
`U.S. Patent 8,724,622
`
`
`conventional
`
`circuit-switched
`
`communications enabled traditional telephony yet had a variety of technical
`
`disadvantages that limited developing other forms of communication over such
`
`networks. According
`
`to
`
`the ʼ622 Patent, “[c]ircuit switching provides a
`
`communication path (i.e., dedicated circuit) for a telephone call from the telephone
`
`terminal to another device 20 over the [public switched telephone network or] PSTN,
`
`including another
`
`telephone
`
`terminal. During
`
`the
`
`telephone call, voice
`
`communication takes place over that communication path.” EX1001, 1:32–34.
`
`The ʼ622 Patent expressly distinguishes circuit-switched networks from
`
`packet-switched networks at least in that the latter routes packetized digital
`
`information, such as “Voice over Internet Protocol (i.e., ‘VoIP’), also known as IP
`
`telephony or Internet telephony.” EX1001, 1:35–36. Because legacy circuit-
`
`switched devices were unable to communicate directly over packet-switched
`
`networks, media gateways were designed to receive circuit-switched signals and
`
`packetize them for transmittal over packet-switched networks, and vice versa.
`
`EX1001, 1:62–2:7. The conversion effected by media gateways highlights the fact
`
`that packetized data carried over packet-switched networks is different from and is
`
`incompatible with an audio signal carried over a dedicated circuit-switched network.
`
`EX1001, 1:24–34.
`
`14
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`IPR2017-1797
`U.S. Patent 8,724,622
`
`The ʼ622 Patent also describes how notwithstanding the advent of instant text
`
`messages, at the time of the claimed inventions there was no similarly convenient
`
`analog to leaving an instant voice message over a packet-switched network.
`
`EX1001, 2:8–46. Rather, “conventionally, leaving a voice message involves dialing
`
`the recipient’s telephone number—without knowing whether the recipient will
`
`answer—waiting for the connection to be established, speaking to an operator or
`
`navigating through a menu of options, listening to a greeting message, and recording
`
`the message for later pickup by the recipient. In that message, the user must typically
`
`identify … herself in order for the recipient to return the call.” EX1001, 2:23–33.
`
`The ʼ622 Patent solved the problem. The ’622 Patent describes how a user-
`
`accessible client can be configured for instant voice messaging using a direct
`
`communication over a packet-switched network (e.g., through an Ethernet card).
`
`EX1001, 12:4–50. Client devices can be configured to “listen[] to the input audio
`
`device 212,” “record[] the user’s speech into a digitized audio file 210 (i.e., instant
`
`voice message) stored on the IVM client 208,” and “transmit[] the digitized audio
`
`file 210” as packetized data (e.g., using TCP/IP) over a packet-switched network
`
`(e.g., network 204) “to the local IVM server 202.” EX1001, 7:53–8:39, Fig. 2.
`
`The Abstract of the 622 Patent summarizes the technical disclosure:
`
`Methods, systems and programs for instant voice messaging over a
`packet-switched network are provided. A method for instant voice
`
`15
`
`
`
`IPR2017-1797
`U.S. Patent 8,724,622
`
`
`messaging may comprise receiving an instant voice message having
`one or more recipients, delivering the instant voice message to the one
`or more recipients over a packet-switched network, temporarily
`storing the instant voice message if a recipient is unavailable; and
`delivering the stored instant voice message to the recipient once the
`recipient becomes available.
`
`EX1001, Abstract (emphasis added).
`
`C. The Challenged Claims of the ’622 Patent Recite a Method for
`Instant Voice Messaging over a Packet-Switched Network.
`Independent Claims 3, 27, and 38—the independent claims challenged in
`
`this IPR—read:
`
`3. A system comprising:
`a network interface connected to a packet-switched
`network;
`a messaging system communicating with a plurality of
`instant voice message client systems via the network interface;
`and
`
`a communication platform system maintaining
`connection information for each of the plurality of instant voice
`message client systems indicating whether there is a current
`connection to each of the plurality of instant voice message
`client systems,
`wherein the messaging system receives an instant voice
`message from one of the plurality of instant voice message
`client systems, and
`
`16
`
`
`
`IPR2017-1797
`U.S. Patent 8,724,622
`
`
`wherein the instant voice message includes an object
`field including a digitized audio file.
`
`27. A system comprising:
`a client device;
`a network interface coupled to the client device and
`connecting the client device to a packet-switched network; and
`an instant voice messaging application installed on the
`client device, wherein the instant voice messaging application
`includes a client platform system for generating an instant voice
`message and a messaging system for transmitting the instant
`voice message over the packet-switched network via the
`network interface,
`wherein the instant voice messaging application includes
`a document handler system for attaching one or more files to
`the instant voice message.
`
`38. A system comprising:
`a client device;
`a network interface coupled to the client device and
`connecting the client device to a packet-switched network; and
`an instant voice messaging application installed on the
`client device, wherein the instant voice messaging application
`includes a client platform system for generating an instant voice
`message and a messaging system for transmitting the instant
`
`17
`
`
`
`IPR2017-1797
`U.S. Patent 8,724,622
`
`
`voice message over the packet-switched network via the
`network interface,
`a display displaying a list of one or more potential
`recipients for an instant voice message.
`
`Independent Claims 3, 27, and 38 each recite an “instant voice message”
`
`limitation and a “network interface” communicatively coupled to a “packet-switched
`
`network”.
`
`Independent Claim 3 further recites a “messaging system” and an “object
`
`field including a digitized audio file” in the instant voice message.
`
`Independent Claim 27 further recites a “messaging system,” an “instant
`
`voice messaging application,” and a “document handler system”.
`
`VI. THERE IS NO REASONABLE LIKELIHOOD THAT ANY OF THE
`CHALLENGED CLAIMS WOULD HAVE BEEN RENDERED
`OBVIOUS.
`Petitioner has the burden of proof to establish entitlement to relief. 37 C.F.R.
`
`§42.108(c) (“review shall not be instituted for a ground of unpatentability unless
`
`. . . there is a reasonable likelihood that at least one of the claims challenged . . . is
`
`unpatentable”). IPR2017-1797 presents only theories of obviousness.9 It is
`
`
`
` 9
`
` A patent claim is unpatentable under 35 U.S.C. §103(a) only if the differences
`between the claimed subject matter and the prior art are “such that the subject matter
`
`
`18
`
`
`
`IPR2017-1797
`U.S. Patent 8,724,622
`
`Petitioner’s “burden to demonstrate both that a [PHOSITA] would have been
`
`motivated to combine the teachings of” the cited references “to achieve the claimed
`
`invention, and that the [PHOSITA] would have had a reasonable expectation of
`
`success in doing so.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed.
`
`Cir. 2016) (internal citation and quotation omitted); Apple v. Uniloc Luxembourg
`
`S.A., PR2017-000220, Paper No. 9, Decision Denying Institution, at 7 (emphasis in
`
`original) (“A determination of obviousness cannot be reached where the record lacks
`
`‘explanation as to how or why the references would be combined to produce the
`
`claimed invention.’ TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir.
`
`2016)”).
`
`Petitioner fails to meet this burden. The Petition should, therefore, be denied.
`
`A.
`
`Zydney is Materially the Same as the art Cited During Prosecution
`of the ʼ622 Patent and Therefore is Demonstrably Duplicative for
`the Purposes Relied on by Petitioner.
`In addition to being redundant over previously-filed IPRs, the cited art is
`
`redundant over art cited during prosecution. Of the two primary references relied
`
`upon in the Petition, Griffin and Zydney, Zydney is materially the same as art cited
`
`
`
`as a whole would have been obvious at the time the invention was made to a person
`having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co.
`v. Teleflex Inc., 550 U.S. 398, 406 (2007).
`
`19
`
`
`
`during prosecution of the ʼ622 Patent.
`
`IPR2017-1797
`U.S. Patent 8,724,622
`
`
`All of the assertions in the Petition against the claims of the ʼ622 Patent are
`
`based in part on Zydney. In other words, Petitioner relies on Zydney for the purpose
`
`of providing an allegedly missing teaching (i.e., absent from the record during
`
`prosecution of the application for the ʼ622 Patent) to invalidate each challenged
`
`claim of the ʼ622 Patent. Notwithstanding Petitioner's purpose to introduce Zydney
`
`for the missing teachings needed to support its grounds, Zydney is demonstrably
`
`duplicative for those purposes.
`
`1.
`Zydney is Cumulative to Dahod
`As an illustrative example, the Petition relies on an alleged teaching in Zydney,
`
`stating “a POSA would have been motivated to modify Griffin’s system/process so
`
`that network interface 306 of terminal 100 is directly connected to network 203,
`
`similar to as described in Zydney.” Pet., p. 15. However, U.S. Pat. No. 7,372,826
`
`(“Dahod," EX2002), listed on the face of the ʼ622 Patent and asserted by the Primary
`
`Examiner in rejecting the claims of the ʼ622 Patent (see EX1004, 108:9–110:11 and
`
`150:16–151:8), similarly describes the terminal directly connected to the network.
`
`EX2002, 4:33–63, 8:20–9:11, 9:61–67, 12:48–58, 10:62–67, 12:48–58.
`
`As another example, the Petition relies on another alleged teaching in Zydney,
`
`stating “a POSA would have readily ascertained that status 702 could have been
`
`configured to indicate whether terminal 100 is currently connected to server 204,
`
`20
`
`
`
`IPR2017-1797
`U.S. Patent 8,724,622
`
`and recognized the benefits of such an implementation.” Pet., p. 25. However,
`
`Dahod similarly describes indicating whether the terminal is available or unavailable
`
`for messaging. Id. at 7:40-48, 8:43-60, 12:48-58, 13:33-45.
`
`The Petition relies on yet another alleged teaching in Zydney, stating “a POSA
`
`would have been motivated to configure Griffin’s system/process such that server
`
`204 stores speech messages for terminals 100 that are not currently connected to
`
`server 204 and delivers the stored messages when the terminals 100 re-establish a
`
`connection.” Pet., p. 52. However, Dahod similarly describes storing instant
`
`messages to a server (e.g., for later retrieval by a user terminal becoming available)
`
`in addition to describing indicating whether the user terminal is available or
`
`unavailable for messaging. Id. at 12:19-26; see also Office Actions (EX1004, 108:9–
`
`24, 150:16–151:8).
`
`Under 35 U.S.C. § 325(d), the Board need not and should not second-guess
`
`issues of patentability that the Office addressed before issuing this patent.
`
`Specifically, § 325(d) authorizes the Office to reject grounds for inter partes review
`
`that seek to reargue positions:
`
`In determining whether to institute or order a proceeding under
`this chapter, chapter 30, or chapter 31, the Director may take into
`account whether, and reject the petition or request because, the
`same
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