Trials@uspto.gov
`571-272-7822
`
`
`Paper 36
`Entered: January 17, 2019
`
`
`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
`
`____________
`
`
`
`Before, JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`DECISION
`ON PATENT OWNER’S REQUEST FOR REHEARING
`37 C.F.R. § 42.71(d)
`
`
`571-272-7822
`
`
`Paper 36
`Entered: January 17, 2019
`
`
`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
`
`____________
`
`
`
`Before, JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`DECISION
`ON PATENT OWNER’S REQUEST FOR REHEARING
`37 C.F.R. § 42.71(d)
`
`
`
`IPR2017-01800
`Patent 8,243,723 B2
`
`
`I.
`
`INTRODUCTION
`
`On January 31, 2019, the Board issued a Final Written Decision in
`
`this proceeding. Paper 34 (“Final Dec.”). In that Final Written Decision, we
`
`determined that Petitioner had shown by a preponderance of the evidence
`
`that claims 13 of the ’723 patent are unpatentable. Id. at 71. On March 4,
`
`2019, Patent Owner filed a Request for Rehearing. Paper 35 (Req. Reh’g).
`
`Patent Owner argues three points. First, Patent Owner takes issue with our
`
`findings regarding the “transmitting” limitation of claim 1. Req. Reh’g 78.
`
`Second, Patent Owner argues that our analysis of the “attached” limitation,
`
`recited in claim 2, is flawed and inconsistent with prior findings. Id. at
`
`912. Third, Patent Owner takes issue with our determination that Zydney
`
`teaches the further limitation recited in claim 3. Id. at 38.
`
`According to 37 C.F.R. § 42.71(d), “[t]he burden of showing a
`
`decision should be modified lies with the party challenging the decision,”
`
`and the “request must specifically identify all matters the party believes the
`
`Board misapprehended or overlooked.” The burden here, therefore, lies with
`
`Patent Owner to show we misapprehended or overlooked the matters it
`
`requests that we review. We are not persuaded that Patent Owner has shown
`
`that we misapprehended or overlooked the matters raised in the Request for
`
`Rehearing. We address each of Patent Owner’s arguments in turn.
`
`II. ANALYSIS
`
`Arguments Concerning Claim 1
`
`Claim 1 recites two phrases that recite the word “nodes.” First,
`
`claim 1 recites “monitoring a connectivity status of nodes . . . , said
`
`connectivity status being available and unavailable.” Second, claim 1 recites
`
`the phrase “transmitting a signal to a client including a list of the recorded
`
`2
`
`
`
`IPR2017-01800
`Patent 8,243,723 B2
`
`connectivity status for each of the nodes in the sub-set corresponding to the
`
`client. We construed the term “nodes” to refer to devices. Final Dec. 11.
`
`We also concluded that Griffin teaches the “monitoring” limitation,
`
`including the “connectivity status of the nodes” because Griffin maintains
`
`the presence status or “current” status for each identifier, tracks changes to
`
`the mobile terminal’s status 702, and updates other terminals as to those
`
`changes, as shown in Figure 7 of Griffin. Final Dec. 3940. We also noted
`
`in our Final Written Decision that Griffin describes the ID field of Figure 7
`
`as representing a target recipient of a message, but that it is “associated
`
`directly with a mobile terminal that the person uses to connect to the
`
`network.” Id. at 40 (citing Ex. 1005, 1:4043, 4:1113, 5:1520). We also
`
`quoted Griffin as describing that the chat messages refer to messages
`
`directed to one or more mobile terminals and sent by mobile terminals. Id.
`
`at 4041 (citing Ex. 1005, 5:69).
`
`As for the “transmitting” limitation, we determined that Griffin’s
`
`“buddy list” was evidence that Griffin associates a “sub-set of the nodes”
`
`with a client and that the “buddy list” message update is the required
`
`transmission of the recited “list of the recorded connectivity status for each
`
`of the nodes.” Id. at 5051. We determined that the “buddy list update
`
`message includes the presence status of each buddy in the particular buddy
`
`list.” Id. at 52 (citing Ex. 1005, 7:4849, 7:5457). Patent Owner argues
`
`that presence manager 302 refers to a human participant instead of the
`
`“terminal,” and, therefore, faults us for misapprehending that Griffin’s
`
`presence status of “unavailable” refers to a human participant’s status,
`
`whether or not the participant’s device is presently connected. Req. Reh’g 8.
`
`We do not agree.
`
`3
`
`
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`IPR2017-01800
`Patent 8,243,723 B2
`
`
`As stated above, we interpreted Griffin’s presence manager to identify
`
`when the terminal’s connection changes and that the identifier of a user of
`
`the system is associated directly with a mobile terminal. As we stated with
`
`reference to Figure 9 of Griffin, which depicts a buddy list screen: “This
`
`display alone is evidence that the mobile terminal (“client”) contains a list of
`
`buddies (plural), each being a user of Griffin’s system, and each
`
`communicating with a mobile terminal and having a presence status (‘sub-
`
`set of the nodes’).” Final Dec. 47. Thus, we determined that Griffin is not
`
`referring only to human participants when addressing the “nodes” or the
`
`“buddies.” These entities require a mobile terminal in order to use the
`
`system, and the availability or unavailability status refers also to the
`
`capability of the mobile terminal to receive speech chat messages. See Final
`
`Dec. 41 (discussing Griffin’s “Available” status as a determination that the
`
`mobile terminal can receive the message type, and that the “Off” status
`
`indicates that the mobile terminal is not available).
`
`Furthermore, we also relied on the teachings of Zydney of the
`
`“Available” and “Not logged on” status to teach the “connectivity status
`
`being available and unavailable,” thereby taking into account further
`
`teachings in the art that the connectivity status refers to the device and not
`
`merely the human participant. Final Dec. 4243. For instance, we credited
`
`Dr. Haas’s testimony that Zydney teaches the well-known technique of
`
`informing whether a terminal is available to receive a speech chat message,
`
`and that Zydney teaches the advantage of conveying the terminal’s
`
`availability status to determine which software agent is able to exchange
`
`messages. Id.
`
`4
`
`
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`IPR2017-01800
`Patent 8,243,723 B2
`
`
`Accordingly, we are not persuaded by Patent Owner’s argument that
`
`we misapprehended Griffin’s disclosure of the presence manager tracking
`
`the status of devices. We further note that Patent Owner’s argument does
`
`not address the combination of Griffin and Zydney in this regard.
`
`Arguments Concerning Claim 2
`
`Patent Owner argues that we misapprehended the dispute concerning
`
`the “attachment” recited in claim 2. Req. Reh’g 910. In particular, Patent
`
`Owner contends that we construed the term “attachment” when neither party
`
`expressly set forth a construction for the term, and that the issue was not
`
`“how” the attachment is performed, but rather, which claim elements must
`
`be attached to each other. Id. Patent Owner posits that “[i]t is undisputed
`
`that neither Griffin nor Zydney discloses attaching.” Id. at 10. Patent
`
`Owner also complains that it “was not provided due process ability to
`
`respond to the Board’s construction and point out why it is incorrect.” Id. at
`
`11.
`
`We are not persuaded by Patent Owner’s arguments that we
`
`misapprehended the parties’ arguments regarding the scope of the term or
`
`that it was not proper for us to construe the term. First, we expressly
`
`construed the term in this proceeding consistent with the claim language
`
`requiring the attachment to an audio file and the Specification’s description
`
`of embodiments in which an instant voice message is in the form of audio
`
`file. Final Dec. 16 (describing the Specification’s only description of
`
`“attachment” as providing some indication (e.g., linkages) that another file
`
`(or files) is associated with the instant voice message or the audio file). We
`
`noted that credible expert testimony confirmed our analysis because of the
`
`understanding of a person of ordinary skill in the art concerning attachment
`
`5
`
`
`
`IPR2017-01800
`Patent 8,243,723 B2
`
`of files. Id. at 17. We considered and rejected as incorrect Patent Owner’s
`
`argument that attaching a file to an “audio file,” rather than to an instant
`
`voice message, required more than indicating the association. Id. at 1718.
`
`Our analysis thus highlighted the challenge presented by this and the related
`
`cases in which the claims sometimes required an attachment of a file to the
`
`instant voice message and sometimes required an attachment of a file to the
`
`audio message. Our analysis also focused, contrary to Patent Owner’s
`
`rehearing argument, on the disclosure that Griffin’s speech chat message
`
`includes a content field containing the audio file and another field including
`
`the attachment information, i.e., other files associated therewith. Final Dec.
`
`6364. We specifically addressed whether and how the one or more files
`
`recited in claim 2 are associated with the audio file. Id. We addressed
`
`Patent Owner’s arguments to the contrary and we noted that Patent Owner’s
`
`arguments relying on Zydney were not persuasive because our determination
`
`regarding claim 2 relied on Griffin’s disclosure of files attached to the audio
`
`file in Griffin’s speech chat message, not on any of Zydney’s disclosure of a
`
`voice container. Id. at 65.
`
`Based on the foregoing, we stand by our decision to construe
`
`“attachment” based on the parties’ arguments during trial and at oral
`
`argument. Patent Owner has been given ample opportunity to address the
`
`term “instant voice message” and the related “attachment” limitation as this
`
`is an issue that spans multiple related matters and was extensively discussed
`
`at oral argument. See Tr. 75:2087:3. Patent Owner now raises an
`
`argument that “associating” and “attaching” have “distinct and separate
`
`meanings” because the claims recite these terms individually. Req. Reh’g
`
`11. But this is not persuasive because Patent Owner does not provide any
`
`6
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`
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`IPR2017-01800
`Patent 8,243,723 B2
`
`support for the contention that a person of ordinary skill in the art
`
`understands “attaching” as being narrower than or different from associating
`
`the two recited files. We recognize that a canon of claim construction is that
`
`different terms are presumed to have different meanings. Here, however,
`
`there is no evidence that, by reciting “associating a sub-set of the nodes with
`
`a client,” the claim that recites “one or more files attached to an audio file”
`
`would be understood to effectuate the “attached” file as something different
`
`than providing information that links or associates the attachment to the
`
`audio file. Further, the Specification does not show any embodiment of how
`
`“associating a sub-set of the nodes” is performed and how the “associating”
`
`is technically any different from the description of linking a file to the
`
`instant voice message.
`
`Finally, Patent Owner argues that our decision is inconsistent with
`
`prior decisions. Req. Reh’g 9. We are not persuaded by this argument. We
`
`discussed in our Final Written Decision that, based on the full record, we
`
`were not adopting our analysis from institution decisions in this or other
`
`related matters. Final Dec. 6162 (stating that our initial inclinations
`
`concerning the scope of claim 2 and the asserted prior art were wrong).
`
`Institution decisions are not binding. And as stated in our Final Written
`
`Decision, the “Board is free to change its view on the merits after further
`
`development of the record, and should do so if convinced its initial
`
`inclinations were wrong.” TriVascular, Inc. v. Samuels, 812 F.3d 1056,
`
`1068 (Fed. Cir. 2016). Arguing that we must retain the construction in
`
`those institution decisions is not persuasive as the fully developed record
`
`compels us to change our view in this matter.
`
`Arguments Concerning Claim 3
`
`7
`
`
`
`IPR2017-01800
`Patent 8,243,723 B2
`
`
`Patent Owner’s arguments concerning claim 3 primarily stem from
`
`our change of view regarding the scope and application of the limitation
`
`further recited in claim 3. Req. Reh’g 34. As stated above, it is not
`
`persuasive to argue that an institution decision reached a different
`
`conclusion. The further arguments Patent Owner presents are focused on
`
`rearguing the limitation and challenging the credited testimony of Dr. Haas.
`
`The arguments however do not show that misapprehended or overlooked the
`
`matter. Rather, Patent Owner’s arguments express disagreement with our
`
`determination and the evidence cited in support. But a request for rehearing
`
`is not an opportunity to reargue the weight of evidence and insist that the
`
`Board rely on preliminary determinations made at institution which are not
`
`binding and should be changed if we determine that the arguments and
`
`evidence warrant.
`
`In conclusion, we are not persuaded that Patent Owner has shown that
`
`we misapprehended or overlooked the matters raised on rehearing and we
`
`see no reason to disturb our Final Written Decision in this proceeding.
`
`III. ORDER
`
`Patent Owner’s Request for Rehearing is denied.
`
`
`
`8
`
`
`
`IPR2017-01800
`Patent 8,243,723 B2
`
`For PETITIONER:
`
`Naveen Modi
`Joseph Palys
`Phillip Citroen
`Michael Wolfe
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`phillipcitroen@paulhastings.com
`michaelwolfe@paulhastings.com
`
`
`For PATENT OWNER:
`
`Brett Mangrum
`Ryan Loveless
`ETHERIDGE LAW GROUP
`brett@etheridgelaw.com
`ryan@etheridgelaw.com
`
`Sean D. Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`
`9
`
`
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