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.
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`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A.
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`Patent Owner
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`IPR2017-1798
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`PATENT 8,724,622
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.107(a)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS AMERICA, INC.
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`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A.
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`Patent Owner
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`IPR2017-1798
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`PATENT 8,724,622
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. §42.107(a)
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`IPR2017-1798
`U.S. Patent 8,724,622
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`Table of Contents
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`
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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.
`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.
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`V.
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`1.
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`2.
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`Zydney is Cumulative to Dahod
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`Zydney also is Cumulative to Bernstein
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`B.
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`C.
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`Vaananen was Cited During Prosecution of the ʼ622 Patent and
`Therefore is Demonstrably Duplicative for the Purposes Relied
`on by Petitioner.
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`The Combination of Griffin plus Zydney Does Not Reveal
`Various Elements of the Challenged Claims
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`1.
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`2.
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`3.
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`4.
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`5.
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`Petitioner's Reliance on Griffin to Discloses an “Instant
`Voice Message” Fails to Establish a Prima Facie Case
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`Griffin Does Not Disclose an “Instant Voice Message”
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`Griffin plus Zydney Does Not Disclose a Network
`Interface Connected to a Packet-Switched Network
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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”
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`1
`1
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`4
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`9
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`11
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`13
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`13
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`14
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`16
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`17
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`17
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`17
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`21
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`23
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`28
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`33
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`ii
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`IPR2017-1798
`U.S. Patent 8,724,622
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`D. 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 Unsatisfactory for Its Intended Purpose.
`
`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.
`
`E.
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`No Prima Facie Showing of a Database Record of a Message
`Database Including a Unique Identifier and an Instant Voice
`Message.
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`1.
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`2.
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`3.
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`Griffin plus Zydney and Clark Lack a Database Record
`of a Message Database Including a Unique Identifier and
`an Instant Voice Message.
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`There could have been no Motivation to Combine Griffin
`plus Zydney with Clark to Devise a Database Record of a
`Message Database Including a Unique Identifier and an
`Instant Voice Message.
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`No Prima Facie Obviousness Because Petitioner's
`Proposed Combination of Griffin plus Zyndey with Clark
`Results in Messages Being Deleted once they are sent to
`the Server.
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`F.
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`Neither Griffin plus Zydney nor Clark Disclose a File Manager
`System Storing, Deleting and Retrieving the Instant Voice
`Messages.
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`G. No Motivation to Combine Griffin plus Zydney with Low.
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`VII. THE SUPREME COURT IS CURRENTLY REVIEWING THE
`CONSTITUTIONALITY OF INTER PARTES REVIEW
`VIII. CONCLUSION
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`36
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`38
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`41
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`43
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`43
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`48
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`49
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`52
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`54
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`56
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`60
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`61
`62
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`iii
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`IPR2017-1798
`U.S. Patent 8,724,622
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`Exhibit No.
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`Description
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`List of Exhibits
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`2001
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`Declaration of William C. Easttom II
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`2002
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`U.S. Pat. No. 7,372,826 (Dahod)
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`2003
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`U.S. 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. 2:16-cv-642
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`
`
`
`iv
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`
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`IPR2017-1798
`U.S. Patent 8,724,622
`
`I.
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`INTRODUCTION
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`Uniloc Luxembourg S.A. (the “Patent Owner”) submits this Owner’s
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`Preliminary Response to Petition IPR2017-1798 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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`As further explained below, the Board should deny IPR2017-1798 in its
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`entirety for numerous reasons.
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`II. RELATED MATTERS
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`The ’622 Patent is in a family of patents including United States Patent Nos.
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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 All five related patents derive from United States Patent Application
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`No. 10/740,030 and are referred to collectively as members of the ’622 Patent’s
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`“family.”
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`1
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`IPR2017-1798
`U.S. Patent 8,724,622
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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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`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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`Apple
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`Apple
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`Apple
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`Apple
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`IPR#
`IPR2017-0220
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`Date
`14-Nov-16
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`IPR2017-0221
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`14-Nov-16
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`IPR2017-0222
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`14-Nov-16
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`IPR2017-0223
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`14-Nov-16
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`IPR2017-0224
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`14-Nov-16
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`IPR2017-0225
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`14-Nov-16
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`2
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`Patent
`’890
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`’890
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`’723
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`’622
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`’622
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`’433
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`
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`IPR2017-1798
`U.S. Patent 8,724,622
`
`Petitioner
`Facebook / WhatsApp
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`IPR#
`IPR2017-1257
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`Date
`7-Apr-17
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`Patent
`’747
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`Facebook / WhatsApp
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`IPR2017-1365
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`3-May-17
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`Facebook / WhatsApp
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`IPR2017-1427
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`11-May-17
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`Facebook / WhatsApp
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`IPR2017-1428
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`11-May-17
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`Facebook / WhatsApp
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`IPR2017-1523
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`Facebook / WhatsApp
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`IPR2017-1524
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`2-Jun-17
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`2-Jun-17
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`Facebook / WhatsApp
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`IPR2017-1667
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`22-Jun-17
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`Snap
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`Snap
`Facebook / WhatsApp
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`Facebook / WhatsApp
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`Facebook / WhatsApp
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`Samsung Elec
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`Samsung Elec
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`IPR2017-1611
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`15-Jun-17
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`IPR2017-1612
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`16-Jun-17
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`IPR2017-1634
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`16-Jun-17
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`IPR2017-1635
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`16-Jun-17
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`IPR2017-1636
`IPR2017-1797
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`IPR2017-1798
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`IPR2017-1799
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`16-Jun-17
`20-Jul-17
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`20-Jul-17
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`20-Jul-17
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`’723
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`’433
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`’433
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`’890
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`’890
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`’622
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`’433
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`’890
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`’433
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`’723
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`’890
`’622
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`’622
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`’747
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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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`Apple
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`Apple
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`IPR2017-1800
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`IPR2017-1801
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`IPR2017-1802
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`IPR2017-1804
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`IPR2017-1805
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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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`20-Jul-17
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`Huawei / LG Electronics
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`IPR2017-2090
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`11-Sep-17
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`LG Electronics
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`IPR2017-2087
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`11-Sep-17
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`LG Electronics / Huawei
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`IPR2017-2088
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`11-Sep-17
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`Google/Huawei/Motorola
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`IPR2017-2080
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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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`IPR2017-2084
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`11-Sep-17
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`
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`3
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`’723
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`’433
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`’890
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`’622
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`’622
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`’622
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`’433
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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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`IPR2017-1798
`U.S. Patent 8,724,622
`
`Petitioner
`Google/Huawei/Motorola
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`IPR#
`IPR2017-2067
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`Date
`12-Sep-17
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`Google/Huawei/Motorola
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`IPR2017-2085
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`11-Sep-17
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`Patent
`’433
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`’747
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`
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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
`VERTICALLY REDUNDANT.
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`Petitioner’s concurrently filed IPRs 2017-1798 through 1802 could be the
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`poster children for the abusive filing of redundant inter partes review petitions. In
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`addition to IPR2017-1797 and IPR2017-1798 challenging independent Claims 3 and
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`27 Petitioner redundantly brings a reference, Zydney, on grounds similar to those
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`that are already before the Board in other Petitions. Petitioner has not met its
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`obligation to justify through reasoned explanation why it should again tax the Board
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`and the Patent Owner with these redundant filings. Liberty Mutual Insurance Co. v.
`
`Progressive Casualty Insurance Co., CBM2012-0003, Paper 7, Order (P.T.A.B.
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`
`
`4
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`
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`IPR2017-1798
`U.S. Patent 8,724,622
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`October 25, 2012) at 2-3.2
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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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`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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`2 When the Board promulgated these Regulations, it considered the effect on the
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`economy, the integrity of the patent system, the efficient administration of justice,
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`and the ability of the Office to timely complete proceedings as mandated by 35
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`U.S.C. §326(b). Because Petitioner thus frustrates Congressional intent, see Liberty
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`Mutual, Paper No. 7 at 2, the Petition should be denied.
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`3 Petitioner and Facebook (along with Apple and others) jointly submitted invalidity
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`contentions on December 16, 2016 in the underlying consolidated case of Uniloc
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`USA, Inc. v. Samsung Electronic America’s, Inc., Case No. 2:16-cv-642 (EX2004).
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`Since such a filing, Petitioner, Facebook, and Apple have coordinated in IPR filings.
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`These filings have been based on references known before the original IPR was filed.
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`
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`5
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`
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`IPR2017-1798
`U.S. Patent 8,724,622
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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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`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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`4 Dahod and Vuori are cumulative, and Dahod had been before the Office during
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`prosecution. IPR2017-0224 Order Denying Institution, Paper No. 7, May 25, 2017,
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`at 7 (“Petitioner attempting to distinguish the Dahod application from the ‘Vuori’
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`reference relied upon in concurrently filed IPR2017-00223 on the basis that the latter
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`‘is not susceptible to a potential §325(d) attack’”).
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`
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`6
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`
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`IPR2017-1798
`U.S. Patent 8,724,622
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`obvious over Zydney plus Shinder5. Those IPRs rely on Zydney and Shinder to show
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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. Yet, Petitioner does not provide any reasoned explanation to
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`justify needlessly burdening the Board and the Patent Owner with this redundant
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`Petition.
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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. 8. 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., p. 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. It is clear that Petitioner is gaming
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`the system. Petitioner appears to be playing the odds: If Petitioners keep filing IPR
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`5 Excerpts from Debra Littlejohn Shinder, COMPUTER NETWORKING ESSENTIALS
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`(Cisco Press, 2002).
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`
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`7
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`
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`IPR2017-1798
`U.S. Patent 8,724,622
`
`Petitions against the ’622 Patent family, Petitioners will eventually overwhelm the
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`Board and Patent Owner.6 “The absence of any restrictions on follow-on petitions
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`would allow petitioners the opportunity to strategically stage their prior art and
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`arguments in multiple petitions, using our decisions as a roadmap, until a ground is
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`found that results in the grant of review.” General Plastic Industrial Co. Ltd v.
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`Canon Kabushiki Kaisha, IPR2016-1357, Decision Denying Petitioner’s Request
`
`for Rehearing, Paper No. 19 at 17.7
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`“Multiple grounds, which are presented in a redundant manner by a petitioner
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`who makes no meaningful distinction between them, are contrary to the regulatory
`
`and statutory mandates, and therefore are not all entitled to consideration.” Liberty
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`Mutual, Paper 7 at 2. See also 37 C.F.R. §42.1(b) which mandates a “just, speedy,
`
`
`6 “You will kill ten of my men but we will kill one of yours. And in the end, it is you
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`that will tire [of it first].” Ho Chi Minh, September 1946, at the close of negotiations
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`with the French. Seeds of Revolution, Todd McCain, iUniverse LLC (Bloomberg
`
`2009) at p. 229.
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`7 See also LG Elecs. Inc. v. Core Wireless Licensing S.A.R.L., Case IPR2016-00986
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`(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
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`12–13 (P.T.A.B. Oct. 14, 2014) (Paper 8) (“[T]he four obviousness grounds are
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`‘second bites at the apple’”).
`
`
`
`8
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`
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`IPR2017-1798
`U.S. Patent 8,724,622
`
`and inexpensive resolution of every proceeding.” Of the thirty-six IPRs that have
`
`been initiated against the patents in this family, at least twenty-five IPRs rely on
`
`Zydney as a primary reference. Although Petitioner asserts that Griffin is the
`
`“primary reference,” Zydney actually is substance-over-form the primary reference
`
`doing most of the work in the instant Petition. Petitioner uses Zydney for more than
`
`half the limitations of the challenged independent claims. Pet., pp. 14–36, 38–44,
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`64–71. Of the eight dependent claims challenged under Ground 1, Petitioner relies
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`on Zydney for all eight of them. Id. at 44–60.
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`The inter partes review system is not a piñata party in which each colluding
`
`Petitioner can take a turn whacking at Patent Owner’s patents with the Zydney stick.
`
`The Board should therefore reject the instant Petition outright.
`
`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
`
`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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`(1) the finite resources of the Board;
`
`
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`9
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`
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`IPR2017-1798
`U.S. Patent 8,724,622
`
`(2) the requirement under 35 U.S.C. § 316(a)(11) to issue a final
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`determination not later than one year after the date on which the
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`Director notices institution of review;
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`(3) whether the same petitioner previously filed a petition directed to
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`the same claims of the same patent;
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`(4) whether, at the time of filing of the earlier petition, the petitioner
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`knew of the prior art asserted in the later petition or should have
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`known of it;
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`(5) whether, at the time of filing of the later petition, the petitioner
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`already received the patent owner’s preliminary response to the
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`earlier petition or received the Board’s decision on whether to
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`institute review in the earlier petition;
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`(6) the length of time that elapsed between the time the petitioner
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`learned of the prior art asserted in the later petition and the filing of
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`the later petition;
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`(7) whether the petitioner provides adequate explanation for the time
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`elapsed between the filing dates of multiple petitions directed to the
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`same claims of the same patent; and
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`(8) whether the same or substantially the same prior art or arguments
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`previously were presented to the Office.
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`
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`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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`counsel against institution. The first factor, “the finite resources of the Board,”
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`
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`10
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`
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`IPR2017-1798
`U.S. Patent 8,724,622
`
`disfavors permitting the serial filing of multiple petitions against the same patent
`
`using the same Zydney reference and associated arguments (which Patent Owner
`
`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
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`Petition differ in any way from either the art cited during prosecution or for the
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`horizontal or vertical redundancy reflected by the IPRs pending against this patent
`
`family.
`
`V. THE ’622 PATENT DESCRIBES INSTANT VOICE MESSAGING
`OVER A PACKET-SWITCHED NETWORK.
`
`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,
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`which is a Continuation of U.S. Pat. App. No. 10/740,030, filed on Dec. 18, 2003.
`
`The
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`’622 Patent
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`describes
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`how
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`conventional
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`circuit-switched
`
`communications enabled traditional telephony yet had a variety of technical
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`disadvantages that limited developing other forms of communication over such
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`networks: “[c]ircuit switching provides a communication path (i.e., dedicated
`
`circuit) for a telephone call from the telephone terminal to another device 20 over
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`the [public switched telephone network or] PSTN, including another telephone
`
`
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`11
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`
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`IPR2017-1798
`U.S. Patent 8,724,622
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`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
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`packet-switched networks. EX1001, 1:35–36. Because legacy circuit-switched
`
`devices were unable to communicate directly over packet-switched networks, media
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`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 ʼ622 Patent also describes how, at the time of the claimed inventions there
`
`was no similarly convenient analog to leaving an instant voice message over a
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`packet-switched network. EX1001, 2:8–46. The ʼ622 Patent describes how a user-
`
`accessible client can be configured for instant voice messaging using a direct
`
`communication over a packet-switched network. EX1001, 12:4–50. Client devices
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`can be configured to “listen[] to the input audio device 212,” “record[] the user’s
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`speech into a digitized audio file 210 (i.e., instant voice message) stored on the IVM
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`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.
`
`
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`12
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`IPR2017-1798
`U.S. Patent 8,724,622
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`VI. THERE IS NO REASONABLE LIKELIHOOD THAT ANY OF THE
`CHALLENGED CLAIMS WOULD HAVE BEEN RENDERED
`OBVIOUS.
`
`Petitioner presents theories of obviousness, so it is 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
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`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 12 (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.’”).
`
`Petitioner fails to meet this burden for various reasons, including the simple
`
`fact that Claims 14–17, 19, 28–31, and 33 are each patentable over Petitioner’s
`
`proposed combinations at least by virtue of depending from a nonobvious
`
`independent claim, as explained in Patent Owner’s Preliminary Response for
`
`IPR2017-1797.
`
`A.
`Zydney is Materially the Same as the art Cited During Prosecution
`of the ʼ622 Patent.
`
`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
`
`
`
`13
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`
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`IPR2017-1798
`U.S. Patent 8,724,622
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`prosecution of the application for the ʼ622 Patent) to invalidate each challenged
`
`claim of the ʼ622 Patent. Zydney is demonstrably duplicative for those purposes.
`
`1.
`
`Zydney is Cumulative to Dahod
`
`Relying on Zydney, the Petition states “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.” Pet., p. 19. 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 states “a POSA would have readily
`
`ascertained that status 702 could have been configured to indicate whether terminal
`
`100 is currently connected to server 204, and recognized the benefits of such an
`
`implementation.” Pet., p. 30. 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.
`
`As yet another example, the Petition asserts Zydney teaches a central server
`
`that stores voice containers for recipients currently connected to the central server
`
`and delivers the stored voice containers when the recipients later become available.
`
`Pet., pp. 28–30, 33–34. However, Dahod similarly describes storing instant
`
`
`
`14
`
`
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`IPR2017-1798
`U.S. Patent 8,724,622
`
`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 or substantially the same prior art or arguments previously
`
`were presented to the Office.
`
`35 U.S.C. § 325(d) (emphasis added). Accordingly, Petitioner’s reliance on
`
`Zydney should be rejected as cumulative. See Unified Patents, Inc. v. Berman, Case
`
`IPR2016-01571 (P.T.A.B. Dec. 14, 2016) (Paper 10); Cultec, Inc. v. Stormtech LLC,
`
`Case IPR2017-00777 (P.T.A.B. Aug. 22, 2017) (Paper 7). Significantly, Petitioner
`
`makes no attempt to explain why its cumulative reliance on Zydney does not invoke
`
`that statute. See Baker Hughes Oilfield Operations, Inc. v. Smith International, Inc.,
`
`No. IPR2016-01450 (P.T.A.B. Dec. 22, 2016), Paper 10 at 10-11 (finding the
`
`reliance on cumulative references was not entitled to consideration due to “the
`
`
`
`15
`
`
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`IPR2017-1798
`U.S. Patent 8,724,622
`
`failure of Petitioner to address the impact of § 325(d)”).
`
`2.
`
`Zydney also is Cumulative to Bernstein
`
`Relying on Zydney, Petitioner also states “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. 19),
`
`U.S. Pat. App. Pub. No 2004/0128356 (“Bernstein," EX2003), listed on the face of
`
`the ʼ622 Patent and asserted by the Primary Examiner in rejecting the claims of U.S.
`
`Pat. No. 7,535, 890 (“the ʼ890 Patent”)—from which the ʼ622 Patent is a
`
`continuation—similarly describes the terminal directly connected to the network.
`
`EX2003, ¶ 0013, Fig. 1.
`
`Petitioner further states “a POSA would have readily ascertained that status
`
`702 could have been configured to indicate whether terminal 100 is currently
`
`connected to server 204, and recognized the benefits of such an implementation”
`
`(Pet., p. 30), Bernstein similarly describes indicating whether the terminal is
`
`available or unavailable for messaging. Id. at ¶¶ 0007, 0016, 0017, 0122, 0132.
`
`Regarding Zydney allegedly teaching a central server that stores voice
`
`containers for recipients that are not currently connected to the central server and
`
`delivers the stored voice containers when the recipients later become available (Pet.,
`
`pp. 28–30, 33–34), Bernstein describes storing instant messages to a server (e.g.,
`
`for later retrieval by a user terminal becoming available) in addition to describing
`
`
`
`16
`
`
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`IPR2017-1798
`U.S. Patent 8,724,622
`
`indicating whether the user terminal is available or unavailable for messaging. Id.
`
`at ¶¶ 0050, 0100, 0129, 0130.
`
`Accordingly, based on § 325(d), Petitioner’s reliance on Zydney should be
`
`rejected as cumulative with Dahod and also with Bernstein.
`
`B.
`
`Vaananen was Cited During Prosecution of the ʼ622 Patent and
`Therefore is Demonstrably Duplicative for the Purposes Relied on
`by Petitioner.
`
`Petitioner acknowledges that Vaananen is listed on the face of the '622 Patent.
`
`Pet., p. 8. Consequently, since Vaananen was considered by the USPTO during
`
`prosecution of the application leading to the '622 Patent, Vaananen is also
`
`cumulative. Therefore, the Board should deny the Petition with respect to grounds
`
`relying on Vaananen.
`
`C. The Combination of Griffin plus Zydney Does Not Reveal Various
`Elements of the Challenged Claims
`
`1.
`
`Petitioner's Reliance on Griffin to Discloses an “Instant Voice
`Message” Fails to Establish a Prima Facie Case
`
`Petitioner repeats the same errors as in IPR2017-1797. For instance, Petitioner
`
`relies on the argument that the user interface patent to Griffin discloses an “instant
`
`voice message.” Pet., pp. 9–10. Petitioner ignores the contrary import of Griffin,
`
`which is amply illustrated by significant passages in Griffin that contradict
`
`
`
`17
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`
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`IPR2017-1798
`U.S. Patent 8,724,622
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`Petitioner’s suggestion.8 Petitioner fails to establish a prima facie case that Griffin
`
`discloses any of the “instant voice message” limitations recited in any of the
`
`challenged independent claims.
`
`Griffin is not as Petitioner asserts “a system for exchanging speech (i.e., voice)
`
`chat messages in real time between wireless mobile terminals . . . .” Pet., p. 9. Griffin
`
`is a system for “displaying and interacting with speech and text group chat threads.”
`
`EX1005, 1:62–65. The distinction is important because Griffin is concerned with the
`
`details of how to manage “a plurality of chat threads in a single chat history on a
`
`limited display.” Id. at 1:65–67. The Griffin user interface focuses on building
`
`“dynamic and static buddy-lists, as well as a technique to incorporate user friendly
`
`and small screen friendly nicknames that better enable users to identify and interact
`
`with users.” Id. at 1:67–2:6. Griffin’s goal is unrelated to exchanging speech chat
`
`messages in real time. EX2001, ¶ 45.
`
`Nonetheless, Petitioner argues that Griffin’s “disclosed method is ‘for instant
`
`messaging’” because: (1) a voice message is “transmitted in ‘real-time,’” EX1002,
`
`¶ 125; (2) “real-time speech chat messaging is consistent with how instant voice
`
`
`8 “The factual inquiry whether to combine references must be thorough and
`
`searching.” McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1351–52, 60 USPQ2d
`
`1001, 1008 (Fed. Cir. 2001) (“the central question is whether there is reason to
`
`combine [the] references,” a question of fact drawing on the Graham factors).
`
`
`
`18
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`
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`IPR2017-1798
`U.S. Patent 8,724,622
`
`messaging is described in the specification of the ʼ622 Patent,” EX1002, ¶ 126; and,
`
`(3) terminals are “presented with information regarding the availability of other
`
`terminals.” EX1002, ¶ 127. These arguments do not follow from Griffin; instead,
`
`they ignore the disclosure in Griffin or at least misrepresent it.
`
`Petitioner’s first flawed argument is that Griffin discloses an instant voice
`
`message simply because a message is “transmitted in ‘real-time.’” EX1002, ¶ 125.
`
`Transmission in real time is not communication in real time. Real-time
`
`communication requires the capability for receipt in real time. Petitioner does not
`
`account for when the message is actually received.
`
`The one and only mention of “real-time” in the entirety of Griffin is in the
`
`general Technical Field, which recites: “a novel technique of managing the display
`
`of a plurality of real-time speech and text conversations (e.g., chat threads) on
`
`limited display areas.” EX1005, 1:9–11.
`
`The passages in Griffin on which Petitioner relies demonstrate only that a
`
`message is sent, not when. EX1005, 11:48–67. Griffin does not disclose any detail
`
`about how or why any such messages might be communicated in real-time.
`
`Moreover, Griffin teaches away from real-time communication. Griffin explicitly
`
`addresses storage of communication messages, even when the recipient is otherwise
`
`online and using their mobile terminal, if the recipient does not have a specific chat
`
`history window open, as shown below.
`
`
`
`19
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`
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`IPR2017-1798
`U.S. Patent 8,724,622
`
`Petitioner also argues that because Griffin’s “real-time speech chat messaging
`
`is consistent with how instant voice messaging is described in the specification of
`
`the ʼ622 Patent,” then it somehow naturally follows that Griffin discloses an instant
`
`voice message. EX1002, ¶ 126 (emphasis added). Petitioner is mistaken.
`
`Every passage of Griffin that Petitioner relies on is directed explicitly toward
`
`text messaging. Id. Petitioner does not cite to any part of Griffin that describes instant
`
`voice messaging. EX2001, ¶ 26–31. Thus, even if it were true that Griffin is
`
`“consistent with” these passages in the ʼ622 Patent, Petitioner has not established
`
`how this somehow results in Griffin disclosing an “instant voice message,” which it
`
`does not.
`
`Throughout the Petition, Petitioner incorrectly relies on a connotation of
`
`“push-to-talk” that is applicable today (i.e., 2017), but was not applicable in 2002.
`
`Pet., pp. 10, 16, 35, 61. When the application for Griffin was file
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