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`Paper No.
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`Filed: February 20, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
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`v.
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`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
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`____________________
`
`Case IPR2017-01799
`Patent 8,199,747 B2
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`Petitioner’s Request for Rehearing
`Under 37 C.F.R. § 42.71(d)(1)
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`IPR2017-01799
`Patent 8,199,747 B2
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`TABLE OF CONTENTS
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`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED .......................... 1
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`II.
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`LEGAL STANDARD ..................................................................................... 2
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED ........................ 2
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`A.
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`B.
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`C.
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`The Board Appears to Have Misapprehended Samsung’s
`Position and Improperly Focused on Delivery Rather Than
`Generation of the Message .................................................................... 4
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`The Board Appears to Have Overlooked Samsung’s Argument
`That Zydney Discloses Controlling a Method of Generating in
`the Same Way as the ’747 Patent .......................................................... 6
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`The Board’s Reasoning Is Similar to Its Reasoning in IPR2017-
`01257, But IPR2017-01257 Involved a Different Ground of
`Rejection and Positions ......................................................................... 7
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`IV. CONCLUSION ................................................................................................ 9
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`i
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`IPR2017-01799
`Patent 8,199,747 B2
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`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
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`Petitioner Samsung Electronics America, Inc. (“Samsung”) requests
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`rehearing of the Patent Trial and Appeal Board’s Decision entered February 6,
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`2018 (Paper 9, “Decision”), denying institution of inter partes review for claim 3
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`of U.S. Patent No. 8,199,747 (“the ’747 patent”), which recites “controlling a
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`method of generating [an] instant voice message based upon a connectivity status
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`[of] each recipient.” As the Board appears to have recognized in IPR2017-
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`01800—in which the Board properly instituted review of claim 3 of U.S. Patent
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`No. 8,243,723, which contains a similar limitation to claim 3 of the ’747 patent—
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`Samsung’s showing is sufficient to demonstrate a reasonable likelihood that the
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`claim, including the above limitation, is obvious over Griffin and Zydney. See
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`Samsung Elecs. Am., Inc. v. Uniloc Luxembourg S.A., IPR2017-01800, Paper No. 8
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`at 14-15, 20-21, 24 (P.T.A.B. Feb. 6, 2018).
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`The Board in this proceeding, however, appears to have overlooked and
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`misapprehended Samsung’s position based on Uniloc’s improper characterization
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`of Zydney’s modes of generation as “delivery options.” As discussed below,
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`Uniloc’s characterization of Zydney is incorrect, and the conflicting expert
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`testimony on this issue should have been viewed in the light most favorable to
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`Samsung. Finally, Uniloc’s improper characterization seems to have also caused
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`the Board to overlook Samsung’s showing that Zydney’s teachings are analogous
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`1
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`IPR2017-01799
`Patent 8,199,747 B2
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`to the disclosures of the ’747 patent. For these reasons, as discussed in detail
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`below, Samsung respectfully requests rehearing of the Board’s decision not to
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`institute inter partes review of claim 3.
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`II. LEGAL STANDARD
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`“A party dissatisfied with a decision may file a single request for rehearing.”
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`37 C.F.R. § 42.71(d). “The request must specifically identify all matters the party
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`believes the Board misapprehended or overlooked, and the place where each
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`matter was previously addressed in a motion, an opposition, or a reply.” Id.
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`Institution decisions are reviewed on rehearing for an abuse of discretion.
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`See 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s
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`based on an erroneous conclusion of law or clearly erroneous factual findings,
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`or . . . a clear error of judgment.” Apple Inc. v. DSS Tech. Mgmt., Inc., IPR2015-
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`00369, Paper No. 14 at 3 (P.T.A.B. Aug. 12, 2015) (citing PPG Indus. Inc. v.
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`Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988)).
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`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
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`Samsung respectfully requests rehearing of the Board’s decision to deny
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`institution of claim 3. (Dec. at 30-33, 36.) Based on Uniloc’s narrow framing of
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`Samsung’s position, the Board focused on whether Zydney discloses controlling
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`the method of generating within the “pack and send” mode. (Id. at 33 (“this
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`determination does not change how the instant voice message is generated in the
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`2
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`IPR2017-01799
`Patent 8,199,747 B2
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`pack and send mode”).) This narrow focus, however, misunderstands Samsung’s
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`argument set forth in the Petition that either one of the “pack and send” or
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`“intercom” modes of message generation can be selected automatically in Zydney
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`based on the recipient’s connectivity status, and thus the mode of generation is
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`“control[ed]” through this selection. (Pet. at 59-60; Ex. 1002, ¶ 180.) Samsung did
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`not argue that Zydney discloses a more granular level of control within each of the
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`pack and send and intercom modes, as this is not required by the claim. Indeed,
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`such a requirement would be inconsistent with the ’747 patent specification, which,
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`similar to Zydney, describes choosing between a “record mode” and an “intercom
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`mode” based on recipient availability. (Pet. at 61; Ex. 1002, ¶ 181.) It appears the
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`Board’s reasoning is similar to the reasoning in its decision denying institution in a
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`prior IPR involving the ’747 patent, but that decision is inapplicable here given the
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`differences between the grounds and positions in this and the prior IPR.
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`Accordingly, the Board should reconsider its decision and institute inter partes
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`review of claim 3 of the ’747 patent, as it did for a claim containing a nearly
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`identical limitation in another patent. See Samsung, IPR2017-01800, Paper No. 8
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`at 14-15, 20-21, 24.
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`3
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`IPR2017-01799
`Patent 8,199,747 B2
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`A. The Board Appears to Have Misapprehended Samsung’s Position
`and Improperly Focused on Delivery Rather Than Generation of
`the Message
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`As Samsung explained in its petition—supported by expert testimony—
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`Zydney discloses the “controlling” limitation by describing the selection between
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`“two different modes of generating an instant voice message,” “pack and send” and
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`“intercom.” (Pet. at 59-60; see also Ex. 1002, ¶¶ 177-79.) As described in Zydney,
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`in the “pack and send” mode, the message is generated by recording the “entire
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`message.” (Pet. at 59 (citing Ex. 1006, 11:1-3, 16:1-14); Ex. 1002, ¶ 177.) In
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`contrast, in the “intercom” mode, the message is generated by recording only “a
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`small portion of the digitized voice.” (Pet. at 59 (quoting Ex. 1006, 16:4-7); Ex.
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`1002, ¶ 178.) Samsung’s expert testified that these are two “modes of
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`generating[.]” (Ex. 1002, ¶¶ 177-78.) As discussed above, in IPR2017-01800, the
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`Board appears to have recognized that this showing was sufficient to establish a
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`reasonable likelihood that a claim with a nearly identical limitation is unpatentable
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`over Griffin and Zydney. See Samsung, IPR2017-01800, Paper No. 8 at 14-15, 20-
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`21, 24.
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`In this proceeding, Uniloc attempted to avoid this two-mode teaching by
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`focusing on only one of the modes in its preliminary response, stating “[i]t is
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`undisputed that the ‘pack and send’ mode in Zydney has but ‘one’ unvarying
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`process (as the name implies).” (Prelim. Resp. at 44.) Samsung, however, did not
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`4
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`IPR2017-01799
`Patent 8,199,747 B2
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`argue that the pack and send mode has multiple “process[es],” but instead that the
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`intercom and pack and send modes themselves are the multiple “method[s] of
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`generating”—as claimed. (Pet. at 59-60; Ex. 1002, ¶¶ 177-79.)
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`Despite its acknowledgement that the pack and send mode is a “method of
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`generating a . . . message,” Uniloc and its expert further confused Zydney’s
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`teaching by characterizing the “other mode(s)”1 as “determining how a message
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`will be delivered” and “not controlling how a message is generated.” (Prelim.
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`Resp. at 44-45 (citing Ex. 1006, 15:17-19; Ex. 2001, ¶¶ 64-66).) This, however, is
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`in direct conflict with the testimony of Samsung’s expert, Dr. Haas, who
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`explained—based on Zydney’s description—that the pack and send and intercom
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`modes affect how the message is generated. (Ex. 1002, ¶¶ 177-78.) He also
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`explained that the two different modes of message generation involve different
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`methods of delivery. (Id.) At a minimum, this potentially conflicting expert
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`testimony created a genuine issue of material fact that should have been viewed in
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`the light most favorable to Samsung. See 37 C.F.R. § 42.108(c).
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`1 Notably, Uniloc’s preliminary response never used the term “intercom mode,”
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`(see Prelim. Resp. 44-45), presumably to avoid highlighting the fact that both
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`Zydney and the ’747 patent similarly describe an “intercom mode.”
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`5
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`IPR2017-01799
`Patent 8,199,747 B2
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`The Board, however, appears to have been led astray by Uniloc’s erroneous
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`characterization in this proceeding of Zydney’s pack and send and intercom modes
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`as “delivery options.” (Dec. at 33 (interpreting the choice between intercom and
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`pack and send modes as the “ability to select a different mode of delivery.”).)
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`Contrary to Uniloc’s characterization, (Prelim. Resp. 45 (citing Ex. 1006, 15:17-
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`19)), the cited portion of Zydney is describing the choice between two options for
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`delivering a message generated using the pack and send mode to an offline
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`recipient—not the choice between the pack and send and intercom modes of
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`generating a message that Samsung relies on as disclosing this limitation. As
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`discussed in Samsung’s petition, when a recipient is offline, Zydney explains that
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`the message must be generated using the pack and send mode. (Pet. at 59-60; Ex.
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`1002, ¶¶ 179-80.) The portion of Zydney cited by Uniloc then explains that this
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`message is either “delivered the next time the recipient logs in” or “delivered to the
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`recipient’s e-Mail.” (Ex. 1006, 15:15-19.) Thus, Uniloc’s characterization was
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`inaccurate and it caused the Board to misapprehend both Samsung’s position and
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`the actual teachings of Zydney.
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`B.
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`The Board Appears to Have Overlooked Samsung’s Argument
`That Zydney Discloses Controlling a Method of Generating in the
`Same Way as the ’747 Patent
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`Samsung’s demonstration of how “controlling a method of generating” is
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`performed in Zydney in the same way as in the ’747 patent was referenced, but
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`6
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`IPR2017-01799
`Patent 8,199,747 B2
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`does not appear to have been fully considered by the Board. As Samsung and its
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`expert explained, Zydney’s pack and send and intercom modes are analogous to the
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`“record mode” and “intercom mode” in the ’747 patent, which are chosen based on
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`whether the recipient is online of offline. (Pet. at 61 (citing Ex. 1001, 7:53-55, 8:3-
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`7, 11:26-55, 11:55-59); Ex. 1002, ¶ 181.) Uniloc did not even mention this
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`argument. (See Prelim. Resp. at 44-45.) And while the Board nominally
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`acknowledges this argument in its summary of Samsung’s position, (Dec. at 31),
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`the Board’s analysis of the evidence and arguments does not address this
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`disclosure of the ’747 patent (Dec. at 32-33). As such, the Board appears to have
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`overlooked Samsung’s argument and evidence. This oversight is significant
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`because, given the starkly similar teachings of Zydney and the ’747 patent, a
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`finding that Zydney does not disclose the “controlling” limitation is tantamount to
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`finding that this limitation does not cover the only disclosure in the ’747 patent of
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`controlling a method of generating a message.
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`C. The Board’s Reasoning Is Similar to Its Reasoning in IPR2017-
`01257, But IPR2017-01257 Involved a Different Ground of
`Rejection and Positions
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`In its Decision, the Board found the choice between the pack and send and
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`intercom modes “does not change how the instant voice message is generated in
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`the pack and send mode.” (Dec. at 33 (emphasis altered).) The Board’s reasoning
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`here is similar to its reasoning in its decision denying institution in a prior IPR filed
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`7
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`IPR2017-01799
`Patent 8,199,747 B2
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`by Facebook challenging the ’747 patent. See Facebook, Inc. v. Uniloc USA, Inc.,
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`IPR2017-01257, Paper 8 at 20-23 (P.T.A.B. Dec. 4, 2017). The differences
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`between Samsung’s and Facebook’s positions, however, are significant—they raise
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`different grounds and positions. Thus, the Board’s reasoning in IPR2017-01257 is
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`inapplicable here.
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`While Samsung and Facebook both rely on Zydney, as noted by the Board in
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`IPR2017-01257, Facebook’s petition “explicitly relies exclusively on Zydney’s
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`‘pack and send’ mode of operation as the ‘method of generating the instant voice
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`message.’” Facebook, IPR2017-01257, Paper 8 at 22. That is not the case here.
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`Samsung’s petition and Dr. Haas’ declaration rely on both of Zydney’s pack and
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`send and intercom modes as the claimed “method[s] of generating.” (Pet. at 59;
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`Ex. 1002, ¶ 177-78.) Furthermore, because Facebook relied primarily on Zydney’s
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`pack and send mode for claim 3, Facebook, IPR2017-01257, Paper 8 at 23, the
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`Board found that Facebook “d[id] not explain how the remaining steps of claim 3
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`would be taught or suggested by Zydney when the intercom mode is used,” id. at
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`22-23. However, here, Samsung’s petition relies on Griffin for the remaining
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`limitations of claim 3, (Pet. at 57, 62-63), and only relies on Zydney for its
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`disclosure of controlling the intercom and pack and send methods of generating the
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`instant voice message based on the recipient’s connectivity status (id. at 58-62).
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`8
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`IPR2017-01799
`Patent 8,199,747 B2
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`Thus, due to the differences between Samsung’s and Facebook’s grounds
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`and positions, the Board’s reasoning in IPR2017-01257 is inapplicable here.
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`IV. CONCLUSION
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`Samsung respectfully requests that the Board reconsider its decision and
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`institute inter partes review of claim 3 of the ’747 patent.
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`Dated: February 20, 2018
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`Respectfully submitted,
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`By: /Naveen Modi/
`Naveen Modi (Reg. No. 46,224)
`Counsel for Petitioner
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`9
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`IPR2017-01799
`Patent 8,199,747 B2
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served on the
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`counsel for Patent Owner a true and correct copy of the foregoing Petitioner’s
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`Request for Rehearing Under 37 C.F.R. § 42.71(d)(1) by electronic means on the
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`date below at the following address of record:
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`Brett Mangrum (brett@etheridgelaw.com)
`Sean D. Burdick (sean.burdick@unilocusa.com)
`Ryan Loveless (ryan@etheridgelaw.com)
`James Etheridge (jim@etheridgelaw.com)
`Jeffrey Huang (jeff@etheridgelaw.com)
`Etheridge Law Group
`2600 E. Southlake Blvd., Ste. 120-324
`Southlake, TX 76092
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`Dated: February 20, 2018
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`
`
`
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`
` /Naveen Modi/
`Naveen Modi
`Reg. No. 46,224
`Counsel for Petitioner
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`Respectfully submitted,
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