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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`IPR2017-1800
`PATENT 8,243,723
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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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`
`IPR2017-1800
`PATENT 8,243,723
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. §42.107(a)
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`i
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`Table of Contents
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`C.
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`V.
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`INTRODUCTION
`I.
`II. RELATED MATTERS
`III. THE PETITION FOR IPR2017-1800 SHOULD BE DENIED AS
`REDUNDANT
`A.
`Petitioner’s Unjust and Unjustified Horizontal Redundancy
`B.
`Petitioner Uses Impermissible Vertical Redundancy
`C.
`Zydney is Materially the Same as the Art Cited During
`Prosecution of the ’723 Patent and Therefore is Demonstrably
`Duplicative.
`The Board Should Exercise its Discretion to Deny the Petition.
`D.
`IV. THE ’723 PATENT DESCRIBES INSTANT VOICE
`MESSAGING OVER A PACKET-SWITCHED NETWORK
`A.
`Effective Filing Date of the ’723 Patent
`B.
`The ’723 Patent Describes and Claims Instant Voice Messaging
`over a Packet-Switched Network.
`Claims 1–3 of the ’723 Patent Recite a Method for Instant
`Voice Messaging over a Packet-Switched Network.
`PETITIONER’S PROPOSED CONSTRUCTIONS FOR
`“NODE” AND “SIGNAL” ARE UNSUPPORTED AND MUST
`BE REJECTED
`A. Node Carries Its Plain and Ordinary Meaning.
`B.
`Signal Carries Its Plain and Ordinary Meaning.
`VI. THERE IS NO REASONABLE LIKELIHOOD THAT ANY OF
`CLAIMS 1-3 WOULD HAVE BEEN RENDERED OBVIOUS
`OVER GRIFFIN AND ZYDNEY
`A. No Motivation to Combine Zydney with Griffin Because
`Griffin Lacks Elements and any Combination Would Be
`Inoperable.
`1.
`Petitioner Does Not Establish a Prima Facie Case that
`Griffin Discloses an “Instant Voice Message.”
`Griffin Does Not Disclose an “Instant Voice Message.”
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`2.
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`ii
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`1
`1
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`4
`7
`9
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`14
`18
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`20
`20
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`20
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`23
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`24
`27
`31
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`32
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`33
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`35
`39
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`Petitioner’s Suggestion to Combine Griffin and Zydney
`Is Improper, Unworkable, and Is Incompatible with
`Zydney.
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`B.
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`Zydney plus Griffin Does Not Disclose “Associating a Sub-
`Set” of Nodes with a Client.
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`Zydney Does Not Disclose the Nodes of Claims 1—3.
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`Griffin Does Not Disclose the Nodes of Claims 1—3.
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`No Prima Facie Obviousness for “Associating a Sub-Set
`of the Nodes with a Client” and “Transmitting a Signal to
`a Client Including a List of the Recorded Connectivity
`Status for Each of the Nodes in the Sub-Set
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`Corresponding to the Client.”
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`C.
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`Neither Griffin nor Zydney Discloses Transmitting a Signal to
`the Client.
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`VII. THE SUPREME COURT IS CURRENTLY REVIEWING THE
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`CONSTITUTIONALITY OF INTER PARTES REVIEW
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`VIII. CONCLUSION
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`41
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`48
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`48
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`49
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`50
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`52
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`54
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`55
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`List of Exhibits
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`2001
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`Declaration of William C. Easttom II
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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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`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: l6-cv-642
`
`Excerpts fi'om the American Heritage Dictionary ofthe English
`Lan (a; e Third Edition, 1992
`Excerpts from the Merriam Webster’s Collegiate Dictionary (10th
`Ed.
`1997
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`File History: Notice of Allowance for Application Leading to the
`’723 Patent.
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`US. Pat. App. Pub. No 2004/0128356 (“Bernstein”)
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`iii
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`I.
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`INTRODUCTION
`Uniloc Luxembourg S.A. (the “Patent Owner”) submits this Owner’s
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`Preliminary Response to Petition IPR2017-1800 for Inter Partes Review (“Pet. at _”
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`or “Petition”) of United States Patent No. 8,243,723 B2, System and Method for
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`Instant VoIP Messaging, (“the ’723 Patent” or “EX1001”) filed by Samsung
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`Electronics America, Inc. (“Petitioner”).
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`Petitioner argues that Claims 1–3 would have been rendered obvious to a
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`person having ordinary skill in the art (a “PHOSITA”) in 2003 in view of a user
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`interface patent to Griffin, EX1005, and an application for patent to Zydney,
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`EX1006.
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`The Board should deny IPR2017-1800 in its entirety. First, the petition,
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`references, and grounds stated, are duplicative and redundant over IPR2017-1365.
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`Second, Petitioner fails to satisfy the All Elements Rule. Instead, Petitioner
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`impermissibly attempts to fill in missing limitations, at least in part, by offering
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`claim interpretations that are expressly proscribed by the unambiguous claim
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`language. The user interface patent to Griffin does not describe instant voice
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`messaging or packet-switched networks. In addition, the references cannot and
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`should not be combined as the Petitioner suggests.
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`II. RELATED MATTERS
`The ’723 Patent is in a family of patents including United States Patent Nos.
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`8,199,747 (the ʼ747 Patent); 7,535,890 (the ʼ890 Patent); 8,724,622 (the ʼ622
`1
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`
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`Patent); and 8,995,433 (the ‘433 Patent).1 The diagram below how this family of
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`patents is interrelated.
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`1 All five related patents derive from United States Patent Application
`No. 10/740,030 and are referred to collectively as members of the ’723 Patent’s
`“family.”
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`2
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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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`
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`1m “—Petitioner
`IPR201 7-0220
`14-Nov- l 6
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`IPR2017—0221
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`l4—Nov-l6
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`IPR201 7-0222
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`14-Nov- 1 6
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`IPR2017-0223
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`14-Nov- 1 6
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`IPR2017—0224
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`l4—Nov—l6
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`IPR201 7-0225
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`14-Nov- l 6
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`Apple
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`Apple
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`Apple
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`Apple
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`Apple
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`Apple
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`Facebook / WhatsApp
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`IPR2017—1257
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`7-Apr—l7
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`Facebook / WhatsApp
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`IPR2017-1365
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`3-May-17
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`Facebook / WhatsApp
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`IPR2017-1427
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`Facebook / WhatsApp
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`IPR2017—1428
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`1 1-May-17
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`1 1—May—l7
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`’433
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`Facebook / WhatsApp
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`Facebook / WhatsApp
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`Facebook / WhatsApp
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`Snap
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`Snap
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`Facebook / WhatsApp
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`Facebook / WhatsApp
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`Facebook / WhatsApp
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`Samsung Elec
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`Samsung Elec
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`Samsung Elec
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`Samsung Elec
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`Samsung Elec
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`20—Jul- 1 7
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`IPR2017-l798
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`20-Jul- l 7
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`IPR2017-l799
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`20-Jul- 1 7
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`IPR2017-1800
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`20-Jul- 1 7
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`IPR2017-1801
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`20-Jul- 1 7
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`[PR2017-l802
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`20—Jul- 1 7
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`’622
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`’747
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`’723
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`’433
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`’890
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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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`Huawei / LG Electronics
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`LG Electronics
`IPR2017-2087
`11—Sep—17
`’433
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`LG Electronics / Huawei
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`1 l-Sep-17
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`Google/Huawei/Motorola
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`Google/Huawei/Motorola
`IPR20 l 7-2083
`1 l—Sep— 1 7
`’ 890
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`Google/Huawei/Motorola
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`1 l-Sep- 1 7
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`
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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 fn. 7, 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 ’723 Patent. Pet. at 1—3.
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`III. THE PETITION FOR IPR2017—1800 SHOULD BE DENIED AS
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`REDUNDANT.
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`Petitioner concurrently filed six IPR Petitions, IPRs 2017-1797 through 1802,
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`against the ’723 Patent family. Those Petitions could be the poster children for the
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`abusive filing of redundant
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`inter parties review petitions.
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`In IPR2017-1800,
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`Petitioner redundantly brings against Claims 1—3 of the ’723 Patent 3 reference,
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`Zydney, on grounds that are already before the Board in another Petition.
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`4
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`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.
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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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`least 18 combinations of 13 references: Abburi, Dahod, Daniell, Deshpande,
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`Hogan, Holtzberg, Lerner, Logan, Malik, SMSS, Stubbs, Väänänen, Vuori.2
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`2 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
`5
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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 IPR2017-1800 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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`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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`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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`6
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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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`A.
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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 lawyer arguments do not explain why one reference more closely
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`satisfies any claim limitation at issue in some respects than does another reference,
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`and vice versa. These references are not identical, each reference has to be better in
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`some respect otherwise the references are collectively horizontally redundant. The
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`instant IPR2017-1800 Petition should be denied.
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`7
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`
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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).”);3 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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`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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`3 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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`8
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`B.
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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 ’723 Patent is the subject of IPR2017-1365, the
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`instant IPR2017-1635, and IPR2017-1800. Although multiple IPRs cite Zydney,
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`nowhere to be found is the requisite bi-directional explanation of why reliance on
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`Zydney in part may be stronger in some instances and why reliance on Zydney in the
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`whole may be stronger in other instances.4
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`Petitioner grossly violates the long-standing prohibition against vertical
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`redundancy, and recycles Zydney (and some additional secondary references)
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`through the simple expedient, on this go-round, of adding a user interface patent,
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`Griffin, to the mix. Petitioner never explains how simply adding Griffin makes it fair
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`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
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`teachings. It is clear that Petitioners are gaming the system. Petitioners appear to be
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`4 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
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`
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`playing the odds: If Petitioners keep filing IPR petitions against the ’723 Patent
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`family, Petitioners will eventually overwhelm the Board and Patent Owner.5
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`Petitioner’s ruse is transparent, futile, and unfair. As explained below, user
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`interface patent Griffin is ill-suited to Petitioner’s hopes because Griffin adds
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`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. EX2001, ¶¶ 22–23; see Canon Kabushiki Kaisha at 11
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`(citation omitted) (“The filing of sequential attacks against the same claims, with the
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`opportunity to morph positions along the way, imposes inequities on Patent Owner”
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`and on the Board).
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`With regards to the ʼ723 Patent in particular, on May 3, 2017, Petitioner
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`Facebook, Inc. and Whatsapp, Inc. (collectively “Facebook”) filed IRP2017-1365
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`arguing that Claims 1–3 of the ’723 Patent are obvious over Zydney plus Appelman6.
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`Facebook relied on Appelman exclusively to show that supposedly connectivity
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`5 “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.
`6 United States Patent No. 6,750,881 to Barry Appelman.
`10
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`
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`status information can be in the form of a list. 1365 Pet., p. 38 (“This Petition cites
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`Appelman solely as further support for the unremarkable proposition that the
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`connectivity status information could be in the form of a ‘list.’”)
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`Likewise, here Petitioner proposes that Griffin is needed to show connectivity
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`status. IRP2017-1800 (“Griffin’s system/process based on the teachings of Zydney
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`so that presence manager 302 monitors current status 702, where status 702 includes
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`connectivity status information indicating whether terminal 100 is ‘available’ or
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`‘unavailable’ based on whether terminal 100 is currently connected to server
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`complex 204.”). In other words, Griffin is used with Zydney in IPR2017-1800 in a
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`similar manner as Appelman was used with Zydney in IPR2017-1365. Petitioner
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`offers no explanation for why Griffin could not have been found or brought earlier.7
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`These Petitions, references, and grounds are redundant. Yet, Petitioner does not
`
`
`7 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 (EX2002).
`Since such a filing, Petitioner, Facebook, and Apple have coordinated in IPR filings
`against the ’723 Patent – including the referenced IPR2017-1365 (filed by
`Facebook) and IPR2017-00222 (filed by Apple). These filings have been based on
`references (including Griffin, Zydney, and Appleman) known before the original IPR
`was filed.
`
`
`
`11
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`
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`provide any reasoned explanation to justify needlessly burdening the Board and the
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`Patent Owner with this redundant Petition.8
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`To the contrary, Petitioner admits that “Zydney is at issue in other IPRs
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`challenging the ’723 Patent.” Pet. at 6. But rather than justify the imposition of this
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`unnecessary burden on the Board, Petitioner relies on the excuse that “Ground 1
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`relies on Griffin as a primary reference, which is not at issue in the other IPRs. Thus,
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`the Board should consider and adopt Ground 1 because it is different than the
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`grounds in the other IPRs.” Pet. at 6.
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`If all that is needed to file another IPR is that each IPR Petition is “different”
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`then there will never be an end to Petitioner’s abuse of the system and harassment
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`of Patent Owner. Thus, IPR2017-1800 should be denied. It is clear that Petitioner is
`
`gaming the system. Petitioner appears to be playing the odds: If Petitioners (Apple,
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`Facebook, Samsung, and others) keep filing IPR Petitions against the ’723 Patent
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`family, Petitioners will eventually overwhelm the Board and Patent Owner. “The
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`absence of any restrictions on follow-on petitions would allow petitioners the
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`opportunity to strategically stage their prior art and arguments in multiple petitions,
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`using our decisions as a roadmap, until a ground is found that results in the grant of
`
`
`8 Petitioner uses Griffin only as a wedge to pry open the door for an additional IPR
`Petition. The substance of Petitioner’s arguments relies on Zydney (again).
`12
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`
`
`
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`review.” General Plastic Industrial Co. Ltd v. Canon Kabushiki Kaisha, IPR2016-
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`1357, Decision Denying Petitioner’s Request for Rehearing, Paper No. 19 at 17.9
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`For at least the reasons presented above. IPR2017-1800 should be denied as
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`redundant. See Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co.,
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`CBM2012-00003, Paper 7 Order (P.T.A.B. October 25, 2012) at 2 (“A petitioner
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`has the burden of proof to establish that it is entitled to the requested relief. 37 C.F.R.
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`§42.20(c).”).10 “Multiple grounds, which are presented in a redundant manner by a
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`petitioner who makes no meaningful distinction between them, are contrary to the
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`regulatory and statutory mandates, and therefore are not all entitled to
`
`consideration.” See also 37 C.F.R. §42.1(b) which mandates a “just, speedy, and
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`inexpensive resolution of every proceeding.”
`
`
`9 See also LG Elecs. Inc. v. Core Wireless Licensing S.A.R.L., Case IPR2016-00986
`(PTAB Aug. 22, 2016) (Paper 12) (“The Board’s resources would be more fairly
`expended on first petitions rather than on a follow-on petition like the Petition in this
`case.”); Butamax Advanced Biofuels LLC v. Gevo, Case IPR2014-00581, slip op. at
`12–13 (PTAB Oct. 14, 2014) (Paper 8) (“[T]he four obviousness grounds are
`‘second bites at the apple,’”).
`10 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, Liberty
`Mutual, Paper No. 7 at 2, the Petition should be denied.
`13
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`
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`
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`The Board should disregard redundant grounds. See Berk-Tek LLC v. Belden
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`Techs. Inc., No. IPR2013-00057, Paper No. 21, Decision on Request for Rehearing
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`at 4-5 (P.T.A.B. May 14, 2013) (When “petitioner makes no meaningful distinction
`
`between certain grounds, the Board may exercise discretion by acting on one or more
`
`grounds and regard the others as redundant” because “allowing multiple grounds
`
`without meaningful distinction by the petitioner is contrary to the legislative intent”);
`
`Oracle Corp. v. Clouding IP, LLC, No. IPR2013-00075, Paper No. 8, Decision
`
`Institution of Inter Partes Review at 13-14 (P.T.A.B. May 3, 2013) (denying various
`
`grounds of unpatentability because they were redundant); AmkorTech., Inc. v.
`
`Tessera, Inc., No. IPR2013-00242, Paper No. 37, Decision Institution of Inter Partes
`
`Review at 32-33 (P.T.A.B. Oct. 11, 2013) (ditto). IPR2017-1800 should be denied
`
`as redundant.
`
`C.
`
`Zydney is Materially the Same as the Art Cited During
`Prosecution of the ’723 Patent and Therefore is Demonstrably
`Duplicative.
`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
`
`
`
`14
`
`
`
`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.
`
`All of the assertions in the Petition against the claims of the ’723 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 ’723 Patent) to allegedly invalidate each
`
`challenged claim of the ’723 Patent. Notwithstanding Petitioner’s purpose to
`
`introduce Zydney for the missing teachings needed to support its grounds, Zydney is
`
`demonstrably duplicative for those purposes.
`
`On page 20 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 (EX2006; “Bernstein”), listed on the face of the
`
`
`
`15
`
`
`
`’723 Patent11 similarly describes a terminal directly connected to a network.
`
`EX2006, ¶ 0013, Fig. 1.
`
`On page 62 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” the availability of a 100 for receiving messages. However,
`
`Bernstein, similarly describes indicating whether the terminal is available or
`
`unavailable. Id. at ¶¶ 0007, 0016, 0017, 0122, and 0132.
`
`On page 51 of the Petition, Petitioner states that a PHOSITA would have been
`
`motivated to configure Griffin’s system/process such that server complex 204
`
`temporarily stores a speech chat message when a recipient terminal 100 is
`
`unavailable (e.g., status 702 indicates terminal 100 is not connected to server
`
`complex 204). However, Bernstein similarly describes storing instant messages to a
`
`server (e.g., for later retrieval by a user becoming available) in addition to describing
`
`
`11 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 ’723 Patent during
`prosecution of the application that led to the ’723 Patent.
`16
`
`
`
`
`
`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 ’723 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)
`
`(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
`
`
`
`17
`
`
`
`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.
`
`D. The Board Should Exercise its Discretion to 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
`
`
`
`18
`
`
`
`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;
`(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
`19
`
`
`
`
`
`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 III, 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 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.
`
`IV. THE ’723 PATENT DESCRIBES INSTANT VOICE MESSAGING
`OVER A PACKET-SWITCHED NETWORK.
`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.
`
`B.
`
`The ’723 Patent Describes and Claims Instant Voice Messaging
`20
`
`
`
`
`
`over a Packet-Switched Network.
`’723 Patent
`describes
`how
`
`The
`
`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 at least in that the latter routes packetized digital
`
`information, such as “Voice over Internet Protocol (i.e., ‘VoIP’), also know
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