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 PRELIMINARY RESPONSE TO PETITION
`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.
`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 PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`Table of Contents
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`IPR2017-1799
`U.S. Patent 8,199,747
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`4
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`7
`7
`8
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`10
`13
`15
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`18
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`22
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`24
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`25
`29
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`29
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`36
`37
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`37
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`INTRODUCTION
`I.
`II. RELATED MATTERS
`III. THE ’747 PATENT
`Effective Filing Date of the ’747 Patent
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`Overview of the ’747 Patent
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`IV. THE PETITION SHOULD BE DENIED AS REDUNDANT, AS
`CITING REFERENCES CUMULATIVE TO WHAT HAS
`ALREADY BEEN CONSIDERED IN PROSECUTION, AND
`UNDER THE BOARD’S DISCRETION
`Petitioner’s Unjust and Unjustified Horizontal Redundancy
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`Petitioner Uses Impermissible Vertical Redundancy
`Zydney is Materially the Same as the art Cited During
`Prosecution of the ’747 Patent and Therefore is Demonstrably
`Duplicative for the Purposes Relied on by Petitioner
`The Board Should Exercise its Discretion and Deny the
`Petition
`THERE IS NO REASONABLE LIKELIHOOD THAT EVEN
`ONE OF THE CHALLENGED CLAIMS IS UNPATENTABLE
`Claim Construction
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`1.
`“Node”
`Independent Claim 1 is Not Obvious
`1.
`No prima facie obviousness for “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”
`Zydney teaches away from “attaching one or more files
`to the audio file”
`Independent Claim 2 is Not Obvious
`1.
`No prima facie obviousness for “a list of nodes within the
`packet-switched network”
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`V.
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`2.
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`ii
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`IPR20 1 7-1 799
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`US. Patent 8,199,747
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`2.
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`No prirna facie obviousness for “the list of nodes
`including a connectivity status of each node”
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`D.
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`E.
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`Independent Claim 3 is Not Obvious
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`Dependent Claims 12 and 13 are Not Obvious
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`VI. A PHOSITA WOULD NOT COlVIBINE GRIFFIN AND
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`ZYDNEY AS SUGGESTED BY PETITIONER
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`1.
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`The Combination of Griffin and Zydney is Inoperable for
`Text-only Buddies
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`The Combination of Griffin and Zydney Is Also
`Inoperable Because it would Result in Messages Being
`Lost
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`The Combination of Griffin and Zydney Would Render
`Zydney Unsatisfactory for An Intended Purpose
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`The Combination of Griffin and Zydney Would Require
`Changing the Principle of Operation of at least one of
`them
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`VII. THE SUPRENIE COURT IS CURRENTLY REVIEWING THE
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`CONSTITUTIONALITY OF INTER PARTES REVIEW
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`VIII. CONCLUSION
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`List of Exhibits
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`Exhibit No-
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`2001
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`2002
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`2003
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`2004
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`
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`Declaration of William C. Easttom II
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`US. Pat. App. Pub. No. 2004/0128356 (“Bernstein”)
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`Excerpts from The American Heritage Dictionm (Houghton
`Mifflin C0. 3rd Ed. 1992)
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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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`40
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`44
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`45
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`46
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`48
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`51
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`52
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`iii
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`IPR2017-1799
`U.S. Patent 8,199,747
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`I.
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`INTRODUCTION
`Pursuant to 35 U.S.C. §313 and 37 C.F.R. §42.107(a), Uniloc USA, Inc. and
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`Uniloc Luxembourg S.A. (the “Patent Owner”) submit this Patent Owner’s
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`Preliminary Response to the Petition for Inter Partes Review (“Pet.” or “Petition”)
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`of United States Patent No. 8,199,747 B2 (“the ’747 Patent” or “Ex. 1001”) filed by
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`Samsung Electronics America, Inc. (“Petitioner”) in IPR2017-1799.
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`In view of the reasons presented herein, the Petition should be denied in its
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`entirety as failing to meet the threshold burden of proving there is a reasonable
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`likelihood that at least one challenged claim is unpatentable. First, the Petition
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`should be denied as redundant in view of various other IPR challenges that have
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`been filed against the ’747 Patent and other patents in its family, several of which
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`rely on the same references as the instant Petition. Second, Petitioner fails to satisfy
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`the All Elements Rule for each of the five challenged claims. Third, while Petitioner
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`asserts a two-reference obviousness challenge for the five challenged claims, the two
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`references cannot and should not be combined as suggested by the Petition.
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`Petitioner’s approaches invite reversible error and should be rejected outright.
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`
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`II. RELATED MATTERS
`The ’747 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”); 8,724,622 (“the ’622
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`4
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`
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`Patent”); and 8,995,433 (“the ’433 Patent”).l The diagram below how this family of
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`IPR20 1 7-1 799
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`US. Patent 8,199,747
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`patents is interrelated.
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`App. No: 103740030
`Filed: 12-18-2003
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`Pat. No: 7.535.890
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`App. No: 12.898063
`Filed: 03-04-2009
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`App. No.: 12.:‘398.076
`Filed: 03-04-2009
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`Pat. NO: 8.243.723
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`Pat. NO: 8.199.747
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`
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`App. No.: l3;"546.673
`Filed: 07-11-2012
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`Pat. No: 8.72-1.62}.
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`App. No: Hill-1.125
`Filed: 03-25-2014
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`Pat. No: 8.995.433
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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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`14-Nov-16
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`1m “—
`IPR2017-0220
`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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`Apple
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`Apple
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`Apple
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`US. Patent 8,199,747
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`IPR20 1 7-1 799
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`Petitioner
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`IPR#
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`Date
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`Patent
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`Apple
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`Apple
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`Apple
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`IPR2017-0223
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`IPR2017—0224
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`14—Nov-16
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`IPR20170225
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`14-Nov-16
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`IPR2017— 1257
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`Facebook / WhatsApp
`7-Apr— 1 7
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`Facebook / WhatsApp
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`Facebook / WhatsApp
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`Facebook / WhatsApp
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`Facebook / WhatsApp
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`3-May-17
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`’723
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`
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`IPR2017— 1524
`2-Jun—17
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`Facebook / WhatsApp
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`Facebook / WhatsApp
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`IPR2017-1667
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`22Jun-17
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`’622
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`Snap
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`Snap
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`IPR2017-1611
`IPR2017-1612
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`15-Jun-17 —
`16-Jun-17
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`Facebook / WhatsApp
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`IPR2017—1634
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`16—Jun—17
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`Facebook / WhatsApp
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`IPR2017-1635
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`16-Jun-17
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`Facebook / WhatsApp
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`IPR2017—1636
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`16—Jun—17
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`Samsung Elec
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`Samsung Elec
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`IPR2017-1797
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`IPR2017-1798
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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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`20-Jul-17
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`’723
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`’890
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`’622
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`Apple
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`Apple
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`IPR20171804
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`20Jul—l7
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`IPR20171805
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`20Jul-17
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`IPR201 7—2090
`Huawei / LG Electronics
`11-Sep— 17
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`' All
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`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 ’747 Patent’s
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`“family.”
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`US. Patent 8,199,747
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`IPR20 1 7-1 799
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`Petitioner
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`Date
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`Patent
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`LG EEEEEE / EuawE —-——
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`Google/Huawei/Motorola
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`Google/Huawei/Motorola
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`IPR20 1 7—208 1
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`12-Sep-17
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`’622
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`Google/Huawei/Motorola
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`Google/Huawei/Motorola
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`Google/Huawei/Motorola
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`IPR2017—2084
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`11—Sep—17
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`Google/Huawei/Motorola
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`IPR2017-2067
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`12-Sep-17
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`Google/Huawei/Motorola
`IPR2017—2085
`11-Sep-17
`’747
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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 fin. 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 ’747 Patent. Pet. at 1—3.
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`HI. THE ’747 PATENT
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`A.
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`Effective Filing Date of the ’747 Patent
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`The ’747 Patent is titled “SYSTEM AND METHOD FOR INSTANT VOIP
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`MESSAGING.” The ’747 Patent issued June 12, 2012 from United States Patent
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`IPR2017-1799
`U.S. Patent 8,199,747
`Application No. 12/398,076, which is a Continuation of Application No.
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`10/740,030, filed on Dec. 18, 2003, now Pat. No. 7,535,890.
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` Overview of the ’747 Patent
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`The ’747 Patent notes that conventional circuit-switched communications
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`enabled traditional telephony yet had a variety of technical disadvantages that
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`limited developing other forms of communication over such networks. According to
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`the ’747 Patent, “[c]ircuit switching provides a communication path (i.e., dedicated
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`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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`terminal. During the telephone call, voice communication takes place over that
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`communication path.” Ex. 1001, 1:25–30.
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`The ʼ747 Patent expressly distinguishes circuit-switched networks from
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`packet-switched networks (e.g., the Internet) at least in that the latter routes
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`packetized digital information, such as “Voice over Internet Protocol (i.e., ‘VoIP’),
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`also known as IP telephony or Internet telephony.” Id. at 1:31–33. Because legacy
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`circuit-switched devices were unable to communicate directly over packet-switched
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`networks, media gateways were designed to receive circuit-switched signals and
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`packetize them for transmittal over packet-switched networks, and vice versa. Id. at
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`1:62–2:17. The conversion effected by media gateways highlights the fact that
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`packetized data carried over packet-switched networks are different from and are
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`8
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`IPR2017-1799
`U.S. Patent 8,199,747
`incompatible with an audio signal carried over a dedicated packet-switched circuit.
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`Id. at 1:25–30.
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`The ʼ747 Patent further notes that, notwithstanding the advent of instant text
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`messages, at the time of the claimed invention there was no similarly convenient
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`analog to leaving an instant voice message over a packet-switched network. Id. at
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`2:18–49. Rather, “conventionally, leaving a voice message involves dialing the
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`recipient’s telephone number (often without knowing whether the recipient will
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`answer), waiting for the connection to be established, speaking to an operator or
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`navigating through a menu of options, listening to a greeting message, and recording
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`the message for later pickup by the recipient. In that message, the user must typically
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`identify himself or herself in order for the recipient to return the call.” Id. at 2:22–
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`29.
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`In certain aspects, the ʼ747 Patent discloses that a user-accessible client is
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`configured for instant voice message (“IVM”) and for direct communication over a
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`packet-switched network (e.g., through an Ethernet card). Ex. 1001, 12:5–8. Certain
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`clients are specially configured to “listen[] to the input audio device 212,” “record[]
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`the user’s speech into a digitized audio file 210 (i.e., instant voice message) stored
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`on the IVM client 208,” and “transmit[] the digitized audio file 210” as packetized
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`data (e.g., using TCP/IP) over a packet-switched network (e.g., network 204) “to the
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`local IVM server 202.” Id. at 8:4–18, FIG. 2.
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`9
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`IPR2017-1799
`U.S. Patent 8,199,747
`IV. THE PETITION SHOULD BE DENIED AS REDUNDANT, AS CITING
`REFERENCES CUMULATIVE TO WHAT HAS ALREADY BEEN
`CONSIDERED IN PROSECUTION, AND UNDER THE BOARD’S
`DISCRETION
`Petitioner’s IPRs 2017-1797 through 1802 could be the poster children for the
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`abusive filing of redundant inter parties review petitions. In the instant Petition,
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`Petitioner presents a single ground for challenging the ’747 Patent—Petitioner
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`alleges obviousness of Claims 1–3, 12, and 13 of the ’747 Patent under 35 U.S.C.
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`§ 103 over Griffin (Ex. 1005) in view of Zydney (Ex. 1006). Petitioner redundantly
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`brings against the challenged independent claims (Claims 1, 2, and 3) of the ’747
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`Patent the same reference (Zydney) and grounds that are already before the Board in
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`other Petitions. Petitioner’s attacks on dependent claims 12 and 13 are also
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`redundant. Yet Petitioner has not met its obligation to justify through reasoned
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`explanation why it should again tax the Board and the Patent Owner with these
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`redundant filings. See Liberty Mutual Insurance Co. v. Progressive Casualty
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`Insurance Co., CBM2012-0003, Paper 7, Order (P.T.A.B. October 25, 2012) at 2–
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`3.2
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`2 When the Board promulgated these Regulations, it considered the effect on the
`economy, the integrity of the patent system, the efficient administration of justice,
`and the ability of the Office to timely complete proceedings as mandated by 35
`U.S.C. §326(b). Because Petitioner thus frustrates Congressional intent, see Liberty
`Mutual, Paper No. 7 at 2, the Petition should be denied.
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`10
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`IPR2017-1799
`U.S. Patent 8,199,747
`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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`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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`3 Petitioner and Facebook (along with Apple and others) jointly submitted invalidity
`contentions 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 (EX2004).
`Since such a filing, Petitioner, Facebook, and Apple have coordinated in IPR filings.
`These filings have been based on references known before the original IPR was filed.
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`11
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`IPR2017-1799
`U.S. Patent 8,199,747
`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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`The present IPR2017-1799 and the grounds it asserts are redundant and should
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`be denied because “numerous redundant grounds” needlessly place “a significant
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`burden on the Patent Owner and the Board” and “cause unnecessary delays.” Liberty
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`Mutual, Paper 7 at 2 (“multiple grounds, which are presented in a redundant manner
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`by a petitioner who makes no meaningful distinction between them, are contrary to
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`4 Dahod and Vuori are cumulative, and Dahod had been before the Office during
`prosecution. Petitioner Apple admitted, and the Board found, that Apple elucidated
`no significant difference between Dahod and Vuori. IPR2017-0224 Order Denying
`Institution, Paper No. 7, May 25, 2017, at 7 (“Petitioner attempting to distinguish
`the Dahod application from the ‘Vuori’ reference relied upon in concurrently filed
`IPR2017-00223 on the basis that the latter ‘is not susceptible to a potential §325(d)
`attack’”). Petitioner Apple admitted that Dahod had been before the Examiner during
`prosecution.
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`12
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`
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`IPR2017-1799
`U.S. Patent 8,199,747
`the regulatory and statutory mandates, and therefore are not all entitled to
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`consideration.”); Costco Wholesale Corp. v. Robert Bosch LLC, IPR2016-0035,
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`Paper No. 16, Decision Denying Institution, at 11 (Denying institution where
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`Petitioner asserted “multiple” grounds that were, in fact, just variations of the same
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`ground); see 37 C.F.R. §42.1(b) which mandates a “just, speedy, and inexpensive
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`resolution of every proceeding.”
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`Of the thirty-six IPRs that have been initiated against the patents in this family,
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`at least twenty-five IPRs rely on Zydney as a primary reference. Although the six
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`Petitions filed by Petitioner allege that Griffin is the “primary reference” (see e.g.,
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`Pet. at 7), Zydney is the substance-over-form primary reference doing most of the
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`work in each of the six Petitions. The inter partes review system is not a piñata party
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`in which each colluding Petitioner can take a turn whacking at Patent Owner’s
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`patents with the Zydney stick. The Board should therefore reject the instant Petition
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`outright.
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`
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`Petitioner’s Unjust and Unjustified Horizontal Redundancy
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`As clearly laid out above, IPRs 2017-1797 through 1802 reuse a collection of
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`well-worn references served up in other Petitions. The references relied upon
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`provide essentially the same teachings to meet the same claim limitations, but
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`Petitioner’s arguments do not explain why one reference more closely satisfies any
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`claim limitation at issue in some respects than does another reference, and vice versa.
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`13
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`IPR2017-1799
`U.S. Patent 8,199,747
`These references are not identical, each reference has to be better in some respect
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`otherwise the references are collectively horizontally redundant. The instant
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`IPR2017-1799 Petition should be denied.
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`The Board should disregard redundant grounds. See General Plastic
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`Industrial Co. LTD, v. Canon Kabushiki Kaisha, No. IPR2016-1357, Paper No. 19,
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`Decision Denying Petitioner’s Request for Rehearing at 3 (Where “Petitioner filed
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`follow-on petitions against the same patents [for] each of those follow-on petitions,
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`[the Board] exercised [its] discretion not to institute pursuant to 35 U.S.C. §314(a)
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`and 37 C.F.R. §42.108(a).”);5 Berk-Tek LLC v. Belden Techs. Inc., No. IPR2013-
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`0057, Paper No. 21, Decision on Request for Rehearing at 4-5 (P.T.A.B. May 14,
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`2013) (“If the petitioner makes no meaningful distinction between certain grounds,
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`the Board may exercise discretion by acting on one or more grounds and regard the
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`others as redundant” because “allowing multiple grounds without meaningful
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`distinction by the petitioner is contrary to the legislative intent”); Oracle Corp. v.
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`Clouding IP, LLC, No. IPR2013-0075, Paper No. 8, Decision on Institution of Inter
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`Partes Review at 13–14 (P.T.A.B. May 3, 2013) (denying various grounds of
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`unpatentability because they were redundant); AmkorTech., Inc. v. Tessera, Inc., No.
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`5 Relying on the seven factors from NVIDIA Corp. v. Samsung Elec. Co., IPR2016-
`00134, Paper No. 9 (P.T.A.B. May 4, 2016) to deny each of the follow-on Petitions.
`Canon Kabushiki Kaisha at 9-10.
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`14
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`IPR2017-1799
`U.S. Patent 8,199,747
`IPR2013-0242, Paper No. 37, Decision Institution of Inter Partes Review at 32–33
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`(P.T.A.B. Oct. 11, 2013) (ditto).
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`
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`Petitioner Uses Impermissible Vertical Redundancy
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`All in all, there are currently over twenty-five IPR proceedings challenging
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`claims of this patent family. The ’747 Patent is the subject of IPR2017-1257, the
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`instant IPR2017-1799, and IPR2017-2085. Every single challenge in every one of
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`these IPR petitions for the ’747 Patent relies on Zydney. Some argue that Zydney
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`alone anticipates or renders obvious.6 Others argue that the combination of Zydney
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`with additional reference(s) renders those same claims obvious.7 Nowhere to be
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`found is the requisite bi-directional explanation of why reliance on Zydney in part
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`6 IPR2017-1257 argues that Zydney alone renders obvious Claims 1, 3, and 13 of the
`’747 Patent. IPR2017-2057 argues that Zydney anticipates Claims 1–6, 8, 12, and
`13 of the ’747 Patent.
`7 IPR2017-1257 argues that Zydney in view of Appelman renders obvious Claims 2
`and 12 of the ’747 Patent. The instant IPR2017-1799 argues that Griffin in view of
`Zydney renders obvious claims 1–3, 12, and 13 of the ’747 Patent. IPR2017-2057
`argues that Zydney in view of Gralla renders obvious Claims 2–6, 8, 12, and 13;
`Zydney in view of Gralla and Okano renders obvious Claims 7, 9–11, 14, and 15;
`and Zydney in view of Gralla and Erekson renders obvious Claims 7 and 10 of the
`’747 Patent.
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`15
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`IPR2017-1799
`U.S. Patent 8,199,747
`may be stronger in some instances and why reliance on Zydney in the whole may be
`
`stronger in other instances.8
`
`Petitioner grossly violates the long-standing prohibition against vertical
`
`redundancy, and recycles Zydney (and some additional secondary references)
`
`through the simple expedient, on this go-round, of adding a user interface patent,
`
`Griffin, to the mix. Petitioner never explains how simply adding Griffin makes it fair
`
`or permissible to again burden the Board and the Patent Owner with this latest
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`barrage of Petitions in which Zydney continues to be cited for the same purported
`
`teachings. It is clear that Petitioners are gaming the system. Petitioners appear to be
`
`playing the odds: If Petitioners keep filing IPR petitions against the ’747 Patent
`
`family, Petitioners will eventually overwhelm the Board and Patent Owner.9
`
`
`8 When multiple references are applied both in partial and full combination, “[t]here
`must be an explanation of why the reliance in part may be the stronger assertion as
`applied in certain instances and why the reliance in whole may also be the stronger
`assertion in other instances.” Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., No.
`CBM2012-00003 (P.T.A.B. Oct. 25, 2012), Paper 7 at 3 (emphasis in original).
`9 “You will kill ten of my men but we will kill one of yours. And in the end it is you
`that will tire [of it first].” Ho Chi Minh, September 1946, at the close of negotiations
`with the French. Seeds of Revolution, Todd McCain, iUniverse LLC (Bloomberg
`2009) at p. 229.
`
`16
`
`
`
`IPR2017-1799
`U.S. Patent 8,199,747
`Petitioner’s ruse is transparent, futile, and unfair. As explained below, user
`
`interface patent Griffin is ill-suited to Petitioner’s hopes because Griffin adds
`
`nothing relevant to Zydney. Griffin does not describe or enable an instant voice
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`messaging application. Indeed, Griffin merely mentions “voice” in passing: First, in
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`the context of push-to-talk, which is inapplicable here; and second, merely as an
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`alternative to text payloads. Ex. 2001, ¶¶ 22–23; see Canon Kabushiki Kaisha at 11
`
`(citation omitted) (“The filing of sequential attacks against the same claims, with the
`
`opportunity to morph positions along the way, imposes inequities on Patent Owner”
`
`and on the Board).
`
`Indeed, Petitioner tacitly admits that it chose Griffin as a primary reference
`
`knowing it is redundant over Zydney: “While Zydney is at issue in a different IPR
`
`challenging the ’747 Patent … Ground 1 relies on Griffin as a primary reference …
`
`because it is different ….” See Pet. at 7. See also Petitions in IPR2017-1797 at 7
`
`(ditto), IPR2017-1798 at 8 (ditto), IPR2017-1800 at 8 (ditto), IPR2017-1801 at 8
`
`(ditto), and IPR2017-1802 at 7–8 (ditto). If all that is needed is “different” then there
`
`will never be an end to Petitioners’ abuse of the system and harassment of Patent
`
`Owner. Thus, IPR2017-1799 should be denied.
`
`17
`
`
`
`
`
`IPR2017-1799
`U.S. Patent 8,199,747
`Zydney is Materially the Same as the art Cited During Prosecution
`of the ’747 Patent and Therefore is Demonstrably Duplicative for
`the Purposes Relied on by Petitioner
`As explained herein, the Petition fails to “set forth . . . [h]ow [each] construed
`
`claim is unpatentable under the statutory grounds identified [in the Petition and]
`
`specify where each element of the claim is found in the prior art patents or printed
`
`publications relied upon,” as required by 37 C.F.R. § 42.104(b)(4). See Kingston
`
`Technology Company, Inc. v. SPEX Technologies, Inc., IPR2017-0824 (Paper 8)
`
`(P.T.A.B. August 17, 2017) (denying institution in part because “the rules require
`
`the petition to identify ‘how the construed claim is unpatentable under the statutory
`
`grounds identified’ and ‘specify where each element of the claim is found in the
`
`prior art patents or printed publications relied upon’”). Further, of the two primary
`
`references relied upon in the Petition, Griffin and Zydney, at least the latter is
`
`materially the same as the art cited during prosecution of the '890 Patent.
`
`All of the assertions in the Petition against the claims of the ’747 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
`
`prosecution of the application for the ’747 Patent) to allegedly invalidate each
`
`challenged claim of the ’747 Patent. Notwithstanding Petitioner’s purpose to
`
`introduce Zydney for the missing teachings needed to support its grounds, Zydney is
`
`demonstrably duplicative for those purposes.
`
`18
`
`
`
`IPR2017-1799
`U.S. Patent 8,199,747
`On page 50 of the Petition, Petitioner relies on an alleged teaching in Zydney,
`
`stating “it would have been obvious to a POSA at the time of the alleged invention
`
`to modify Griffin’s system/process such that terminal 100 is directly connected to
`
`network 203 in view of the teachings of Zydney.” (Emphasis added.) However, U.S.
`
`Pat. App. Pub. No 2004/0128356 (Ex. 2002; “Bernstein”), listed on the face of the
`
`’747 Patent10 similarly describes a terminal directly connected to a network.
`
`Ex. 2002, ¶ 0013, Fig. 1.
`
`On page 55 of the Petition, Petitioner relies on another alleged teaching in
`
`Zydney, stating “it would have been obvious to a POSA at the time of the alleged
`
`invention to modify Griffin’s system/process based on the teachings of Zydney so
`
`that status 702 indicates whether terminal 100 is ‘available’' or ‘unavailable’[.]”
`
`(Emphasis added.) However, Bernstein, similarly describes indicating whether the
`
`terminal is available or unavailable. Id. at ¶¶ 0007, 0016, 0017, 0122, and 0132.
`
`On page 38 of the Petition, Petitioner relies on yet another alleged teaching in
`
`Zydney, stating “it also would have been obvious to modify Griffin’s system/process
`
`
`10 Bernstein was explicitly asserted by the Examiner Creighton Smith in rejecting
`claims of the related ’890 Patent (during prosecution of the application leading to
`the ’890 Patent) in an Office Action mailed August 11, 2008. Notably, however,
`Bernstein was not used to reject any claims of the instant ’747 Patent during
`prosecution of the application that led to the ’747 Patent.
`
`19
`
`
`
`IPR2017-1799
`U.S. Patent 8,199,747
`based on the teachings of Zydney so that speech chat messages are temporarily stored
`
`at server complex 204 and received by the recipient’s terminal 100 depending on
`
`whether the recipient’s status 702 indicates that the recipient is available.”
`
`(Emphasis added.) However, Bernstein similarly describes storing instant messages
`
`to a server (e.g., for later retrieval by a user becoming available) in addition to
`
`describing indicating whether the terminal is available or unavailable. Id. at ¶¶ 0050,
`
`0100, 0129, and 0130.
`
`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 the ’747 Patent.
`
`Specifically, the statute authorizes rejecting 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, based on § 325(d),
`
`Petitioner’s reliance on Zydney should be rejected as cumulative with what the
`
`Primary Examiner had cited and considered during prosecution. See, infra, Unified
`
`Patents, Inc. v. Berman, Case IPR2016-1571 (P.T.A.B. Dec. 14, 2016) (Paper 10)
`
`and Cultec, Inc. v. Stormtech LLC, Case IPR2017-0777 (P.T.A.B. Aug. 22, 2017)
`
`20
`
`
`
`IPR2017-1799
`U.S. Patent 8,199,747
`(Paper 7). Compounding the matter is the fact that Petitioner made 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-
`
`1450 (P.T.A.B. Dec. 22, 2016), Paper 10 (finding the reliance on references
`
`previously presented to the Office was not entitled to consideration due to “the
`
`failure of Petitioner to address the impact of § 325(d)”).
`
`In Berman, the Board denied institution of one ground under § 325(d) because
`
`the petitioner asserted an obviousness combination that included a reference the
`
`examiner considered during prosecution and a second reference that was cumulative
`
`of prior art that the examiner considered. The Board also declined to exercise
`
`discretion under § 325(d) with respect to a second asserted obviousness combination,
`
`where the examiner did not consider the asserted references during prosecution, and
`
`the references were not cumulative of the prior art the examiner considered during
`
`prosecution. In Cultec, the Board denied institution under § 325(d) because (i) the
`
`examiner previously considered two of the asserted references—one reference was
`
`raised in a third-party submission that the examiner discussed in rejecting the claims
`
`and the other reference the examiner cited and applied throughout prosecution; and
`
`(ii) the two additional references upon which the petitioner relied were cumulative
`
`of prior art the examiner considered during prosecution.
`
`21
`
`
`
`IPR2017-1799
`U.S. Patent 8,199,747
` The Board Should Exercise its Discretion and Deny the Petition
`
`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
`
`Systems LLC v. Finjan, Inc., No. IPR2016-01443, Paper 13, Decision Denying
`
`Institution of Inter Partes Review at 8–9 (P.T.A.B. Jan. 23, 2017) provides a listing
`
`of eight such factors (collecting cases, internal citations omitted):
`
`(1) the finite resources of the Board;
`(2) the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than one year after the date on which the
`Director notices institution of review;
`(3) whether the same petitioner previously filed a petition directed to
`the same claims of the same patent;
`(4) whether, at the time of filing of the earlier petition, the petitioner
`knew of the prior art asserted in the later petition or should have
`known of it;
`(5) whether, at the time of filing of the later petition, the petitioner
`already received the patent owner’s preliminary response to the
`earlier petition or received the Board’s decision on whether to
`institute review in the earlier petition;
`(6) the length of time that elapsed between the time the petitioner
`learned of the prior art asserted in the later petition and the filing of
`the later petition;
`
`22
`
`
`
`IPR2017-1799
`U.S. Patent 8,199,747
`(7) whether the petitioner provides adequate explanation for the time
`elapsed between the filing dates of multiple petitions directed to the
`same claims of the same patent; and
`(8) whether the same or substantially the same prior art or arguments
`previously were presented to the Office.
`
`
`These factors favor a discretionary decision of non-institution. Even if the
`
`Board considers factors (2)–(7) inapplicable because there are no earlier-filed IPR
`
`Petitions listing Samsung Electronics America, Inc. as Petitioner, factors (1) and (8)
`
`counsel against institution. The first factor, “the finite resources of the Board,”
`
`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).
`
`The eighth factor also favors denial because “the same or substantially same
`
`prior art or arguments were previously presented to the office.” As explained above
`
`in Section IV.A-C, Petitioner provides no explanation for why the arguments and art
`
`cited in the instant Petition differ in any way from either the art cited during
`
`prosecution or for the horizontal or vertical redundancy reflected by the IPRs
`
`pending against this patent family.
`
`The Board should therefore exercise its discretion to deny institution of any
`
`ground presented in the instant Petition.
`
`
`
`23
`
`
`
`V.
`
`IPR2017-1799
`U.S. Patent 8,199,747
`THERE IS NO REASONABLE LIKELIHOOD THAT EVEN
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