`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2017-01800
`Patent 8,243,723 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 IPR2017-01800
`Patent 8,243,723 B2
`
`PATENT OWNER’S REQUEST FOR
`REHEARING UNDER 37 C.F.R. § 42.71(D)
`
`

`

`Case IPR2017-01800
`Patent 8,243,723 B2
`
`In response to the Final Written Decision entered January 31, 2019, (Paper
`34, 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 of the ’723 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).
`
`
`
`2
`
`

`

`Case IPR2017-01800
`Patent 8,243,723 B2
`
`II. ARGUMENT
`A. 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 acknowledges that Griffin does not explicitly disclose
`controlling the method of generating a speech chat message based upon a
`connectivity status of each recipient.” Paper 8 at 14-15 (citing Pet. 62); see also
`IPR2017-01799, Paper 9 at 30 (observing the same concession by Petitioner in
`addressing the same claim language recited in claim 3 of the ’747 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 34) at 66 (citing Haas Decl. ¶¶ 188–191). 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. It is also precisely the same
`argument the Board considered and rejected in denying institution in its original
`Institution Decision. See Paper 9.
`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
`
`
`
`3
`
`

`

`Case IPR2017-01800
`Patent 8,243,723 B2
`
`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
`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
`
`
`
`4
`
`

`

`Case IPR2017-01800
`Patent 8,243,723 B2
`
`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
`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.
`
`
`
`5
`
`

`

`Case IPR2017-01800
`Patent 8,243,723 B2
`
`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. ¶ 189. 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).
`Indeed, the Board previously reviewed the same testimony of Dr. Haas, as
`offered in related matter IPR2017-01799, and concluded in its original Institution
`Decision that that the same proposed combination of Griffin and Zydney did not
`even warrant institution of trial. IPR2017-01799, Paper 9 at 33. The Final Written
`Decision here does not cite to any new argument or evidence advanced during trial
`that warrants reversal of this initial finding, much less under the high burden
`applicable at trial.
`In its original Institution Decision here, the Board emphasized the importance
`of “maintain[ing] consistency across proceedings.” IPR2017-01800, Paper 8 at 22.
`
`
`
`6
`
`

`

`Case IPR2017-01800
`Patent 8,243,723 B2
`
`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
`invalidity theory alleging that Zydney controls a method of generating by
`determining whether the pack-and-send mode is mandatory or optional.
`
`B. The Board misapplied its construction in finding Griffin discloses the
`“transmitting” limitations of claim 1.
`The Board misapplied its construction (essentially adopting Patent Owner’s
`claim interpretation) in concluding in its Final Written Decision that Griffin alone1
`discloses “transmitting a signal to a client including a list of the recorded
`connectivity status for each of the nodes in the sub-set corresponding to the client,”
`as recited in claim 1. See Paper 34 at 50–53; see also Patent Owner Response at
`26–27 (additionally citing §§VI.A–B and VII.A of the same brief). The Board agreed
`with Patent Owner that “nodes” refers to a device and not a person. Paper 34 at 10.
`This claim construction should have been dispositive in favor of patentability
`because the only allegedly invalidating theory the Board identifies in its Final
`Written Decision is based on the “presence status” in Griffin’s buddy list; and it is
`undisputed that Griffin defines its “presence status” in a manner that is independent
`of the connectivity status of a device.
`The Petition concedes Griffin sets its presence status based on whether the
`chat history display is visible to the receiving user:
`
`
`1 The Board has repeatedly found that Zydney fails to disclose other limitations from
`which the “transmitting” limitations derive antecedent precedence including, for
`example, the “associating” limitations. See, e.g., IPR2017-01800, Paper 8 at
`19–20; IPR2017-01365, Paper 8 at 8–11.
`
`
`
`7
`
`

`

`Case IPR2017-01800
`Patent 8,243,723 B2
`
`Griffin also explains that message broadcaster 303 composes and
`transmits inbound speech chat messages 500 to only target
`recipients that are determined to be available by presence
`manager 302 “determin[ing] the status 702 of the target by
`locating the target’s identifier in a presence record 700 with the
`matching identifier 701.” (Id., 6:61-7:11.) Similarly, Griffin
`explains that a speech chat message may be queued at server
`complex 204 if it is determined that “the chat history display is
`not visible to the user” and “remains queued and ready for
`automatic playback upon the user’s return to the chat history
`display.” (Id., 11:48–64.)
`Pet. 25 (boldface and emphasis added). Moreover, 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.
`Thus, 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. This is clearly distinguishable from the claim langue, which as the Board
`correctly determined is written from the perspective of the “connectivity status” of
`a device itself. The Board appears to have misapprehended the significance of this
`undisputed interpretation of Griffin, particularly in view of a construction that the
`“node” term refers to a device and not a person.
`
`
`
`8
`
`

`

`Case IPR2017-01800
`Patent 8,243,723 B2
`
`C. The Board’s analysis of the “attached” limitations of dependent claim 2
`is legally and factually flawed and inconsistent with its repeated prior
`rulings.
`Dependent claim 2 of the ’723 patent recites “the instant voice message
`includes one or more files attached to an audio file.” 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 2 expressly requires attaching
`one or more files to the audio file. Final Written Decision (Paper 34) at 15. 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
`34) at 15–18. Neither the Petition nor the Response filed by Patent Owner identifies
`“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
`
`
`
`9
`
`

`

`Case IPR2017-01800
`Patent 8,243,723 B2
`
`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 16) at 29 (citations omitted).
`It is undisputed that neither Griffin nor Zydney discloses attaching As the
`Board correctly observed, it is undisputed that Griffin “does not describe attaching
`one or more files to the audio file in the speech chat message.” Final Written
`Decision (Paper 34) at 28 (citing Pet. 58). The Board also correctly observed that the
`Petition “relies on Zydney’s disclosure of attachments to the voice container as
`disclosing ‘wherein the instant voice message includes one or more files attached to
`an audio file.’” Id. (citing Pet. 58-61). In short, the Petition relies on Zydney for
`precisely the same proposition that the Board has repeatedly rejected as
`distinguishable from claim language explicitly identifying which elements must be
`attached to each other.
`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 18.2 The Petition did not advance this construction, much less
`explain and defend it with some rational underpinning.
`
`
`2 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 34) at 17 (citing
`Ex. 1040). Not only is the cited testimony far outside the scope of direct, it is offered
`
`
`
`10
`
`

`

`Case IPR2017-01800
`Patent 8,243,723 B2
`
`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 (i.e.,
`claim 2, which depends from and requires all limitations of claim 1) 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
`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 to apply its own construction such that the explicit requirement of attaching
`
`entirely outside the context of the ’723 patent, let alone the specific claim language
`recited in claim 2 of the ’723 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 “the instant voice message includes one
`or more files attached to an audio file,” as recited in claim 2.
`
`
`
`11
`
`

`

`Case IPR2017-01800
`Patent 8,243,723 B2
`
`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).
`III. CONCLUSION
`In view of the foregoing, Patent Owner respectfully requests that the Board
`grant a rehearing and reconsider its Final Written Decision finding Claims 1−3 of
`the ’723 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
`
`
`
`12
`
`
`
`
`
`
`
`

`

`Case IPR2017-01800
`Patent 8,243,723 B2
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that the foregoing was served electronically on
`
`counsel of record for Petitioner.
`
`Date: March 4, 2019
`
`
`
`/s/ Brett A. Mangrum/
`
`
`
`Brett A. Mangrum
`brett@etheridgelaw.com
`Reg. No. 64,783
`
`Counsel for Patent Owner
`
`13
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`