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 2017 LLC,
`Patent Owner
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`Cases IPR2017-01797 and IPR2017-01798
`Patent 8,724,622 B2
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`PATENT OWNER’S REQUEST FOR
`REHEARING UNDER 37 C.F.R. § 42.71(D)
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`IPR2017-01797
`IPR2017-01798
`Patent 8,243,723 B2
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`In response to the Final Written Decision (“FWD”) entered January 31, 2019
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`(Paper 32) and pursuant to 37 CFR § 42.71(d), Patent Owner hereby respectfully
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`request a rehearing and reconsideration by the Patent Trial and Appeal Board of its
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`Final Decision.
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`I.
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`APPLICABLE STANDARDS
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`“A party dissatisfied with a decision may file a request for rehearing, without
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`prior authorization from the Board.” 37 C.F.R. §42.71(d). “The request must
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`specifically identify all matters the party believes the Board misapprehended or
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`overlooked, and the place where each matter was previously addressed in a motion,
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`an opposition, or a reply.” Id. The Board reviews a decision for an abuse of
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`discretion. 37 C.F.R. §42.71(c).
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`Claim construction is a question of law. Markman v. Westview Instruments,
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`52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). In an inter
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`partes review, claim terms in an unexpired patent are interpreted according to their
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`broadest reasonable construction in light of the specification of the patent in which
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`they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct.
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`2131, 2142 -46 (2016).
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`2
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`IPR2017-01797
`IPR2017-01798
`Patent 8,243,723 B2
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`II. ARGUMENT
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`A. The Board should reconsider its findings concerning the “connecting”
`and “connected to” claim language because it is based on an overbroad
`construction and a misunderstanding of Griffin.
`Several claims of the ’622 patent recite limitations requiring a network
`interface of a client device to be connected to a packet-switched network. For
`example, among other limitations, claims 27 and 38 each require “a network
`interface coupled to the client device and connecting the client device to a packet-
`switched network” and claim 3 requires “a network interface connected to a packet-
`switched network.” The Final Written Decision bases its finding of invalidity, in
`part, on the overbroad interpretation that “network interface” and the “packet-
`switched network” can be separated from each other by an intermediary network.
`FWD (Paper 32) at 18.
`The Board should reconsider its claim construction because it impermissibly
`renders the “connecting” and “connected to” claim language meaningless in this
`context. The claim language expressly identifies the connecting 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,
`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 communicate via intervening elements. See Ethicon Endo-
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`3
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`IPR2017-01797
`IPR2017-01798
`Patent 8,243,723 B2
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`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).
`The Board appears to have misunderstood the ’622 patent in concluding it
`describes an embodiment that supports the interpretation adopted in the Final
`Written Decision. Specifically, the Board appears to offer the following statement
`as a direct quotation from the specification (though it is not): “. . . a legacy telephone
`110 that has an indirect connection to a packet-switched network through a [public
`switched telephone network] PSTN network.” FWD (Paper 32) at 18 (citing ’622
`patent at 7:37−52). The couplet “indirect connection” does not appear in the cited
`passage of the ’622 patent, or anywhere in the patent for that matter. In any event,
`the cited passage does not support the Board’s construction at least because it does
`not identify the legacy telephone 110 as being a “client” as claimed,1 let alone a
`“client” that has a “network interface” allegedly indirectly connecting the legacy
`telephone 110 to a packet-switched network. In short, the claim language speaks for
`itself, as does the passage from the ’622 patent cited in the Final Written Decision,
`and neither supports the construction applied in the Final Written Decision.
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`1 Claim 27, for example, defines certain requirements for the “client” as follows: “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 wherein the instant voice messaging application
`includes a document handler system for attaching one or more files to the instant
`voice message.”
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`IPR2017-01797
`IPR2017-01798
`Patent 8,243,723 B2
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`The Board appears to have overlooked a much more relevant passage of the
`’622 patent that uses “connected to” language in the context of a client. See Patent
`Owner Response (Paper 12) at 15−16 (quoting ’622 patent at 4:1−18). In that
`passage, 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
`to the external network.” Id. There can be no question that the ’622 patent uses
`“connected to” in this passage to refer to direct connections only. Indeed,
`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 “connected to” only selective ones
`of either the local network or the external network, but not both.
`Dr. Haas similarly described Fig. 2 of Griffin in a manner that confirms the
`mobile terminals are only connected to the wireless carrier infrastructure:
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`As I look at the 19 Figure 2, the Figure 2 that you asked me to look
`at 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, sir.
`Ex. 2007 48:18–49:2. Tellingly, in summarizing his interpretation of the “connected
`to” structure of Griffin’s system, Dr. Haas did not testify that the mobile terminals
`are themselves “connected to” network 203. This testimony, which the Board
`appears to have overlooked, further undermines the construction adopted in the Final
`Written Decision.
`The Board also appears to overstate the significance of Dr. Easttom’s
`statement concerning Figure 3 of Griffin. FWD (Paper 32) at 18–19 (citing Ex. 1040
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`IPR2017-01797
`IPR2017-01798
`Patent 8,243,723 B2
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`161:7–13). Dr. Easttom merely stated that “the diagram shows a connection from
`the network interface to the router.” Ex. 1040 161:7–13. That a simplified diagram
`symbolically shows a line between elements does not mean that the system as
`described and implemented meets the structural claim limitations in question.2
`The Final Written Decision also misapprehends Griffin in concluding it would
`have been obvious to modify Griffin’s system to have its mobile terminals 100
`directly connect, instead, to network 203 when implementing speech chat
`messaging. Griffin states “the wireless carrier infrastructures 202 comprise those
`elements necessary to support wireless communications with the terminals 100.”
`Griffin (Ex. 1005) at 3:54−57 (emphasis added). Griffin also differentiates its
`terminals from the prior art at least in that the terminals allegedly have “[a]dditional
`components . . . that are . . . necessary to implement chat functionality” taught in
`Griffin. Griffin (EX1005) at 3:40−43 (emphasis added).
`Petitioner’s
`adopts
`The
`Final Written Decision
`erroneously
`mischaracterization of this disclosure in Griffin as referring, instead, to “the
`elements necessary for wireless communication within a wireless carrier’s
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`2 The Petition itself does not argue Griffin describes a client having a network
`interface that is itself connected to a packet-switched network. Rather, the Petition
`relies on a construction that no direct connection is necessary or, in the alternative,
`that it would have been obvious to modify Griffin to meet the connecting
`requirements. See, e.g., Pet. 12 (characterizing Griffin as disclosing that “network
`interface 306 provides connectivity to network 203 indirectly via [wireless carrier]
`infrastructure 202.”); see also Ex. 2007 at 54 (Dr. Haas confirming that Griffin
`would require modification if the claim language requires direct interconnections).
`Any new argument or evidence advanced for the first time in the Reply that Griffin
`discloses a direct connection should not have been considered by the Board.
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`IPR2017-01797
`IPR2017-01798
`Patent 8,243,723 B2
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`infrastructure 202.” FWD (Paper 32) at 44 (citations and internal quotations
`omitted, emphasis added). But Griffin unambiguously identifies the “necessary”
`purpose of the “elements” of the wireless carrier infrastructure as supporting the
`required wireless communication “with the terminals.” Griffin (Ex. 1005) at
`3:54−57 (emphasis added). It follows that absent those elements Griffin deems
`“necessarily” for the required wireless communication with the terminals, there
`can be no such wireless communication with the terminals. Id.
`In finding sufficient proof of motivation to modify Griffin, the Board
`appears to overstate the significance of certain statements from Dr. Easttom’s
`cross-examination testimony. FWD (Paper 32) at 44. The cited portion of Mr.
`Easttom’s cross-examination testimony (in which he answered impermissible
`gap-filing questions clearly outside the scope of his direct) does not somehow
`inoculate Griffin’s explicit disclosure that the required communications with the
`terminals necessitates elements of the wireless carrier infrastructure. Even if one
`were to assume it was known at the time that certain prior art devices could
`communicate with packet-switched networks in other contexts, and setting aside
`the fact that Griffin expressly distinguishes its terminals as purportedly having
`“[a]dditional components . . . that are . . . necessary to implement chat
`functionality” taught in Griffin (3:40-43), Griffin’s use of both wireless carrier
`infrastructure and network 203 only underscores the necessity of the wireless
`carrier infrastructure to communicate with the terminals—which is precisely what
`Griffin states.
`For at least the foregoing reasons, the Board should reconsider its finding
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`IPR2017-01797
`IPR2017-01798
`Patent 8,243,723 B2
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`that there would have been sufficient motivation to remove or otherwise bypass
`the wireless carrier infrastructure that Griffin explicitly describes as necessary to
`implement its claimed invention. See In re ICON Health & Fitness, Inc., 496 F.3d
`1374, 1382 (Fed. Cir. 2007) (“a reference teaches away from a combination when
`using it in that combination would produce an inoperative result.”); Plas–Pak Indus.,
`Inc. v. Sulzer Mixpac AG, 600 Fed. Appx. 755, 759 (Fed. Cir 2015) (combinations
`that change the basic principles under which the prior art was designed to operate
`may fail to support a conclusion of obviousness).
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`B. The Board misapplied its construction of “instant voice message”.
`Patent Owner respectfully submits that the Final Written Decision should also
`be reconsidered at least because it misapplies the Board’s construction of “instant
`voice message.” The Final Written Decision adopted Patent Owner’s definition of
`“instant message” to mean “data content including a representation of an audio
`message.” FWD (Paper 32) at 14. The Board correctly recognized that the “content”
`of the message refers to “user’s speech . . . in some digitized form.” Id. at 15 (“These
`embodiments, thus, paint a picture of the ‘instant voice message’ as first and
`foremost being the content of the message, or the user’s speech, in some digitized
`form.”) (emphasis added); id. (“In all embodiments, the ‘instant voice message’
`refers, at a minimum, to the digitized speech, regardless of whether it is contained
`in an audio file, successive portions stored in a buffer, or a block of data in an object
`field.”).
`Claim 27 requires that the “instant voice message application includes a
`document handler system for attaching one or more files to the instant voice
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`IPR2017-01797
`IPR2017-01798
`Patent 8,243,723 B2
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`message.” See Paper 37 at 19. Substituting in the Board’s construction for “instant
`voice message” into the remainder of this recitation yields, “attaching one or more
`files to [data content including a representation of an audio message].” The
`Petitioner did not meet its burden to prove obviousness under such a construction.
`The Petitioner could not because it is undisputed that neither Griffin nor Zydney
`expressly or inherently discloses attaching one or more files to data content (i.e., to
`what the Board characterized as referring to user’s speech in some digitized form).
`To be clear, and contrary to what the Board suggests in its Final Written
`Decision, Patent Owner has not advanced a narrowing construction by arguing that
`the claim language explicitly directed to attaching one claim term (“one or more
`files”) to another claim term (“the instant voice message”) means what it says. It was
`Petitioner’s burden, not Patent Owner, to advance and defend a construction (in the
`Petition itself) that departs from explicit claim language that unambiguously
`identifies the specific elements that must be attached.
`The Board has repeatedly observed that Petitioner concedes Griffin “does not
`describe attaching one or more files to the audio file in the speech chat message.”
`IPR2017-01800, FWD (Paper 34) at 28; see also IPR2017-01797, FWD (Paper 32)
`at 27 (citing Pet. 65−66).3 Petitioner alleges it would have been obvious to modify
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`3 Griffin alone renders obvious “attaches one or more files to the instant voice message” ostensibly because Griffin
`discloses attaching files only to text messages and it would have been obvious to modify Griffin to implement the
`same attaching in the entirely different context of speech chat messages. FWD (Paper 31) at 68 (citing Griffin at
`6:38−44 and 12:63−67). The cited portions of Griffin, however, do not disclose attaching one or more files to data
`content, as characterized by the Board in its construction of “instant voice message.” Neither the Petition nor its
`attached declaration argues otherwise. Petitioner could not because, in the embodiment cited by the Board, Griffin
`expressly distinguishes message 400 from the message content 406; and it is undisputed that Griffin does not
`expressly or inherently disclose that the attachments 407 are attached to the message content 406 itself. Griffin at
`6:38−44. Accordingly, the proposed modification (which relies on mere conclusory speculation extraneous to the
`express disclosure in Griffin) would still fail to map unto what the claim language explicitly requires.
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`IPR2017-01797
`IPR2017-01798
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`Griffin based on the alleged teaching in Zydney of attaching one or more files to a
`voice container that merely contains a distinct and separately generated audio file.
`FWD (Paper 32) at 27 (citing Pet. 65−66).
`Setting aside the insufficiency of record evidence supporting such a
`modification, the proposed modification does not render obvious the claimed
`“instant voice message” as construed by the Board (i.e., “data content including a
`representation of an audio message,” which the Board further clarified as referring
`to user’s speech in some digitized form). Zydney cannot cure the conceded
`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 the form of digitized speech.
`The Board also erred in suggesting this deficiency is somehow cured by
`substituting the term “attaching” with, instead, the word “associating.” Even if the
`Petition had attempted to defend such a claim construction with supportive argument
`and evidence, and it does not, Petitioner nevertheless has still failed to prove
`“[associating] one or more files to [data content]”—i.e., to the digitized speech.
`III. CONCLUSION
`In view of the foregoing, Patent Owner respectfully requests that the Board
`grant a rehearing and reconsider its Final Written Decision.
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`IPR2017-01797
`IPR2017-01798
`Patent 8,243,723 B2
`Date: March 4, 2019
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`/s/ Brett A. Mangrum
`Brett A. Mangrum
`brett@etheridgelaw.com
`Reg. No. 64,783
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`Ryan Loveless
`ryan@etheridgelaw.com
`Reg. No. 51,970
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`Counsel for Patent Owner
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`IPR2017-01797
`IPR2017-01798
`Patent 8,243,723 B2
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that the foregoing was served electronically on
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`counsel of record for Petitioner.
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`Date: March 4, 2019
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`/s/ Brett A. Mangrum
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`Brett A. Mangrum
`brett@etheridgelaw.com
`Reg. No. 64,783
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`Counsel for Patent Owner
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