Trials@uspto.gov
`571-272-7822
`
`
`Paper 33
`Entered: January 17, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS AMERICA. INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01801
`Patent 8,995,433 B2
`
`____________
`
`
`
`Before, JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`DECISION
`ON PATENT OWNER’S REQUEST FOR REHEARING
`37 C.F.R. § 42.71(d)
`
`
`571-272-7822
`
`
`Paper 33
`Entered: January 17, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS AMERICA. INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01801
`Patent 8,995,433 B2
`
`____________
`
`
`
`Before, JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`DECISION
`ON PATENT OWNER’S REQUEST FOR REHEARING
`37 C.F.R. § 42.71(d)
`
`
`
`IPR2017-01801
`Patent 8,995,433 B2
`
`
`I.
`
`INTRODUCTION
`
`On January 31, 2019, the Board issued a Final Written Decision in
`
`this proceeding. Paper 31 (“Final Dec.”). In that Final Written Decision, we
`
`determined that Petitioner had shown by a preponderance of the evidence
`
`that claims 15, 712, 1417, 25, and 26 of the ’433 patent are
`
`unpatentable. Id. at 90. On March 4, 2019, Patent Owner filed a Request
`
`for Rehearing. Paper 32 (Req. Reh’g). Patent Owner argues one point.
`
`Patent Owner takes issue with our findings concerning the recited “instant
`
`voice message,” and more particularly with respect to the “attaches”
`
`limitation that is recited in claim 9.
`
`According to 37 C.F.R. § 42.71(d), “[t]he burden of showing a
`
`decision should be modified lies with the party challenging the decision,”
`
`and the “request must specifically identify all matters the party believes the
`
`Board misapprehended or overlooked.” The burden here, therefore, lies with
`
`Patent Owner to show we misapprehended or overlooked the matters it
`
`requests that we review. We are not persuaded that Patent Owner has shown
`
`that we misapprehended or overlooked the matters raised in the Request for
`
`Rehearing. We address each of Patent Owner’s arguments in turn.
`
`II. ANALYSIS
`
`Claim 9 recites “wherein the instant voice messaging application
`
`attaches one or more files to the instant voice message.” We determined that
`
`the term “instant voice message” refers to a voice message that is
`
`transmitted in real time and received accordingly, when the recipient is
`
`available. Final Dec. 12. Also, we construed the term “attaches . . . to the
`
`instant voice message” to mean indicating that another file (or files) is
`
`associated with the “instant voice message.” Id. at 16.
`
`2
`
`
`
`IPR2017-01801
`Patent 8,995,433 B2
`
`
`For claim 9, we found that although Griffin did not explicitly describe
`
`attaching a file to a speech chat message, Griffin’s explanation of Figure 4
`
`teaches or suggests to a person of ordinary skill in the art that a speech chat
`
`message would also have the attachment capability. Id. at 68. We agreed
`
`with Petitioner’s contention and evidence that Griffin expressly disclosed
`
`attaching a file to a text message. Id. at 6768. Therefore, our statement
`
`that Griffin did not explicitly describe the attachment was intended simply to
`
`highlight that Griffin expressly disclosed attachment to a text message but
`
`was not as explicit in disclosing the same with regard to the speech chat
`
`message. Patent Owner characterizes this as a “concession” that Griffin
`
`does not teach the limitation. Req. Reh’g 34. This is not a fair
`
`characterization of the Final Written Decision, which states that despite the
`
`lack of explicit wording, a person of ordinary skill in the art, would
`
`understand, given Griffin’s other disclosures, that Griffin teaches the
`
`limitation. This understanding is evidenced by the descriptions of Figure 4
`
`and Dr. Haas’s testimony in this regard. Final Dec. 6768 (citing Ex. 1005,
`
`Fig. 4, items 401, 407, 6:3844, 12:6367; Haas Decl. ¶¶ 191).
`
`Patent Owner argues that Griffin does not disclose attaching one or
`
`more files to “data content.” Req. Reh’g 4. According to Patent Owner,
`
`Griffin distinguishes between message 400 and message content 406, and
`
`Griffin does not teach attachments 407 are attached to the message content
`
`406 itself. Id. We are not persuaded by Patent Owner’s argument. First, we
`
`could not have misapprehended or overlooked Patent Owner’s argument
`
`regarding Griffin’s “attachment” because Patent Owner did not make any
`
`arguments in this proceeding concerning Griffin’s attachment 407. We
`
`noted in our Final Written Decision that Patent Owner did not address any of
`
`3
`
`
`
`IPR2017-01801
`Patent 8,995,433 B2
`
`the disclosures that Petitioner relied on to argue that Griffin teaches the
`
`attachment of a file to a speech chat message. See Final Dec. 69 (addressing
`
`that Patent Owner’s arguments concerning this limitation focused on the
`
`explicit disclosure of attaching to a text message, not a speech chat message,
`
`and that Patent Owner’s further arguments did not address the further
`
`evidence and arguments Petitioner proffered that Griffin teaches the
`
`“attaches” limitation).
`
`Second, we do not agree with Patent Owner’s characterization of
`
`Griffin. According to Patent Owner, Griffin does not teach that attachment
`
`407 is “attached” to the “message content.” Griffin, however, explains that
`
`the payload of the message “may” contain attachments, such as icons and
`
`ring-tones, implying that the attachments need not be included in the
`
`outbound chat message itself. Ex. 1005, 6:5052. What is important here is
`
`that Griffin associates the attachment with the speech chat message that is
`
`embodied by message 400. When Griffin includes the attachment in the
`
`payload of the message, such an attachment is associated not only with the
`
`message 400 (by virtue of the attachment being part of message 400), but
`
`also is associated also with the audio file, in the data content of the
`
`message.1 We have noted Mr. Easttom’s testimony that in a conventional
`
`method, as long the system is aware that the “two are meant to be together,”
`
`a document is “attached” to an audio file. Ex. 1040, 139:1019. And we
`
`
`1 We noted in our Final Written Decision that the parties focused their
`argument on the scope of “attaching” rather than the structure or content of
`the “instant voice message,” which is an issue in other related proceedings,
`but not germane to the arguments the parties presented for the’723 patent.
`Final Dec. 15 n.3.
`
`4
`
`
`
`IPR2017-01801
`Patent 8,995,433 B2
`
`further credited Dr. Haas’s testimony that the speech chat message would
`
`include the fields necessary to indicate that files are attached, much like
`
`Griffin discloses for the text message. Final Dec. 6869 (citing Haas Decl.
`
`¶ 191). Therefore, Patent Owner’s arguments are not persuasive and do not
`
`show error in our determination that Griffin alone teaches the “attaches”
`
`limitation. Arguments by Patent Owner regarding Zydney’s voice container
`
`are not persuasive, because we did not rely on the voice container of Zydney
`
`for this limitation.
`
`Patent Owner further argues that the Board erred in construing the
`
`“attaches” limitation. Req. Reh’g. 56. In particular, Patent Owner
`
`contends that we construed the term when neither party expressly set forth a
`
`construction for the term. Id. Patent Owner also complains that it “was not
`
`provided due process ability to respond to the Board’s construction and point
`
`out why it is incorrect.” Id. at 56.
`
`We are not persuaded by Patent Owner’s arguments that we
`
`misapprehended the parties’ arguments regarding the scope of the term or
`
`that it was not proper for us to construe the term. We expressly construed
`
`the term in this proceeding consistent with the claim language requiring the
`
`attachment to an audio file and the Specification’s description of
`
`embodiments in which an instant voice message is in the form of audio file.
`
`Final Dec. 1316. We considered, and rejected as incorrect, Patent Owner’s
`
`argument that attaching a file to an “audio file,” rather than to an instant
`
`voice message, required more than an association. Id. at 1516. Our
`
`analysis thus highlighted the challenge presented by this and the related
`
`cases in which the claims sometimes required an attachment of a file to the
`
`instant voice message and sometimes required an attachment of a file to the
`
`5
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`
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`IPR2017-01801
`Patent 8,995,433 B2
`
`audio file. Based on the foregoing, we stand by our decision to construe
`
`“attachment” based on the parties’ arguments during trial and at oral
`
`argument. Patent Owner has been given ample opportunity to address the
`
`term “instant voice message” and the related “attachment” limitation as this
`
`is an issue that spans multiple related matters and was extensively discussed
`
`at oral argument. See Tr. 75:2087:3.
`
`Patent Owner now raises an argument that “associating” and
`
`“attaching” have “distinct and separate meanings” because a claim in a
`
`related patent recites these terms individually. Req. Reh’g 5. But this is not
`
`persuasive because Patent Owner does not provide any support for the
`
`contention that a person of ordinary skill in the art understands “attaching”
`
`as being narrower than or different from associating the two recited files.
`
`Further, the Specification does not show any embodiment of how
`
`“associating” is performed and how the “associating” is technically any
`
`different from the description of linking a file to the instant voice message.
`
`In conclusion, we are not persuaded that Patent Owner has shown that
`
`we misapprehended or overlooked the matters raised on rehearing and we
`
`see no reason to disturb our Final Written Decision in this proceeding.
`
`III. ORDER
`
`Patent Owner’s Request for Rehearing is denied.
`
`
`
`6
`
`
`
`IPR2017-01801
`Patent 8,995,433 B2
`
`For PETITIONER:
`
`Naveen Modi
`Joseph E. Palys
`Phillip W. Citroen
`Michael Wolfe
`PAUL HASTINGS
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`phillipcitroen@paulhastings.com
`michaelwolfe@paulhastings.com
`
`For PATENT OWNER:
`
`Brett Mangrum
`Ryan Loveless
`ETHERIDGE LAW GROUP
`brett@etheridgelaw.com
`ryan@etheridgelaw.com
`
`Sean D. Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`
`7
`
`
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