UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A.
`Patent Owner
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`IPR2017-1799
`PATENT 8,199,747
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`PATENT OWNER RESPONSE TO
`PETITIONER’S REQUEST FOR REHEARING
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner
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`v.
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`UNILOC LUXEMBOURG, S.A.
`Patent Owner
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`IPR2017-1799
`PATENT 8,199,747
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`PATENT OWNER RESPONSE TO
`PETITIONER’S REQUEST FOR REHEARING
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`IPR2017-1799
`U.S. Patent 8,199,747
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`To obtain a rehearing, Petitioner bears the burden of showing that the Board
`abused its discretion in denying institution. 37 C.F.R. § 42.71(c)-(d). “An abuse of
`discretion occurs where the decision is based on an erroneous interpretation of the
`law, on factual findings that are not supported by substantial evidence, or represents
`an unreasonable judgment in weighing relevant factors.” Star Fruits SNC v. United
`States, 393 F.3d 1277, 1281 (Fed. Cir. 2005). Petitioner has not made that showing,
`the Board did not abuse its discretion, and the Request should be denied.
`Petitioner first faults the Board for applying consistent reasoning across
`related matters: “It appears the Board’s reasoning is similar to the reasoning in its
`decision denying institution in a prior IPR involving the ’747 patent.” Paper 11
`(“Req.”) at 3. Applying consistent reasoning in related matters clearly is not an abuse
`of discretion.
`There likewise is no merit to Petitioner’s argument that it was an abuse of
`discretion to apply consistent reasoning here, ostensibly, because the instant Petition
`had presented different grounds than a previously denied petition. Petitioner is
`conspicuously ambiguous as to which “prior IPR” decision had applied similar
`reasoning in denying institution. To the extent Petitioner intended to refer to related
`matter IPR2017-1257, the Board in that matter denied institution of a similar (if not
`identical) challenge against the same claim 3 of the same patent based exclusively
`on the same Zydney reference. IPR2017-1257, Paper 8 at 20-23.
`Here, the Board correctly recognized that Petitioner relies on Zydney (and not
`Griffin) for certain limitations of claim 3, including “controlling a method of
`generating …”, which is the focus of Petitioner’s Request for Rehearing. Paper 9
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`2
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`IPR2017-1799
`U.S. Patent 8,199,747
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`(Institution Decision) at 30. Given that both related petitions relied on the same
`Zydney reference for the same limitation of the same claim of the same patent, it
`clearly was not an abuse of discretion for the Board to apply what Petitioner
`characterizes as “similar … reasoning” in reaching a similar conclusion here. See
`Req. at 3.
`Next, Petitioner falsely suggests that the Board’s decision here to deny
`institution on claim 3 is somehow inconsistent with related matter IPR2017-1800,
`ostensibly, because the Board there instituted trial on a “claim containing a nearly
`identical limitation in another patent.” Id. To say Petitioner’s argument is misleading
`is an understatement.1 Petitioner neglects to mention that the Board in
`IPR2017-1800 did not weigh the sufficiency of evidence in that petition against the
`specific rebuttal presented here by Patent Owner in addressing a different claim of a
`different patent. While Petitioner does not identify which claim challenged in
`IPR2017-1800 allegedly has “a nearly identical limitation,” to the extent Petitioner
`had intended to refer to dependent claim 3,2 the only discussion of that claim in the
`Board’s prior Institution Decision in IPR2017-1800 is the following statement:
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`Patent Owner does not argue [dependent] claim 3 separately from
`claim 1. For the same reasons as stated regarding claim 1 and based
`on our review of Petitioner’s arguments and evidence directed to the
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`1 Notably, under 37 CFR § 412.12(2), the Board may impose a sanction against a
`party for “advancing a misleading or frivolous argument or request for relief.”
`2 Claim 3 of U.S. Patent No. 8,243,723 (challenged in IPR2017-01800) recites “[t]he
`method for instant voice messaging over a packet-switch network according to claim
`1, further comprising the step of: controlling a method of generating the instant voice
`message based upon the connectivity status of said one or more recipient.”
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`3
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`IPR2017-1799
`U.S. Patent 8,199,747
`additional limitations of claim 3, we determine that Petitioner has
`demonstrated a reasonable likelihood of prevailing in its contention
`that claims 3 is unpatentable for obviousness over Griffin and
`Zydney.
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`IPR2017-1800, Paper 8 at 20 (emphasis added). Given that the Board in
`IPR2017-1800 did not consider any Patent Owner rebuttal evidence for anything
`resembling the claim language in question when the Board rendered its preliminary
`decision, the Board here (in IPR2017-1799) did not reach an inconsistent decision,
`and certainly did not abuse its discretion, by considering and finding persuasive
`Patent Owner’s rebuttal addressing claim language specific to claim 3 of the ’747
`patent.
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`Finally, Petitioner faults the Board for allegedly misunderstanding the
`arguments presented in the Petition concerning the limitation “controlling a method
`of generating …”, as recited in claim 3. However, even a cursory review of the
`Board’s Decision confirms that the Board considered, comprehended, and rejected
`the very argument petitioner emphasizes in its Request for Rehearing. More
`specifically, Petitioner argues that the point allegedly misapprehended by the Board
`was Petitioner’s reliance on Zydney’s alleged teaching of choosing between two
`alternative modes of generating a message—namely, a “pack and send” option and
`an “intercom” option. Req. at 6. This argument is restated in the Board’s detailed
`summary of the Petition, which includes the following relevant observations (among
`others):
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`Petitioner argues, more particularly, that Zydney discloses “two
`different modes of generating an instant voice message,” namely,
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`4
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`IPR2017-1799
`U.S. Patent 8,199,747
`Zydney’s “pack and send” and “intercom” modes. Pet. 59; see supra
`Section III.B.3. Petitioner contends that Zydney explains that the
`mode of messaging used is determined based on whether the
`intended recipient of the message is “online” or “offline”[.]
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`Paper 9 at 30-31. After confirming an understanding of Petitioner’s argument, the
`Board then summarized Patent Owner’s rebuttal and held (among other findings)
`that “[a]s Patent Owner points out (Prelim. Resp. 44–45), the Petition does not
`persuasively demonstrate that either the pack and send mode or the intercom mode
`of operation is controlled in any manner by a connectivity status of a recipient.” Id.
`at 32-33. Petitioner may be disappointed by this outcome, but a request for rehearing
`is not an opportunity merely to disagree with the panel’s assessment of the
`arguments or weighing of the evidence.
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`For at least the foregoing reasons, the Board did not abuse its discretion; and
`its determinations regarding claim 3 should not be disturbed. Accordingly, the
`Request for Rehearing should be denied.
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`Date: February 22, 2018
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`Respectfully submitted,
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`By: /s/ Brett A. Mangrum
`Brett A. Mangrum
`Attorney for Patent Owner
`Reg. No. 64,783
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`5
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`IPR2017-1799
`U.S. Patent 8,199,747
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies that an electronic
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`copy of the foregoing was served via the Patent Review Processing System (PRPS)
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`and via email to Petitioner’s counsel of record at the following address:
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`PETITIONER LEAD COUNSEL:
`Naveen Modi (Reg. No. 46,224)
`Paul Hastings LLP,
`875 15th St. N.W.
`Washington, DC, 20005
`Telephone: 202.551.1990
`Fax: 202.551.1705
`Email: PH-Samsung-Uniloc-IPR@paulhastings.com
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`Date: February 22, 2018
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`Respectfully submitted,
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`By: /s/ Brett A. Mangrum
`Brett A. Mangrum
`Attorney for Patent Owner
`Reg. No. 64,783
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