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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`IPR2017-01800
`PATENT 8,243,723
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`PATENT OWNER RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. §42.120
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`IPR2017-01800
`U.S. Patent 8,243,723
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`Table of Contents
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`I.
`INTRODUCTION
`II. RELATED MATTERS
`III. THE ’723 PATENT
`A.
`Effective Filing Date of the ’723 Patent
`B.
`Overview of the ’723 Patent
`C.
`Claims 1–3 of the ’723 Patent
`IV. PERSON OF ORDINARY SKILL IN THE ART
`V.
`PROCEDUAL BACKGROUND
`VI. CLAIM CONSTRUCTION
`A.
`“sub-set of the nodes”
`B.
`“node”
`C.
`“instant voice message”
`VII. THE PETITION FAILS TO PROVE CLAIM 1 IS
`OBVIOUS
`A.
`Petitioner fails to prove obviousness of “associating a
`sub-set of the nodes with a client”
`No proof of obviousness for the “monitoring” step
`B.
`No proof of obviousness for the “transmitting” step
`C.
`D. Griffin does not disclose the allegedly required “real-
`time” aspect of the “instant voice message” recited in
`claim 1
`VIII. THE BOARD CORRECTLY FOUND THE CHALLENGE
`OF CLAIM 2 IS DEFICIENT
`IX. THE PETITION FAILS TO PROVE DEPENDENT
`CLAIM 3 IS OBVIOUS
`X. CONCLUSION
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`IPR2017-01800
`U.S. Patent 8,243,723
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`List of Exhibits
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`Exhibit No.
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`Description
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`Declaration of William C. Easttom II
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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
`Excerpts from the American Heritage Dictionary of the English
`Language (Third Edition, 1992)
`Excerpts from the Merriam Webster’s Collegiate Dictionary (10th
`Ed.) (1997)
`File History: Notice of Allowance for Application Leading to the
`ʼ723 Patent.
`U.S. Pat. App. Pub. No 2004/0128356 (“Bernstein”)
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`Deposition Transcript of Dr. Haas1
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`Dr. Haas’ tabbed and annotated copy of his declaration
`submitted as Ex. 1001 in IPR2017-018002
`Supplemental Declaration of William C. Easttom II
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`2001
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`2002
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`2003
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`2004
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`2005
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`2006
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`2007
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`2008
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`2009
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`1 As of the filing date of this Response, and due to the fact that Dr. Haas was offered
`for deposition only one week before the due date for the filing of this Response, a
`non-certified copy of the deposition transcript has been filed as Exhibit 2007.
`Pursuant to agreement between the parties, entered into during a conference call with
`the Board, Exhibit 2007 will be updated with a certified copy as soon as one becomes
`available.
`2 A certified copy of Exhibit 2008 has not yet been made available as of the filing
`date of this Response. Patent Owner will update the record with a copy of Exhibit
`2008 as soon as it is made available.
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`IPR2017-01800
`U.S. Patent 8,243,723
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`I.
`
`INTRODUCTION
`Pursuant to 37 C.F.R. §42.120, Uniloc Luxembourg S.A. (the “Patent
`Owner”) submits this Patent Owner’s Response to the Petition for Inter Partes
`Review (“Pet.” or “Petition”) of United States Patent No. 8,243,723 (“the ’723
`Patent” or “EX1001”) filed by Samsung Electronics America, Inc. (“Petitioner”) in
`IPR2017-01800.
`The Petition challenges claims 1–3 of the ’723 patent under 35 U.S.C. § 103
`over Griffin (“EX1005”) in view of Zydney (“EX1006”). The Petition should be
`denied in its entirety as failing to prove obviousness. In this matter and in related
`matters, the Board has already considered arguments presented in the Petition and
`found them insufficient to prove unpatentability.
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`II. RELATED MATTERS
`The Board noted in its original Institution Decision the importance of
`“maintain[ing] consistency across proceedings” and further noted “we are guided
`here by our analysis in the concurrently filed Decision on Institution concerning
`Case IPR2017-01799, concerning U.S. Patent No. 8,199,747, which is related to the
`’723 patent and includes” challenged claims that recite certain limitations analogous
`to those at issue here. Paper 8 at 22. As will be shown, the Board’s findings in related
`matters IPR2017-01257 and IPR2017-01365 are also particularly instructive here
`and further confirm the Petition should be denied in its entirety.3
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`3 The Petition appears to provide a comprehensive list of inter partes review
`proceedings concerning this family of patents.
`1
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`IPR2017-01800
`U.S. Patent 8,243,723
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`III. THE ’723 PATENT
`A. Effective Filing Date of the ’723 Patent
`The ’723 Patent is titled “System and Method for Instant VoIP Messaging.”
`The ’723 Patent issued August 14, 2012 from United States Patent Application
`No. 12/398,063, which is a Continuation of Application No. 10/740,030, filed on
`Dec. 18, 2003, now Pat. No. 7,535,890.
`The ’723 Patent is in a family of patents including United States Patent Nos.
`8,199,747 (the ʼ747 Patent); 7,535,890 (the ʼ890 Patent); 8,724,622 (the ʼ622
`Patent); and 8,995,433 (the ‘433 Patent). The diagram below charts how this family
`of patents is interrelated.
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`IPR2017-01800
`U.S. Patent 8,243,723
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`B. Overview of the ’723 Patent
`The ’723 patent notes that conventional circuit-switched communications
`enabled traditional telephony yet had a variety of technical disadvantages that
`limited developing other forms of communication over such networks. According to
`the ʼ723 patent, “[c]ircuit switching provides a communication path (i.e., dedicated
`circuit) for a telephone call from the telephone terminal to another device 20 over
`the [public switched telephone network or] PSTN, including another telephone
`terminal. During the telephone call, voice communication takes place over that
`communication path.” EX1001, 1:25–30.
`The ʼ723 patent expressly distinguishes circuit-switched networks from
`packet-switched networks. Id., 1:31–33. Because legacy circuit-switched devices
`were unable to communicate directly over packet-switched networks, media
`gateways were designed to receive circuit-switched signals and packetize them for
`transmittal over packet-switched networks, and vice versa. Id., 1:61–2:17. The
`conversion effected by media gateways highlights the fact that packetized data
`carried over packet-switched networks is different from and is incompatible with an
`audio signal carried over a dedicated circuit-switched network. Id., 1:25–30.
`The ʼ723 patent further notes that, notwithstanding the advent of instant text
`messages, at the time of the claimed inventions there was no similarly convenient
`analog to leaving an instant voice message over a packet-switched network. Id.,
`2:18–50. Rather, “[c]onventionally, leaving a voice message involves dialing the
`recipient’s telephone number (often without knowing whether the recipient will
`answer), waiting for the connection to be established, speaking to an operator or
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`U.S. Patent 8,243,723
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`navigating through a menu of options, listening to a greeting message, and recording
`the message for later pickup by the recipient. In that message, the user must typically
`identify . . . herself in order for the recipient to return the call.” Id., 2:22–29.
`In certain aspects, the ʼ747 patent discloses that a user-accessible client is
`configured for instant voice messaging using a direct communication over a packet-
`switched network (e.g., through an Ethernet card). Id., 12:5–8. Certain clients are
`specifically configured to “listen[] to the input audio device 212,” “record[] the
`user’s speech into a digitized audio file 210 (i.e., instant voice message) stored on
`the IVM client 208,” and “transmit[] the digitized audio file 210” as packetized data
`(e.g., using TCP/IP) over a packet-switched network (e.g., network 204) “to the local
`IVM server 202.” Id., 8:4–18, Fig. 2.
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`C. Claims 1–3 of the ’723 Patent
`For the convenience of the Board, claims 1–3 are copied below:
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`1. A method for instant voice messaging over a packet-switched
`network, the method comprising:
`monitoring a connectivity status of nodes within the packet-
`switched network, said connectivity status being available and
`unavailable;
`recording the connectivity status for each of the nodes;
`associating a sub-set of the nodes with a client;
`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; receiving an instant voice message having one or more
`recipients;
`delivering the instant voice message to the one or more recipients
`over a packet-switched network;
`temporarily storing the instant voice message if a recipient is
`unavailable; and
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`delivering the stored instant voice message to the recipient once
`the recipient becomes available.
`EX1001, 23:55–24:16.
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`2. The method for instant voice messaging over a packet-switch
`network according to claim 1, wherein the instant voice message
`includes one or more files attached to an audio file.
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`Id., 24:17–20.
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`3. The method for instant voice messaging over a packet-switch
`network according to claim 1, further comprising the step of:
`controlling a method of generating the instant voice message based
`upon the connectivity status of said one or more recipient.
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`Id., 24:21–26.
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`IV. PERSON OF ORDINARY SKILL IN THE ART
`Petitioner alleges through its declarant, Zygmunt Haas, that a “person of
`ordinary skill in the art at the time of the alleged invention of the ’723 Patent
`(‘POSA’) would have had at least a bachelor’s degree in computer science, computer
`engineering, electrical engineering, or the equivalent and at least two years of
`experience in the relevant field, e.g., network communication systems. More
`education can substitute for practical experience and vice versa.” Pet. 6–7 (citing
`EX1002 ¶¶15–16.).
`Uniloc’s declarant, Chuck Easttom, testified that a person of ordinary skill in
`the art is “someone with a baccalaureate degree related to computer technology and
`2 years of experience with network communications technology, or 4 years of
`experience without a baccalaureate degree.” EX2001 ¶ 16.
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`U.S. Patent 8,243,723
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`As should be apparent from his declaration and attached curriculum vitae,
`Mr. Easttom’s qualifications and experience exceed those of the hypothetical person
`having ordinary skill in the art defined above. Nevertheless, his analysis and
`opinions regarding the ’723 patent have been based on the perspective of a person
`of ordinary skill in the art as of December 2003. Id.
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`V.
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`PROCEDUAL BACKGROUND
`The Petition challenges claims 1–3 of the ’723 patent under 35 U.S.C. § 103
`over Griffin (EX1005) in view of Zydney (EX1006). Claim 1 is the only independent
`claimed challenged in the Petition (claims 2 and 3 both depend from claim 1). In its
`original Institution Decision (Paper 8) the Board granted institution only on claims
`1 and 3. The Board denied institution of the challenges against claim 2, finding that
`“we are not persuaded by Petitioner’s evidence that the combination of Griffin and
`Zydney would have taught or suggested ‘the instant voice message includes one or
`more files attached to an audio file,’ as recited in claim 2.” Paper 8 at 22. In response
`to SAS Inst., Inc. v. Iancu, 2018 WL 1914661, at *10 (U.S. Apr. 24, 2018), the Board
`modified its Institution Decision “to institute on all of the challenged claims on the
`ground presented in the Petition.” Paper 12 at 2.
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`VI. CLAIM CONSTRUCTION
`the header “Claim
`Although
`the Petition
`includes a section with
`Construction,” that section does not identify any term as allegedly requiring
`construction and it provides no specific claim construction arguments or allegedly
`supportive evidence. Pet. 14–15. Elsewhere in the Petition, Petitioner and its
`declarant attempt to map the cited art onto the claims in a manner which applies
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`IPR2017-01800
`U.S. Patent 8,243,723
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`clearly erroneous claim interpretations. Neither Petitioner nor its declarant make any
`attempt to defend the claim interpretations advanced in the Petition.4 Petitioner’s
`erroneous claim interpretations provide several independent bases to deny the
`Petition in its entirety. See Mentor Graphics Corp., v. Synopsys, Inc., IPR2014-
`00287, 2015 WL 3637569, (Paper 31) at *11 (P.T.A.B. June 11, 2015), aff'd sub
`nom. Synopsys, Inc. v. Mentor Graphics Corp., 669 Fed. Appx. 569 (Fed. Cir. 2016)
`(denying Petition as tainted by reliance on an incorrect claim interpretation).
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`“sub-set of the nodes”
`A.
`Petitioner incorrectly argues (including both in the Petition itself and through
`its declarant) that the claimed “sub-set of the nodes” (EX1001, claim 1, 24:5)
`requires no more than a single node. This erroneous construction is evident in
`Petitioner’s allegation that “[b]y subscribing to the presence information of one or
`more other users/terminals within the network—which causes the identifier of the
`subscriber to be added to the presence data record of the one or more other
`users/terminals—each subscribing terminal 100 (‘client’) is associated with the one
`or more users/terminals within the network that are potential recipients of speech
`chat messages (‘sub-set of nodes’).” Pet. 32 (citing EX1002 ¶124) (emphasis added).
`Petitioner repeatedly emphasizes its “one or more” construction because, in
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`4 Petitioner should not be allowed to lie behind the log and save its allegedly
`supportive claim construction arguments (to the extent it has any) for its reply brief
`only. Such gamesmanship circumvents the word-count limitation of a Petition. It
`also severely prejudices Patent Owner by forcing it to only guess as to the (waived)
`arguments Petitioner may untimely attempt to raise in its reply in defending an
`unsupported and unexplained claim construction applied in the Petition.
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`IPR2017-01800
`U.S. Patent 8,243,723
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`application, Petitioner relies on a mapping that focuses exclusively on an alleged
`“sub-set” of one.
`Petitioner’s declarant, Dr. Haas, applies the same erroneous construction in
`opining that “[e]ach subscribing terminal 100 (‘client’) is ‘associated’ with one or
`more users/terminals . . . (‘sub-set of nodes’) . . . because each subscribing terminal
`100 is subscribed to the presence information of one or more other users/terminals
`within the network[.]” EX1002 ¶ 124 (emphasis added). Further, Dr. Haas confirmed
`during his deposition that he (erroneously) interpreted “sub-set” to encompass only
`one node: “[m]y understanding . . . of the term ‘subset’ is that it’s part of a set. And
`if you have a set of some number of elements, one node would be part of this set.”
`EX2007, 77:6–10.
`In the Final Written Decision in related matter IPR2017-00222, and when
`addressing the same claim language of the same ’723 patent, the Board considered
`and rejected the same construction offered here by Petitioner and its declarant.
`There, the Board stated its conclusion as follows: “guided by case law governing
`claim construction, we adopt a construction of the term ‘list,’ as used in claim 1, that
`requires more than one node in the ‘sub-set’ corresponding to the client.” IPR2017-
`00222, Paper 29 at 16.
`The Board in IPR2017-00222 found that the surrounding claim language is
`instructive and determinative. Specifically, the Board noted (as Patent Owner did in
`that matter) that “the claim requires that the list include recorded connectivity status
`‘for each of the nodes in the sub-set corresponding to the client.’” Id. at 12 (emphasis
`original). The Board also found that “use of the word ‘each’ does imply the inclusion
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`U.S. Patent 8,243,723
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`of more than one node in the ‘sub-set.’” Id. (citing Oxford Dictionary, English, at
`https://en.oxforddictionaries.com/definition/each (2018, Oxford University Press)
`(defining the pronoun “each” as “used to refer to every one of two or more people
`or things, regarded and identified separately”).5
`Citing controlling authority, the Board further explained the word “each” (as
`recited in claim 1) would be rendered “meaningless” and “superfluous” by a
`mapping of the phrase “each of the nodes in the sub-set” to only one node. Id. at 15
`and n.3 (citing Merck & Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364, 1372 (Fed.
`Cir. 2005) (“A claim construction that gives meaning to all the terms of the claim is
`preferred over one that does not do so.”) and Bicon, Inc. v. Straumann Co., 441 F.3d
`945, 950–51 (Fed. Cir. 2006) (refusing to construe claim terms in a way that made
`other claim limitations meaningless)).
`The Board in this matter emphasized in its original Institution Decision the
`importance of “maintain[ing] consistency across proceedings.” IPR2017-01800,
`Paper 8 at 22. This of course would include construing “sub-set of the nodes” in a
`consistent manner across related proceedings—i.e., as “require[ing] more than one
`node in the ‘sub-set’ corresponding to the client.” IPR2017-00222, Paper 29 at 16.
`
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`5 The same dictionary cited by the Board in IPR2017-00225 defines “set” in pertinent
`part as follows: “[a] group or collection of things that belong together or resemble
`one another or are usually found together.” Oxford Dictionary, English, at
`https://en.oxforddictionaries.com/definition/set (2018, Oxford University Press)
`(emphasis added). The hyphenated use of “sub-set” confirms this term refers to a
`“set” of multiple nodes that collectively form a subpart of the larger group defined
`as a “list of nodes within the packet-switched network.”
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`IPR2017-01800
`U.S. Patent 8,243,723
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`It would also appear that the Petition injects the additional dispute of whether
`the “sub-set” introduced in the “associating” step must be the same “sub-set” recited
`in the “transmitting” step. The explicit reference to “the sub-set” in the
`“transmitting” step unambiguously invokes an antecedent basis from the
`“associating” step, where that term is first introduced. As will be shown, the Petition
`fails to identify (in any cited reference) the steps directed to a “sub-set of the nodes”
`as claimed.
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`“node”
`B.
`In a footnote, without any accompanying argument or explanation, Petitioner
`asks the Board to construe “node” as “potential recipient.” Pet. at 19–20, n.8. In
`doing so, Petitioner does not clearly articulate whether it considered “potential
`recipient” to refer exclusively to device or, instead, to either a device or a person. In
`applying its claim construction position, Petitioner first points to “mobile terminal
`100 in Griffin’s system/process” as allegedly constituting the claimed “node.” Id.
`That mapping breaks down when Petitioner later attributes to Griffin’s mobile
`terminal 100 a description that, instead, applies to a person who Griffin refers to as
`the “recipient.”
`Petitioner’s inconsistent mapping highlights a fatal deficiency in the Petition:
`Petitioner relies on an interpretation that requires unreasonably broadening “node”
`to encompass a person. Petitioner has the burden of proof, yet it fails to defend such
`an unreasonably expansive interpretation. Petitioner’s application of the art injects a
`claim construction dispute that warrants resolution by the Board.
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`In the context of computer communications networks, “node” is a term of art
`with a well-known plain and ordinary meaning. EX2001 ¶¶ 29–30. Persons having
`ordinary skill in the art would have understood that, in the context of network
`communications, the term “node” refers to a device (e.g., a computer, a computer
`system, or another device) within a network. Id. That plain and ordinary meaning is
`consistent with the use of “node” in independent claim 1. Id.
`Among other definitive limitations, the term “nodes” appears in the following
`context in claim 1: “monitoring a connectivity status of nodes within the packet-
`switched network, said connectivity status being available and unavailable” and
`“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.” EX1001, 24:1–8.
`Thus, the term “nodes” are recited in the context of being “within the packet-
`switched network,” each one having its respective “connectivity status” pertaining
`to the node itself. This explicit context confirms the claimed “node” is a device
`within a packet-switched network, consistent with the plain and ordinary meaning.
`EX2001 ¶¶ 23–26.6
`Consistent with the claim language, the remainder of the ʼ723 patent
`specification refers to a “recipient of the instant voice message” (i.e., the selected
`node) as a receiving device operating within a network. See, e.g., EX1001, 2:66–67
`
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`6 To be clear, a “software agent” may be a part of a network device, but it is not a
`“node” as claimed. A software agent cannot be a “node” at least because device
`hardware is required to connect to the network (be it hardwired or wireless).
`Hardware is also required for a “node” to transmit signals or receive the same (i.e.,
`before any software agent can process a received signal). EX2001 ¶ 31.
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`(“the selected recipients being enabled to audibly play the instant voice message.”);
`3:35–37 (“one or more external recipients connected to an external network outside
`the local network”); 3:53–54 (same); 8:25–28 (“The one or more recipients are
`enabled to display an indication that . . . .”); 9:10–11 (same); 10:45–56 (same);
`16:26–28 (same); 17:24–25 (same); 18:67–68 (same); 20:54–55 (same); 8:30–32
`(“It is noted that if a recipient IVM client is not currently connected to the local IVM
`server 202 (i.e., is unavailable) ….”); etc.
`In addition to this intrinsic evidence, the 1992 edition of the American
`Heritage Dictionary of the English Language defines “node” in the computer
`network context as “[a] terminal in a computer network.” EX2001 ¶ 32 (citing
`EX2003 at 3). This dictionary definition is consistent with Mr. Easttom’s opinion
`that “‘node’ as a known term of art and refer[s] to a device rather than a person or
`purely software.” Id.
`As will be shown, Petitioner’s application of the cited art requires
`unreasonably expanding the scope of “node” to encompass a person. Such an
`erroneous claim interpretation provides an independent basis to deny the Petition.
`See Mentor Graphics, IPR2014-00287, Paper 31 at 11, aff'd sub nom. Synopsys, Inc.,
`669 Fed. Appx. 569 (Fed. Cir. 2016) (denying Petition as tainted by reliance on an
`incorrect claim interpretation).
`
`“instant voice message”
`C.
`The Petition is admittedly based on the flawed premise that the claimed
`“instant voice message” requires nothing more than a voice message transmitted in
`so-called “real time” to an available terminal. Pet. 17 (arguing “each speech . . . chat
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`message is an ‘instant’ voice message, as claimed, because it is a voice message
`transmitted in ‘real-time’ to an available recipient terminal 100.”) (emphasis
`added); EX1002 ¶ 81 (copying the same argument). Neither the Petition itself nor its
`attached declaration make any attempt to defend such an unreasonably broad
`interpretation of “instant voice message.”
`A voice message does not become an “instant” voice message merely because
`it is transmitted to another device in so-called “real time.” Indeed, under such an
`unreasonably broad interpretation, speech transmitted over a Public Switched
`Telephone Network (PSTN) from a landline payphone to a remote answering
`machine would constitute an “instant voice message,” merely because it is a speech
`message that is transmitted in real time to an available machine which answers the
`call and records the message. The ’723 patent specification itself confirms this
`scenario is outside the spirit and scope of the claims. See, e.g., EX1001, 2:18–29
`(distinguishing the disclosure from merely leaving a voice message by dialing a
`number and recording the message for later pickup). Consequently, the underlying
`premise upon which the entire challenged is based should be rejected as applying an
`unreasonably broad construction.
`The error in the Petition is further confirmed by the deposition testimony of
`Petitioner’s declarant, Dr. Hass. During his deposition, Dr. Haas repeated his
`testimony that “an instant voice message is a message that is transmitted in real-time
`to a recipient.” EX2007, 89:17–20. When asked to clarify whether he considered e-
`mail to also be transmitted in “real time” to a recipient, Dr. Haas stated in his
`response that “we all receive e-mails that are delayed, very much delayed, and so
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`on. So there’s no real-time aspect in an e-mail.” Id. 106:10−13. When asked to
`clarify what he meant by “delayed” Dr. Haas further stated that “there’s no
`expectation of an e-mail to be transmitted and received in real time.” Id. 107:8−10
`(emphasis added).
`It follows from Dr. Haas’ testimony that an e-mail is distinguishable from an
`“instant voice message” as claimed at least because there is no “expectation” that an
`e-mail will be read in real time by someone on the receiving end (i.e., the “we”
`referenced by Dr. Hass). Rather, e-mail is more analogous to a physical postal
`mailbox where paper letters are deposited only to be extracted sometime later when
`someone opens the mailbox and retrieves them. The asserted aspect of an
`“expectation” of “real time” reception by a person on the receiving end of an “instant
`voice message” is not reflected in the analysis set forth in either the Petition or its
`attached declaration. This is independently fatal to the theory set forth in the Petition.
`
`VII. THE PETITION FAILS TO PROVE CLAIM 1 IS OBVIOUS
`To prevail on its sole theory of obviousness, Petitioner “must specify where
`each element of the claim is found in the prior art patents or printed publications
`relied upon.” 37 C.F.R. § 42.104(b)(4). The Petition fails to meet this burden. The
`discussion below focuses on interrelated steps in claim 1 that recite certain defining
`aspects of the related terms “connectivity status” and “sub-set of the nodes.” In its
`Decision Denying Institution of an obvious challenge asserting the same Zydney
`reference against the same claim of the same ’723 patent, the Board observed the
`following:
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`IPR2017-01800
`U.S. Patent 8,243,723
`As to the “connectivity status,” claim 1 requires monitoring the
`connectivity status of nodes, recording the connectivity status for
`each of the nodes, and transmitting to the client a list of the
`recorded connectivity status of certain nodes. With regards to
`the “nodes,” claim 1 requires associating a sub-set of the nodes
`with a client. This limitation is important because the
`transmission of the list of recorded connectivity status involves
`only the recorded connectivity status for the sub-set of the nodes
`associated with the client. That is, the transmission to the client
`involves a list of recorded connectivity status for the sub-set of
`nodes that has been associated with that client. IPR2017-01365,
`Paper 8 at 8.
`IPR2017-01365, Paper 8 at 8.
`
`A.
`
`Petitioner fails to prove obviousness of “associating a sub-set of
`the nodes with a client”
`The Board stated in its original Institution Decision that “the Petition fails to
`demonstrate that Zydney discloses ‘associating a sub-set of the nodes with a client.’”
`Paper 8 at 19. The Board explained its finding, in part, as follows:
`
`Zydney’s disclosure of [a] “unique set of lists” refers to the lists
`of addresses that the central server maintains for use by the
`software agents as disclosed in Figure 8. . . . A particular software
`agent may be included in one or more of these lists, depending
`on its permissions, but Petitioner does not explain sufficiently
`how being listed or having access to a list of permissions in any
`way associates a particular device/software agent (client) with a
`sub-set of software agents.
`Id. (internal citation omitted).7 Patent Owner notes the Board’s findings here are
`consistent with those articulated by the Board in IPR2017-01365 in rejecting
`virtually identical Zydney-based arguments. IPR2017-01365, Paper 8 at 8−11.
`
`7 As a procedural matter, Uniloc merely quotes herein the findings of the Board
`concerning the insufficiency of Petitioner’s assertion of Zydney against the
`“associating” step. Uniloc expressly reserves the right to oppose, as noncompliant
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`IPR2017-01800
`U.S. Patent 8,243,723
`
`In its original Institution Decision in this matter, the Board further stated that
`“Petitioner proffers that Griffin alone teaches ‘associating a sub-set of the nodes with
`a client.’” Id. at 20 (citing Pet. 33−36). Petitioner fails to prove obviousness based
`on Griffin, however, at least because (1) the Petition bases its arguments on
`erroneous claim constructions (see §VI, supra); (2) the Petition impermissibly
`interprets Griffin as attributing to a device certain disclosure expressly attributed,
`instead, to a user (i.e., a person); and (3) Petitioner admits through its declarant that
`the cited disclosure is not enabling.
`What Petitioner characterizes as two alternative theories based on Griffin is in
`fact one theory based on related descriptions of two figures (6 and 7). Citing first to
`Figure 7 of Griffin, copied and annotated below for emphasis, Petitioner’s alleged
`association is a one-to-one mapping—within a record (i.e., a row) of the table in
`Figure 7—which points to one person identified by number in column 701 (“ID”) as
`the alleged “sub-set of the nodes” and one person identified by number in column
`706 (“Subscriber ID”) as the alleged “client.” Pet. 32 (citing EX1002 ¶124).
`
`
`with Rule 42.23(b), and to seek leave to move to strike, any attempt by Petitioner to
`impermissibly supplement its assertion of Zydney against the “associating” step with
`new argument or evidence.
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`IPR2017-01800
`U.S. Patent 8,243,723
`
`alleged “sub-set of the nodes”
`associated with the “client”
`
`alleged “client”
`(in the singular)
`
`
`
`EX1005, Figure 7 (annotated).
`Focusing on the first row of the table illustrated in Figure 7 of Griffin, for
`example, under Petitioner’s theory, that record purportedly associates the single user
`who is identified by her user’s identifier “123” (the alleged “sub-set of nodes”) with
`a subscribing user identified in the same row in column 706, such as the one
`identified by his subscriber ID “120” (i.e., the alleged “client”). Id.
`According to Petitioner’s declarant, Griffin discloses such a one-to-one
`association of the alleged “sub-set of nodes” with the alleged “client” ostensibly
`“because each subscribing terminal 100 is subscribed to the presence information of
`one or more other users/terminals within the network, which causes the identifier of
`the subscriber to be added to the presence data record [at column 706] of the one or
`more other users/terminals.” EX1002 ¶124.8
`
`
`8 The Petition does not present (and has therefore waived) the argument that the
`subscribing users identified in a particular row of column 706 somehow map onto
`the claimed “sub-set of the nodes.” Perhaps Petitioner recognized that such a
`mapping would further run afoul of the “transmitting” step, which among other
`limitations requires “a list of the recorded connectivity status for each of the nodes
`in the sub-set corresponding to the client.”
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`IPR2017-01800
`U.S. Patent 8,243,723
`
`Both the Petition and its attached declaration offer the repeated and
`unexplained quantification of “one or more” when referring to the singular person
`corresponding to the identifier 701 and the presence information 702 of any given
`record (i.e., row) of the table shown in Figure 7 of Griffin. That characterization is
`misleading to say the least.
`Griffin discloses that each row in the table illustrated in Figure 7 “comprises
`the user’s identifier 701 . . . and a plurality of other user identifiers 706 that subscribe
`to the presence information of the user [in the singular] corresponding to that
`record.” EX1005, 5:17–22. Thus, by inten