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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioners
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner
`
`Case IPR2017-01801
`Patent 8,995,433 B2
`
`
`
`PATENT OWNER’S REQUEST FOR
`REHEARING UNDER 37 C.F.R. § 42.71(D)
`
`
`
`Pursuant to 37 CFR § 42.71(d), Patent Owner respectfully requests a
`rehearing and reconsideration of the Final Written Decision entered January 31,
`2019 (Paper 31, hereinafter “Decision”). Patent Owner’s request for rehearing
`is based upon the following considerations.
`APPLICABLE STANDARDS
`I.
`“A party dissatisfied with a decision may file a request for rehearing,
`without prior authorization from the Board.” 37 C.F.R. §42.71(d). “The request
`must specifically
`identify all matters
`the party believes
`the Board
`misapprehended or overlooked, and the place where each matter was previously
`addressed in a motion, an opposition, or a reply.” Id. The Board reviews a
`decision for an abuse of discretion. 37 C.F.R. §42.71(c).
`II. ARGUMENT
`Patent Owner respectfully submits that the Final Written Decision should
`be reconsidered at least because it misapplies the Board’s construction of
`“instant voice message” to mean “data content including a representation of an
`audio message.” See, e.g., FWD (Paper 13) n.3 (“We previously construed
`“instant voice message” as data content including a representation of an audio
`message. Facebook, Inc. v. Uniloc 2017 LLC, Case IPR2017-01428, slip op. at
`12−18 (PTAB November 30, 2018) (Paper 40).”). In related matters, the Board
`clarified that “data content” in this context refers to “user’s speech . . . in some
`digitized form.” See, e.g., IPR2017-1797, FWD (Paper 32) at 14−15.
`Here, the term “attaches” appears in independent claim 9 as follows:
`
`
`
`
`
`
`9. A system comprising:
`an instant voice messaging application comprising:
`2
`
`
`
`a client platform system for generating an instant voice
`
`message;
`
`a messaging system for transmitting the instant voice
`message over a packet-switched network; and
`
`wherein the instant voice messaging application attaches
`one or more files to the instant voice message.
`
`Substituting in the Board’s construction for “instant voice message” into
`the remainder of this recitation yields, “wherein the instant voice messaging
`application attaches one or more files to the [data content including a
`representation of an audio message].” The Petitioner did not meet its burden to
`prove obviousness under such a construction. The Petitioner could not because
`it is undisputed that neither Griffin nor Zydney expressly or inherently discloses
`attaching one or more files to data content (i.e., to what the Board characterized
`as referring to user’s speech in some digitized form).
`To be clear, and contrary to what the Board suggests in its Final Written
`Decision, Patent Owner has not advanced a narrowing construction by arguing
`that the claim language explicitly directed to attaching one claim term (“one or
`more files”) to another claim term (“the instant voice message”) means what it
`says. It was Petitioner’s burden, not Patent Owner, to advance and defend a
`construction (in the Petition itself) that departs from explicit claim language that
`unambiguously identifies the specific elements that must be attached.
`The Board has repeatedly observed that Petitioner concedes Griffin “does
`not describe attaching one or more files to the audio file in the speech chat
`message.” IPR2017-01800, FWD (Paper 34) at 28; see also IPR2017-01797,
`FWD (Paper 32) at 27 (citing Pet. 65−66). Here, Petitioner’s declarant, Dr. Hass
`
`
`
`3
`
`
`
`likewise expressly concedes that “Griffin does not explicitly describe attaching
`one or more files to a speech chat message.” Haas Decl. ¶ 191.
`Notwithstanding these concessions, the Final Written Decision concludes
`Griffin alone renders obvious “attaches one or more files to the instant voice
`message” ostensibly because Griffin discloses attaching files only to text
`messages and it would have been obvious to modify Griffin to implement the
`same attaching in the entirely different context of speech chat messages. FWD
`(Paper 31) at 68 (citing Griffin at 6:38−44 and 12:63−67). The cited portions of
`Griffin, however, do not disclose attaching one or more files to data content, as
`characterized by the Board in its construction of “instant voice message.”
`Neither the Petition nor its attached declaration argues otherwise. Petitioner
`could not because, in the embodiment cited by the Board, Griffin expressly
`distinguishes message 400 from the message content 406; and it is undisputed
`that Griffin does not expressly or inherently disclose that the attachments 407
`are attached to the message content 406 itself. Griffin at 6:38−44. Accordingly,
`the proposed modification (which relies on mere conclusory speculation
`extraneous to the express disclosure in Griffin) would still fail to map unto what
`the claim language explicitly requires.
`The Petition attempts to cure the conceded deficiency of Griffin by
`alleging it would have been obvious to modify Griffin based on the alleged
`teaching in Zydney of attaching one or more files to a voice container that only
`contains a distinct and separately-generated audio file. FWD (Paper 31) at 27
`(citing Pet. 65−66); Haas Decl. ¶¶ 191−192. Setting aside the insufficiency of
`record evidence supporting such a modification, the proposed modification does
`4
`
`
`
`
`not render obvious the claimed “instant voice message” as construed by the
`Board (i.e., “data content including a representation of an audio message,”
`which the Board further clarified as referring to user’s speech in some digitized
`form). Zydney cannot cure the conceded deficiency of Griffin because it is
`undisputed that Zydney, at best, only attaches to a voice container, which
`Zydney expressly distinguishes as distinct and separately generated from
`anything resembling data content in the form of digitized speech.
`The Board also erred in suggesting these deficiencies of both Griffin and
`Zydney are somehow cured by applying a new construction (not advanced in
`the Petition) that substitutes the term “attaches” with, instead, the word
`“associated.” Neither the Petition nor Patent Owner’s Response identified the
`term “attaches” as one that requires construction. Moreover, Patent Owner was
`not provided due process ability to respond to the Board’s substitution of the
`word “attaches” with “associated” and point out why such a construction is
`incorrect. See In re Magnum Oil Tools Int'l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir.
`2016) (“. . . Board must base its decision on arguments that were advanced by a
`party, and to which the opposing party was given a chance to respond.”). The
`Board appears to have overlooked, for example, that the inventor’s use of the
`words “associating” and “attached” in the same claim in a related patent (e.g.,
`claim 2 of the ’273 patent, which depends from and requires all limitations of
`claim 1) unambiguously confirms that the inventor recognized these terms have
`distinct and separate meanings. See, e.g., Ethicon Endo-Surgery, Inc. v. U.S.
`Surgical Corp., 93 F.3d 1572, 1579 (Fed. Cir. 1996) (reversing lower court’s
`ruling that a “pusher assembly” and a “pusher bar” have the same meaning).
`5
`
`
`
`
`Even if Patent Owner had been provided due process ability to respond to
`this new claim construction and the record nevertheless supported interpreting
`“attaches” to mean “associated,” which is not the case here, the Petition’s
`reliance on attaching files to Zydney’s voice container that allegedly only
`contains the distinct and separately-generated digitized speech content is still
`distinguishable from “[associating] one or more files to the [data content
`including a representation of an audio message]”—i.e., to the digitized speech
`itself.
`III. CONCLUSION
`In view of the foregoing, Patent Owner respectfully requests that the
`Board grant a rehearing and reconsider its Final Written Decision.
`
`
`Date: March 4, 2019
`
`
`
`
`
`
`
`Brett A. Mangrum
`brett@etheridgelaw.com
`Reg. No. 64,783
`
`Ryan Loveless
`ryan@etheridgelaw.com
`Reg. No. 51,970
`
`Counsel for Patent Owner
`
`6
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that the foregoing was served electronically on
`
`counsel of record for Petitioner
`
`Date: March 4, 2019
`
`
`
`
`/s/ Brett A. Mangrum/
`
`Brett A. Mangrum
`brett@etheridgelaw.com
`Reg. No. 64,783
`
`Counsel for Patent Owner
`
`7
`
`
`
`
`
`
`
`
`
`
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