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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`IPR2017-1801
`PATENT 8,995,433
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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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`INTRODUCTION ............................................................................................ 1
`I.
`II. RELATED MATTERS ................................................................................... 1
`III. THE PETITION FOR IPR2017-1801 SHOULD BE DENIED
`AS REDUNDANT. ................................................................................................... 4
`A. Petitioner’s Unjust and Unjustified Horizontal Redundancy ........................ 8
`B. Petitioner Uses Vertical Redundancy to Take a Third and Fourth
`Bite. 9
`C. Zydney is Materially the Same as the art Cited During Prosecution of
`the ’433 Patent and Therefore is Demonstrably Duplicative for the
`Purposes Relied on by Petitioner ......................................................................... 13
`D. The Board Should Exercise its Discretion and Deny the Petition. .............. 17
`II. THE ’433 PATENT DESCRIBES INSTANT VOICE
`MESSAGING OVER A PACKET-SWITCHED NETWORK. ........................ 19
`A. Effective Filing Date of the ’433 Patent ...................................................... 19
`B. Overview of the Technology Protected by the ’433 Patent ......................... 19
`C. Claims 1, 6, and 9 of the ’433 Patent Are in Independent Format. ............. 21
`III. THERE IS NO REASONABLE LIKELIHOOD THAT EVEN
`ONE OF THE CHALLENGED CLAIMS 1–5, 7–12, 14–17, 25, OR
`26 IS UNPATENTABLE. ...................................................................................... 23
`A. There Was No Motivation to Combine Zydney with Griffin. ..................... 24
`1. Petitioner Does Not Establish a Prima Facie Case that Griffin
`Discloses an “Instant Voice Message.” ........................................................... 24
`2. Griffin Does Not Teach Real Time Communication. .............................. 25
`3. Petitioner’s Suggestion to Combine Griffin and Zydney Is
`Improper, Unworkable, and Is Incompatible with Zydney. ............................ 30
`B. Griffin Does Not Teach Instant Voice Messaging Over a Packet
`Switched Network as Required by All Challenged Claims. ................................ 36
`C. Petitioner Fails to Make a Prima Facie Showing that Zydney or
`Griffin Describes Attaching One or More Files to an Audio File. ...................... 40
`
`ii
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`1. Neither Griffin nor Zydney Attach a File to an Audio File. .................... 40
`2. Zydney Teaches Away from “Wherein the Instant Voice
`Message Application Attaches One or More Files to the Instant Voice
`Message.” ......................................................................................................... 47
`3. Petitioner Shows No Motivation to Combine Griffin and Zydney,
`Nor How such a Combination Could Work. ................................................... 48
`D. No Prima Facie Showing of an “Instant Voice Message Is
`Represented by a Database Record Including a Unique Identifier.” ................... 50
`1. Clark and Griffin Lack a Database Record in a Message
`Database, where That Database Record Includes Both a Unique
`Identifier and an Instant Voice Message. ......................................................... 50
`2. Petitioner Shows No Motivation to Combine Griffin with Clark
`to Devise a Database Record That Included a Unique Identifier. ................... 53
`E. Neither Griffin nor Clark Disclose a File Manager System Storing,
`Retrieving, and Deleting the Instant Voice Message. .......................................... 55
`IV. THE SUPREME COURT IS CURRENTLY REVIEWING THE
`CONSTITUTIONALITY OF INTER PARTES REVIEW ................................ 58
`V. CONCLUSION .............................................................................................. 59
`
`
`List of Exhibits
`Description
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`Exhibit No.
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`2001
`
`2002
`
`2003
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`
`
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`Declaration of William C. Easttom II
`
`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
`U.S. Pat. App. Pub. No. 2004/0128356 (“Bernstein”)
`
`
`
`iii
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`

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`I.
`
`INTRODUCTION
`Patent Owner, Uniloc Luxembourg S.A., submits this Owner’s Preliminary
`
`Response to Petitioner Samsung Electronics America, Inc.’s Petition for Inter Partes
`
`Review (“Petition” or “Pet. at _”) of United States Patent No. 8,995,433 B2 (“the
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`’433 Patent” or “EX1001”) challenging Claims 1-5, 7-12, 14-17, 25, and 26 for
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`obviousness.
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`The Petition should be denied in its entirety. First, the Petition relies on
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`grounds that should be denied review providentially because they are horizontally
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`or vertically redundant over grounds already before the Board in other Petitions.
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`Second, Petitioner fails to meet its threshold burden of proving that there is a
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`reasonable likelihood that even one challenged claim is unpatentable. Specifically,
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`the Petition fails to satisfy the All Elements Rule, and also fails to show that even
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`one challenged claim would have been obvious in view of the asserted references
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`when the claimed subject matter is taken as a whole at the time the application was
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`filed.
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`II. RELATED MATTERS
`The ’433 Patent is in a family of patents including United States Patent Nos.
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`8,199,747 (the ’747 Patent); 7,535,890 (the ’890 Patent); 8,243,723 (the ’723
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`1
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`

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`Patent); and 8,724,622 (the ’622 Patent).1 The diagram below how this family of
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`patents is interrelated.
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`
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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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`Petitioner
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`Apple
`Apple
`Apple
`
`IPR#
`IPR2017-0220
`IPR2017-0221
`IPR2017-0222
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`Date
`14-Nov-16
`14-Nov-16
`14-Nov-16
`
`Patent
`’890
`’890
`’723
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`2
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`

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`Petitioner
`
`Apple
`Apple
`Apple
`Facebook / WhatsApp
`Facebook / WhatsApp
`Facebook / WhatsApp
`Facebook / WhatsApp
`Facebook / WhatsApp
`Facebook / WhatsApp
`Facebook / WhatsApp
`Snap
`Snap
`Facebook / WhatsApp
`Facebook / WhatsApp
`Facebook / WhatsApp
`Samsung Elec
`Samsung Elec
`Samsung Elec
`Samsung Elec
`Samsung Elec
`Samsung Elec
`Apple
`Apple
`Huawei / LG Electronics
`LG Electronics
`
`IPR#
`IPR2017-0223
`IPR2017-0224
`IPR2017-0225
`IPR2017-1257
`IPR2017-1365
`IPR2017-1427
`IPR2017-1428
`IPR2017-1523
`IPR2017-1524
`IPR2017-1667
`IPR2017-1611
`IPR2017-1612
`IPR2017-1634
`IPR2017-1635
`IPR2017-1636
`IPR2017-1797
`IPR2017-1798
`IPR2017-1799
`IPR2017-1800
`IPR2017-1801
`IPR2017-1802
`IPR2017-1804
`IPR2017-1805
`IPR2017-2090
`IPR2017-2087
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`Date
`14-Nov-16
`14-Nov-16
`14-Nov-16
`7-Apr-17
`3-May-17
`11-May-17
`11-May-17
`2-Jun-17
`2-Jun-17
`22-Jun-17
`15-Jun-17
`16-Jun-17
`16-Jun-17
`16-Jun-17
`16-Jun-17
`20-Jul-17
`20-Jul-17
`20-Jul-17
`20-Jul-17
`20-Jul-17
`20-Jul-17
`20-Jul-17
`20-Jul-17
`11-Sep-17
`11-Sep-17
`
`Patent
`’622
`’622
`’433
`’747
`’723
`’433
`’433
`’890
`’890
`’622
`’433
`’890
`’433
`’723
`’890
`’622
`’622
`’747
`’723
`’433
`’890
`’622
`’622
`’622
`’433
`
`
`1 All five related patents derive from United States Patent Application No.
`10/740,030. Also referred to collectively as the ’433 Patent family.
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`3
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`

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`Petitioner
`LG Electronics / Huawei
`Google/Huawei/Motorola
`Google/Huawei/Motorola
`Google/Huawei/Motorola
`Google/Huawei/Motorola
`Google/Huawei/Motorola
`Google/Huawei/Motorola
`Google/Huawei/Motorola
`
`
`IPR#
`IPR2017-2088
`IPR2017-2080
`IPR2017-2081
`IPR2017-2082
`IPR2017-2083
`IPR2017-2084
`IPR2017-2067
`IPR2017-2085
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`Date
`11-Sep-17
`12-Sep-17
`12-Sep-17
`11-Sep-17
`11-Sep-17
`11-Sep-17
`12-Sep-17
`11-Sep-17
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`Patent
`’433
`’622
`’622
`’890
`’890
`’890
`’433
`’747
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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. 3, 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 ’433 Patent. Pet. at 1–3.
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`III. THE PETITION FOR IPR2017-1801 SHOULD BE DENIED AS
`REDUNDANT.
`Petitioner’s IPRs 2017-1797 through 1802, including IRP2017-1801, could
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`be the poster children for the abusive filing of redundant inter parties review
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`petitions. Petitioner redundantly brings against the independent claims (Claims 1, 6,
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`and 9) of the ’433 Patent the same references (e.g., Zydney, Clark) and grounds that
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`are already before the Board in other Petitions. Petitioner’s attacks on dependent
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`claims are also redundant. Yet Petitioner has not met its obligation to justify through
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`reasoned explanation why it should again tax the Board and the Patent Owner with
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`4
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`these redundant filings. See Liberty Mutual Insurance Co. v. Progressive Casualty
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`Insurance Co., CBM2012-00003, Paper 7, Order (P.T.A.B. October 25, 2012) at 2
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`(“A petitioner has the burden of proof to establish that it is entitled to the requested
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`relief. 37 C.F.R. §42.20(c).”).2
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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. 3
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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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`2 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, see Liberty
`Mutual, Paper No. 7 at 2, the Petition should be denied.
`3 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.
`These filings have been based on references known before the original IPR was filed.
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`5
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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.4
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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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`
`4 Dahod and Vouri 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 Vouri. IPR2017-0224 Order Denying
`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 admitted that Dahod had been before the Examiner during
`prosecution.
`
`6
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`

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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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`Petitioner Google filed the IPR2017-02067 against the ’433 Patent
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`challenging: Claims 9, 12–14, 17, and 25 as anticipated by Zydney; Claims 1–6, 11,
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`and 16 as obvious over Zydney and Stern; Claims 7 and 8 as obvious over Zydney
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`plus of Stern and Enete; Claim 10 as obvious over Zydney plus Trapani; Claim 15
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`as obvious over Zydney plus Demsky; Claims 18–24 as obvious over Zydney plus
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`Katseff; and Claims 26–27 as obvious over Zydney plus Enete.
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`Thus, IPR2017-1801 and the grounds it asserts are redundant and should be
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`denied because “numerous redundant grounds” needlessly place “a significant
`
`burden on the Patent Owner and the Board” and “cause unnecessary delays.” Liberty
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`Mutual Insurance Co. v. Progressive Casualty Insurance Co., CBM2012-00003,
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`Paper 7 (P.T.A.B. October 25, 2012) at 2 (“multiple grounds, which are presented
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`in a redundant manner by a petitioner who makes no meaningful distinction between
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`them, are contrary to the regulatory and statutory mandates, and therefore are not all
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`entitled to consideration.”); Costco Wholesale Corp. v. Robert Bosch LLC, IPR2016-
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`00035, 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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`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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`7
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`

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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 Petitioner
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`may allege that Griffin is the “primary reference” Zydney is the substance-over-form
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`primary reference doing most of the work in each of the six Petitions. The inter
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`partes review system is not a piñata party in which each colluding Petitioner can
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`take a turn whacking at Patent Owner’s patents with the Zydney stick. The Board
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`should therefore reject the instant Petition 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 re-use a collection
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`of 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 and
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`cumulative. IPR2017-1801 should be denied.
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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. IPR2016-01357, 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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`8
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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).”);5 Berk-Tek LLC v. Belden Techs. Inc., No. IPR2013-
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`00057, Paper No. 21, Decision on Request for Rehearing at 4–5 (P.T.A.B. May 14,
`
`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
`
`distinction by the petitioner is contrary to the legislative intent”); Oracle Corp. v.
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`Clouding IP, LLC, No. IPR2013-00075, Paper No. 8, Decision 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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`IPR2013-00242, Paper No. 37, Decision Institution of Inter Partes Review at 32–33
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`(P.T.A.B. Oct. 11, 2013) (ditto).
`
`B.
`
`Petitioner Uses Vertical Redundancy to Take a Third and Fourth
`Bite.
`IPR2017-2067 acknowledges that “petitioners have filed [multiple] IPR
`
`proceedings challenging . . . claims of the ’433, ’622, [’723,] ’890, and ’747 patents
`
`
`5 Relying on the seven factors from NVIDIA Corp. v. Samsung Elec. Co., Case
`IPR2016-00134, Paper No. 9 (PTAB May 4, 2016) to deny each of the follow-on
`Petitions. Canon Kabushiki Kaisha at 9-10.
`
`9
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`

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`[which are] in the same patent family as the ’433 Patent.” 2067 Pet. at 3.6
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`Those Petitioners challenge the claims of the ’433 Patent as obvious in nine
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`(9) IPRs:
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`• Apple Inc. v. Uniloc Luxembourg S.A., IPR2017-00225 (Instituted May
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`25, 2017);
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`• Facebook, Inc. v. Uniloc USA, Inc., IPR2017-01427;7
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`• Facebook, Inc. v. Uniloc USA, Inc., IPR2017-01428;8
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`• Facebook, Inc. v. Uniloc USA, Inc., IPR2017-01634;
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`• Snap Inc. v. Uniloc USA, Inc., IPR2017-01611;
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`• Samsung v. Uniloc USA, Inc. IPR2017-1801;9
`
`
`6 Petitioners’ apparent coordination to game the system is wasteful and unfair. On
`the very day (i.e., on July 20, 2017) Petitioner Samsung filed six Petitions against
`the ’433 Patent family, including IPR2017-1801, Apple filed IPR2017-1804 and
`1805 also asserting the same Zydney, Shinder, Clark, Appelman, and Hethmon
`references.
`7 Challenging: Claims 9, 12, 14, 17, 25-26 as obvious over Zydney; Claims 11, 15,
`16 as obvious over Zydney plus Greenlaw; and Claim 10 as obvious over Zydney
`plus Newton.
`8 Challenging: Claims 1-8 as obvious over Zydney plus Clark; and Claim 7 as
`obvious over Zydney plus Clark plus Appelman.
`9 Challenging: Claims 1-3, and 8 as obvious over Griffin and Clark; Claims 4 and 7
`as obvious over Griffin, Clark, and Zydney; Claim 5 as obvious over Griffin, Clark
`
`10
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`

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`• LG, Huawei v. Uniloc, Inc. IPR2017-2088;10
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`• LG, Huawei v. Uniloc, Inc. IPR2017-2087;11 and as anticipated in
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`• Google v. Uniloc, Inc. IPR2017-2067.12
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`Thus, Petitioner grossly violates the long-standing prohibition against vertical
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`redundancy. IPRs 2017-1797 through 1802 recycle well-worn references through
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`the simple expedient, on this go-round, of adding a user interface patent to Griffin to
`
`the mix. Nowhere, however, does Petitioner explain how simply adding Griffin
`
`makes it fair or permissible to again burden the Board and the Patent Owner with
`
`this latest barrage of Petitions. It is clear that Petitioners are gaming the system.
`
`
`and Väänänen; Claims 9, 11, 14-17, 25, and 26 as obvious over Griffin and Zydney;
`Claim 12 as obvious over Griffin, Zydney, and Vaananen; Claim 10 as obvious over
`Griffin, Zydney, and Lee; and Claim 7 as obvious over Griffin, Zydney, and Vuori.
`10 Challenging: Claims 9, 12, 14, 17, 25-26 as obvious over Zydney; Claims 11, 15,
`16 as obvious over Zydney plus Greenlaw; and Claim 10 over Zydney plus Newton.
`10 Challenging: Claims 1-8 as obvious over Zydney plus Clark; and Claim 7 over
`Zydney plus Clark plus Appelman.
`11 Challenging: Claims 1-6 and 8 as obvious over Zydney plus Clark; and Claim 7
`as obvious over Zydney plus Clark;
`12 Challenging: Claims 9, 12-14, 17, and 25 as anticipated by Zydney; Claims 1-6,
`11, and 16 as obvious over Zydney and Stern; Claims 7 and 8 as obvious over Zydney
`plus of Stern and Enete; Claim 10 as obvious over Zydney plus Trapani; Claim 15
`as over Zydney plus Demsky; Claims 18-24 as obvious over Zydney plus Katseff;
`and Claims 26-27 as obvious over Zydney plus Enete.
`
`11
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`

`

`Petitioners appear to be playing the odds: If Petitioners keep filing IPR petitions
`
`against the ’433 Patent family, Petitioners will eventually overwhelm the Board and
`
`Patent Owner.13
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`Petitioner’s ruse is transparent, futile, and unfair. As explained below, user
`
`interface patent Griffin is ill-suited to Petitioner’s hopes because Griffin adds
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`nothing relevant to either Zydney or Clark. Griffin does not describe or enable an
`
`instant voice messaging application. Indeed, Griffin merely mentions “voice” in
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`passing: First, in the context of push-to-talk, which is inapplicable here; and second,
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`merely as an alternative to text payloads. Griffin also does not describe or enable
`
`transmission of an instant voice message over a packet-switched network. See Canon
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`Kabushiki Kaisha at 11 (citation omitted) (“The filing of sequential attacks against
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`the same claims, with the opportunity to morph positions along the way, imposes
`
`inequities on Patent Owner” and on the Board).
`
`Indeed, Petitioner tacitly admits that it chose Griffin as a primary reference
`
`knowing it is redundant over Zydney: “While Zydney is at issue in a different IPR
`
`challenging the ’433 Patent . . . Grounds 1–7 rely on Griffin as a primary reference .
`
`
`13 “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.
`
`12
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`

`

`. . because it is different . . . .” See Pet. at 8. See also IPR2017-1797 at 7 (ditto),
`
`IPR2017-1798 at 8 (ditto), IPR2017-1799 at 7 (ditto), IPR2017-1800 at 6 (ditto),
`
`IPR2017-1802 at 7–8 (ditto). If all that is needed is “different” then there will never
`
`be an end to Petitioners’ abuse of the system and harassment of Patent Owner. Thus,
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`IPR2017-1801 should be denied.
`
`C.
`
`Zydney is Materially the Same as the art Cited During Prosecution
`of the ’433 Patent and Therefore is Demonstrably Duplicative for
`the Purposes Relied on by Petitioner
`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
`
`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 of the ʼ433 Patent.
`
`Many of the assertions in the Petition against the claims of the ’433 Patent are
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`based in part on Zydney. In other words, Petitioner relies on Zydney for the purpose
`
`13
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`

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`of providing an allegedly missing teaching (i.e., absent from the record during
`
`prosecution of the application for the ’433 Patent) to allegedly invalidate each
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`challenged claim of the ’433 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 50 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 (EX2003; “Bernstein”), listed on the face of the
`
`’433 Patent similarly describes a terminal directly connected to a network.
`
`EX2003, ¶ 0013, Fig. 1.
`
`On page 55 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 whether terminal 100 is ‘available’' or ‘unavailable’[.]”
`
`(Emphasis added.) However, Bernstein, similarly describes indicating whether the
`
`terminal is available or unavailable. Id. at ¶¶ 0007, 0016, 0017, 0122, and 0132.
`
`On page 38 of the Petition, Petitioner relies on yet another alleged teaching in
`
`Zydney, stating “it also would have been obvious to modify Griffin’s system/process
`
`14
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`

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`based on the teachings of Zydney so that speech chat messages are temporarily stored
`
`at server complex 204 and received by the recipient’s terminal 100 depending on
`
`whether the recipient’s status 702 indicates that the recipient is available.”
`
`(Emphasis added.) However, Bernstein similarly describes storing instant messages
`
`to a server (e.g., for later retrieval by a user becoming available) in addition to
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`describing indicating whether the terminal is available or unavailable. Id. at ¶¶ 0050,
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`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 ’433 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)
`
`15
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`

`

`(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
`
`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.
`
`16
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`

`

`D. The Board Should Exercise its Discretion and Deny the Petition.
`35 U.S.C. § 314(a) and 37 C.F.R. § 42.108 make clear that institution of an
`
`inter partes review is discretionary. Various factors help 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 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;
`
`17
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`

`

`(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
`
`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,
`
`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 for 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.
`
`18
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`

`

`II.
`
`THE ’433 PATENT DESCRIBES INSTANT VOICE MESSAGING
`OVER A PACKET-SWITCHED NETWORK.
`A. Effective Filing Date of the ’433 Patent
`
`The ’433 Patent is titled “System and Method for Instant VoIP Messaging.”
`
`The ’433 Patent issued March 31, 2015 from United States Patent Application
`
`No. 14/224,125, which is a Continuation of Application No. 13/546,673, filed on
`
`Jul. 11, 2012, now Pat. No. 8,724,622, which is a Continuation of Application No.
`
`12/398,063, filed on Mar. 4, 2009, now Pat. No. 8,243,723, which is a Continuation
`
`of Application No. 10/740,030, filed on Dec. 18, 2003, now Pat. No. 7,535,890.
`
`B. Overview of the Technology Protected by the ’433 Patent
`
`The Abstract of the ’433 Patent provides an overview of the technical
`
`disclosure:
`
`Methods, systems and programs for instant voice messaging over
`
`a packet-switched network are provided. A method for instant voice
`
`messaging may comprise 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
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`the instant voice message if a recipient is unavailable; and delivering
`
`the stored instant voice message to the recipient once the recipient
`
`becomes available.
`
`EX1001, Abstract.
`
`19
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`

`

`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 ʼ433 Patent, “[c]ircuit
`
`switching provides a communication path (i.e., dedicated circuit) for a telephone call
`
`from the telephone terminal to another device . . . over the [public switched telephone
`
`network or] PSTN, including another telephone terminal. During the telephone call,
`