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`Case IPR2017-01799
`Patent 8,199,747 B2
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner
`v.
`UNILOC 2017 LLC,
`Patent Owner
`
`Case IPR2017-01799
`Patent 8,199,747 B2
`
`PATENT OWNER’S REQUEST FOR
`REHEARING UNDER 37 C.F.R. § 42.71(D)
`
`

`

`Case IPR2017-01799
`Patent 8,199,747 B2
`
`In response to the Final Written Decision entered January 31, 2019, (Paper
`40, hereinafter “Decision”) and pursuant to 37 CFR § 42.71(d), Uniloc 2017 LLC
`(“Patent Owner”) hereby respectfully request a rehearing and reconsideration by the
`Patent Trial and Appeal Board (“Board”) of its Final Decision finding unpatentable
`Claims 1−3, 12 and 13 of the ’747 patent. Patent Owner’s request for rehearing is
`based upon the following considerations.
`APPLICABLE STANDARDS
`I.
`“A party dissatisfied with a decision may file a request for rehearing, without
`prior authorization from the Board.” 37 C.F.R. §42.71(d). “The request must
`specifically identify all matters the party believes the Board misapprehended or
`overlooked, and the place where each matter was previously addressed in a motion,
`an opposition, or a reply.” Id. The Board reviews a decision for an abuse of
`discretion. 37 C.F.R. §42.71(c).
`Claim construction is a question of law. Markman v. Westview Instruments,
`52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996). In an inter
`partes review, claim terms in an unexpired patent are interpreted according to their
`broadest reasonable construction in light of the specification of the patent in which
`they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct.
`2131, 2142 -46 (2016).
`
`
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`Case IPR2017-01799
`Patent 8,199,747 B2
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`II. ARGUMENT
`A. The Board’s analysis of the “attaching” limitations is legally and factually
`flawed and inconsistent with its repeated prior rulings.
`Claim 1 of the ’747 patent recites “generating an instant voice message,
`wherein generating includes recording the instant voice message in an audio file and
`attaching one or more files to the audio file.” Claim 13 depends from claim 1 and
`thus requires the same. It is undisputed and indisputable that this claim language
`expressly differentiates the “audio file” from the “instant voice message” by reciting
`both elements in the same claim.
`The Board acknowledges in its Final Written Decision that claim 1 expressly
`requires attaching one or more files to the audio file. Final Written Decision (Paper
`40) at 12−13. Prior to rendering its Final Written Decision, the Board had also
`repeatedly and consistently held that attaching a file to a message is not the same as
`attaching a file to an audio file included in that message. See, e.g., IRP2017-01257,
`Paper 8 at 18–19; IPR2017-02085, Paper 11 at 18–21; IPR2017-01799, Paper 9 at
`22; IPR2017-01800, Paper 8 at 22–23. This consistent and repeated precedent
`correctly recognizes the claim language means what it says. Nevertheless, the Final
`Written Decision here adopts an invalidity theory that alleges this claim language is
`satisfied, instead, by attaching one or more files to a container of a distinct and
`separately-generated audio file, as opposed to an attachment to the audio file itself.
`The Final Written Decision misapprehends the dispute injected by the Petition
`as being directed to how “attachment” is performed. Final Written Decision (Paper
`40) at 13−15. Neither the Petition nor the Response filed by Patent Owner identifies
`
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`Case IPR2017-01799
`Patent 8,199,747 B2
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`“attachment” as a term that requires construction and neither document expressly
`sets forth a proposed construction for that term. The dispute injected by the Petition
`was not how “attachment” is performed but rather precisely which claim elements
`must be attached to each other (regardless of how such an attachment is effected).
`Patent Owner’s Response simply relies upon the Board’s prior repeated and
`consistent findings (of which the Board could have taken judicial notice) that
`attaching a file to a message is not the same as attaching a file to an audio file
`included in that message. Response (Paper 21) at 22–26.
`As the Board correctly observed in related matter IPR2017-01800, Petitioner
`has conceded that Griffin “does not describe attaching one or more files to the audio
`file in the speech chat message.” IPR2017-01800, Paper 34 at 28 (citation omitted).
`This admission alone should have ended the inquiry, particularly given that the
`Board has repeatedly considered and rejected the theory that Zydney discloses this
`claim language by attaching one or more files to a voice container that allegedly only
`contains a distinct a separately-generated audio file,
`The Final Written Decision suggests its reversal of the Board’s precedent is
`based on a construction of “one or more file files attached to an audio file” to mean
`“indicating that another file (or files) is associated with the audio file.” Final Written
`Decision (Paper 34) at 18.1 The Petition did not advance this construction, much less
`explain and defend it with some rational underpinning.
`
`
`1 The Board bases its new construction, at least in part, on its own characterization
`of certain statements from Dr. Easttom’s cross-examination in distinct matters
`involving the distinct ’622 patent. Final Written Decision (Paper 40) at 14 and 51
`(both citing Ex. 1040). Not only is the cited testimony far outside the scope of direct,
`
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`Case IPR2017-01799
`Patent 8,199,747 B2
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`Patent Owner was not provided due process ability to respond to the Board’s
`construction and point out why it is incorrect. See In re Magnum Oil Tools Int'l, Ltd.,
`829 F.3d 1364, 1381 (Fed. Cir. 2016) (“. . . Board must base its decision on
`arguments that were advanced by a party, and to which the opposing party was given
`a chance to respond.”). The Board appears to have overlooked, for example, that the
`inventor’s use of the words “associating” and “attached” in the same claim (see, e.g.,
`claim 2 of the ’723 patent) unambiguously confirms that the inventor recognized
`these terms have distinct and separate meanings. See, e.g., Ethicon Endo-Surgery,
`Inc. v. U.S. Surgical Corp., 93 F.3d 1572, 1579 (Fed. Cir. 1996) (reversing lower
`court’s ruling that a “pusher assembly” and a “pusher bar” have the same meaning).
`Even if Patent Owner had been provided due process ability to respond to this
`new claim construction and the record nevertheless supported interpreting
`“attached” to mean “associated,” which is not the case here, the Petition’s reliance
`on attaching files to Zydney’s voice container that allegedly only contains a distinct
`and separately-generated audio file is still distinguishable from “the instant voice
`
`it is offered entirely outside the context of the ’747 patent, let alone the specific claim
`language recited in claim 1 of the ’747 patent. Moreover, any cross-examination
`testimony Mr. Easttom offered concerning how attaching might be affected in the
`abstract and outside the context of the claim language does not somehow warrant
`rewriting unambiguous and specific requirements of “generating an instant voice
`message, wherein generating includes recording the instant voice message in an
`audio file and attaching one or more files to the audio file,” as recited in claim 1.
`When addressing the specific context of the claim language, Dr. Easttom testified
`that “[a]ttaching a file to [Griffin’s] message 400 does not disclose attaching a file
`to an audio file in which the claimed “instant voice message” is recorded, and also
`does not disclose attaching a file to any purported file or contents within the message
`400.” Ex. 2001 ¶ 44.
`
`
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`Case IPR2017-01799
`Patent 8,199,747 B2
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`message includes one or more files [associated] to an audio file.” Using letters here
`to represent specific elements expressly set forth in the claim language, the Board
`appears apply its own construction such that the explicit requirement of attaching A
`to B is satisfied by, instead, allegedly associating A with C, even if it is undisputed
`that the elements allegedly mapped to the B and C claim terms are distinct and
`separately generated and one merely contains the other.
`The Board should reconsider its new and inconsistent claim interpretation
`because it impermissibly renders “attached to the audio file” meaningless. See, e.g.,
`Ethicon, 93 F.3d at 1578 (finding “connected to” would not be read so broadly as to
`include two distant elements which were “connected” by intervening elements, as
`such interpretation would effectively render “connected to” limitation meaningless).
`
`the proposed
`that
`B. The Board overlooked or misapprehended
`modification to Griffin relied upon for the “receiving” limitations of
`claim 2 would eliminate a key feature in Griffin.
`The Board overlooked or misapprehended that the proposed modification to
`Griffin relied upon for the “receiving” limitations of claim 2 (and claim 12
`depending therefrom) would eliminate a key feature in Griffin. At a minimum, the
`proposed combination changes the basic principles under which Griffin was
`designed to operate and fails to support a conclusion of obviousness. See Plas–Pak
`Indus., Inc. v. Sulzer Mixpac AG, 600 Fed. Appx. 755, 759 (Fed. Cir. 2015).
`The Board stated in its original Institution Decision that “Patent Owner
`appears to be correct that Griffin’s buddy list update message 600 ‘includes a list of
`names of buddies (i.e., people)—specifically, full names 503, nicknames 504, and
`
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`Case IPR2017-01799
`Patent 8,199,747 B2
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`short names 505 for each buddy whose status is being updated.’” Paper 9 at 26 n.6
`(citing Prelim. Resp. 38 and Ex. 2001 ¶ 53). In its Final Written Decision, the Board
`agreed with Patent Owner that “nodes” refers to a device and not a person. Paper 40
`at 9.
`
`It is undisputed that under the scheme set forth in Griffin the presence
`manager 302 sets a human participant’s presence status to be unavailable even while
`the device she is using is presently connected, so long as the chat history display is
`not visible to the user. In defining its presence status, Griffin expressly differentiates
`a human recipient from her device by using the possessive form of “recipient” when
`referring to the presence status 702 of a human participant and referring, instead, to
`the possessive form of “terminal” when referring to address 703. Griffin, 5:11–15;
`see also, e.g., id. at 2:26; 6:31; 7:39−49; 8:22; 8:50−51. The Petition concedes that
`Griffin sets its presence status based on whether the chat history display is visible to
`the receiving user. Pet. 12. Petitioner’s declarant, Dr. Haas, likewise conceded that
`Griffin’s presence status does not indicate whether the terminal 100 is itself
`connected. See, e.g., Haas Decl. ¶ 163. Indeed, Dr. Haas’ testimony confirms that
`there is a meaningful distinction between the connectivity status of a device and,
`instead, a person setting her own availability status.
`At a minimum, the Board appears to have misapprehended or overlooked the
`fact that the proposed modification to Griffin (allegedly based on teachings of
`Zydney) would eliminate a key user-focused feature of Griffin—i.e., allowing a user
`to set her presence status to unavailable even when her user device is presently
`connected. See Plas–Pak Indus., 600 Fed. Appx. at 759 (combinations that change
`
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`Case IPR2017-01799
`Patent 8,199,747 B2
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`the basic principles under which the prior art was designed to operate may fail to
`support a conclusion of obviousness).
`
`C. Nothing advanced during trial disturbs the Board’s original finding that
`the Petition fails to establish even prima facie obviousness for the
`“controlling” limitations of claim 3.
`In addressing claim 3, the Board correctly observed in its original Institution
`Decision that “Petitioner concedes that Griffin “does not explicitly disclose
`controlling the method of generating a speech chat message based upon a
`connectivity status of each recipient.’” Paper 9 at 30; see also IPR2017-01800, Paper
`8 at 14−15 (observing the same concession by Petitioner in addressing the same
`claim language recited in claim 3 of the ’723 patent).
`The Petition relies on a combination with Zydney as allegedly curing this
`admitted deficiency of Griffin, arguing through Dr. Haas that “Zydney discloses
`controlling the method of generating an instant voice message based on the
`connectivity status of the recipient, because the connectivity status of the recipient
`determines whether the pack-and-send mode is mandatory or optional.” Final
`Written Decision (Paper 40) at 53 (citing Haas Decl. ¶¶ 177–181). This is precisely
`the same argument concerning Zydney that the Board has considered and flatly
`rejected in multiple related proceedings. See, e.g., IPR2017-01257, Paper 8;
`IPR2017-02085, Paper 11; IPR2017-01799, Paper 9. Indeed, it is also the same
`argument the Board considered and rejected in denying institution in its original
`Institution Decision. See Paper 9. The Final Written Decision here does not cite to
`any new argument or evidence advanced during trial that warrants reversal of this
`
`
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`Case IPR2017-01799
`Patent 8,199,747 B2
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`initial finding, much less under the high burden applicable at trial.
`Further scrutiny of the Board’s prior reasoning confirms it should be applied
`again here. In denying institution in IPR2017-02085, for example, the Board
`considered and rejected (as unsupported by the teachings of Zydney) nearly identical
`arguments presented by Petitioner’s expert there, Dr. Min. There, the Board
`characterized the relevant portion of Dr. Min’s testimony as follows:
`
`We acknowledge Dr. Min’s testimony relied upon by Petitioner,
`including that “Zydney . . . discloses that the instant voice
`message is generated in different manners in [the pack and send
`and intercom] modes of operation,” in support of which he
`testifies that “in the ‘real time “intercom” mode’ Zydney
`discloses that ‘[a] small portion of the digitized voice is stored to
`account for the requirements of the Internet protocols for
`retransmission and
`then
`transmitted before
`the entire
`conversation has been completed,’” and that “[i]n at least some
`embodiments, in the pack and send mode, the entire instant voice
`message is recorded prior to transmission.” Ex. 1003 ¶ 73
`(quoting Ex. 1004, 16:4–7; citing Ex. 1004, 11:1–13, 15:8–
`16:17). Nonetheless, neither Petitioner nor Dr. Min explains
`sufficiently for purposes of demonstrating anticipation how the
`cited portions of Zydney disclose that the method of generating
`the voice container differs depending on the selection of the
`mode. We note in this regard that the quoted portion of Zydney
`states that “a small portion of the digitized voice . . . is
`transmitted before the entire conversation has been completed”
`when intercom mode is invoked, which does not necessarily
`mean any portion of the digitized voice is transmitted before a
`given message within that conversation has been completed. Ex.
`1004, 16:4–7 (emphasis added). By the same token, to the extent
`an “entire instant voice message” might be recorded prior to
`transmission in the pack and send mode, that would not preclude
`transmitting portions of a message “before
`the entire
`conversation has been completed.” Indeed, Figure 7 of Zydney
`suggests that messages may be partitioned into smaller
`containers for transmission irrespective of the selected mode. See
`
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`Case IPR2017-01799
`Patent 8,199,747 B2
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`Ex. 1004, Fig. 7 (“1.1.6. Partitioning long voices into small
`containers to allow for faster delivery of containers between
`originators and recipients”). Regardless, even if we were to read
`Zydney as disclosing that voice containers would contain smaller
`chunks of voice data when the intercom mode is invoked than
`when pack and send mode is invoked (a contention the Petition
`does not explicitly state), that would not necessarily mean that
`the method of generating the voice container is any different in
`the intercom mode than in the pack and send mode, such that we
`could conclude that Petitioner has proffered evidence of
`anticipation by Zydney performing the required “controlling a
`method for generating.”
`IPR2017-02085, Paper 11 at 27–28 (emphasis original).
`Here, nothing in the Petition or in Dr. Haas’ testimony even addresses, much
`less refutes, the Board’s prior observations in related matter IPR2017-02085
`concerning the deficiencies of Zydney (as set forth in the block quotation above).
`For example, at least the following Board findings in related-matter IPR2017-02085
`remain unrebutted by Petitioner and apply equally here: (1) Zydney’s statement that
`“a small portion of the digitized voice . . . is transmitted before the entire
`conversation has been completed” when intercom mode is invoked does not
`necessarily mean any portion of the digitized voice is transmitted before a given
`message within that conversation has been completed; (2) Figure 7 of Zydney
`suggests that messages may be partitioned into smaller containers for transmission
`irrespective of the selected mode; (3) to the extent an “entire instant voice message”
`might be recorded prior to transmission in the pack and send mode, that would not
`preclude transmitting portions of a message “before the entire conversation has been
`completed; and (4) even if the Board were to read Zydney as disclosing that voice
`containers would contain smaller chunks of voice data when the intercom mode is
`
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`

`Case IPR2017-01799
`Patent 8,199,747 B2
`
`invoked than when pack and send mode is invoked (a contention neither the Petition
`nor Dr. Haas explicitly states), that would not necessarily mean that the method of
`generating the voice container is any different in the intercom mode than in the pack
`and send mode. Id.
`The only alleged distinction Dr. Haas offers between Zydney’s “pack and
`send” mode and its “intercom” mode is in the following statement from his
`declaration (which quotes the same sentence of Zydney quoted by Dr. Min in
`IPR2017-02085): “[i]n intercom mode, the audio message is also digitally recorded,
`however, only ‘a small portion of the digitized voice is stored to account for the
`requirements of the Internet protocols for retransmission and then transmitted before
`the entire conversation has been completed.’” Haas Decl. ¶ 178. Dr. Haas does not
`explain whether and how this quotation from Zydney supports Dr. Haas’ conclusion
`that Zydney discloses controlling the method of generating an instant voice message
`based on the connectivity status of the recipient. It does not, as the Board previously
`determined in several related matters. The law precludes the Board from reversing
`course now by raising arguments on behalf of Petitioner that are not advanced in
`either the Petition nor its attached declaration. In re Magnum Oil Tools Int'l, Ltd.,
`829 F.3d 1364, 1381 (Fed. Cir. 2016).
`In its original Institution Decision here, the Board emphasized the importance
`of “maintain[ing] consistency across proceedings.” IPR2017-01800, Paper 8 at 22.
`In issuing a Final Written Decision finding claim 3 invalid, however, the Board
`misapprehended the significance of its consistent and repeated rejection of the same
`
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`Case IPR2017-01799
`Patent 8,199,747 B2
`
`invalidity theory alleging that Zydney controls a method of generating by
`determining whether the pack-and-send mode is mandatory or optional.
`III. CONCLUSION
`In view of the foregoing, Patent Owner respectfully requests that the Board
`grant a rehearing and reconsider its Final Written Decision finding 1–3, 12, and
`13 of the ’747 patent unpatentable.
`
`Date: March 4, 2019
`
`
`
`
`/s/ Brett A. Mangrum
`Brett A. Mangrum
`brett@etheridgelaw.com
`Reg. No. 64,783
`
`Ryan Loveless
`ryan@etheridgelaw.com
`Reg. No. 51,970
`
`Counsel for Patent Owner
`
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`Case IPR2017-01799
`Patent 8,199,747 B2
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies that the foregoing was served electronically on
`
`counsel of record for Petitioner.
`
`Date: March 4, 2019
`
`
`
`/Brett A. Mangrum/
`
`
`
`Brett A. Mangrum
`brett@etheridgelaw.com
`Reg. No. 64,783
`
`Counsel for Patent Owner
`
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