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`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 IPR2017-01802
`Patent 7,535,890 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
`All claims challenged in IPR2017-01802 recite limitations directed to the
`server (1) “receiving the . . . instant voice message” and either (2) “delivering the
`instant voice message” or (3) “temporarily storing the instant voice message if a
`selected recipient is unavailable and delivering the stored instant voice message to
`the selected recipient once the selected recipient becomes available.” The Board
`appears to have misapprehended relevant argument and evidence directed to why
`Petitioner’s proposed combination of Griffin and Zydney would render Griffin
`inoperable for its intended purpose. See, e.g., In re Gordon, 733 F.2d 900, 221 USPQ
`1125 (Fed. Cir. 1984) (holding that if proposed modification would render the prior
`art invention being modified unsatisfactory for its intended purpose, then there is no
`
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`2
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`suggestion or motivation to make the proposed modification); See In re ICON Health
`& Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007) (“a reference teaches away
`from a combination when using it in that combination would produce an inoperative
`result.”).
`Patent Owner argued in its Response that Petitioner’s proposed combination
`of “Zydney in the system described by Griffin would frustrate the purpose of Griffin
`of a server-based messaging paradigm
`in which
`technical feasibility of
`communicating a message to a recipient terminal is determined at the server complex
`204 rather than at the mobile terminal 100 and in which only the messages vetted by
`the server complex 204 as feasible are subsequently communicated by the server
`complex 204.” Response (Paper 12) at 23 (citing Easttom Decl. ¶ 31).
`Dr. Easttom describes Griffin as disclosing that “[it] is the server complex 204
`that performs this determination [of whether the targeted recipient terminals are
`technically able to receive the particular type of message] by consulting its presence
`records 700 to establish ‘whether [each] recipient is ready to receive the particular
`type of message.’” Easttom Decl. ¶ 31 (quoting Griffin at 5:12−14 and 6:56−66)
`(underlining original).
`Dr. Easttom further testified that Griffin teaches its system is expressly
`designed such that JaneT should not be considered available for instant voice
`message, regardless whether her device is online or offline, because she is designated
`as a “TextOnly” buddy. Easttom Decl. ¶ 34. Therein lies a fundamental and fatal
`problem with Petitioner’s proposed combination. Modifying Griffin to incorporate
`Zydney’s alleged concept of device available/unavailability
`in
`terms of
`
`
`
`3
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`
`
`online/offline connectivity status would result in JaneT being considered available
`for instant voice messaging because her device is online when, as a matter of
`technical capability, her device cannot receive such messages. This would result in
`the server erroneously attempting to deliver a message that cannot be delivered.
`The Final Written Decision states that Petitioner “does not argue that
`Zydney’s availability teachings would replace Griffin’s status 204.” FWD (Paper
`31) at 32. However, as alleged support for this understanding of the Petition, the
`Board provides a quotation from the Petition that confirms the opposite of the
`Board’s understanding: “the combination of Griffin and Zydney would result ‘in
`Griffin’s status 702 indicating the availability of a terminal 100 for receiving
`messages based on whether terminal 100 is currently connected to server 204.”
`Id. (quoting Pet. 26). Thus, the quotation from the Petition confirms the
`(incompatible) availability teaching in Zydney would impermissibly replace
`Griffin’s explicit disclosure that a server determines whether a recipient terminal
`is designated text-only and thus technically incapable of receiving speech chat
`messages, regardless whether it is online or offline.
`The Final Written Decision also points to the Institution Decision
`observation that “none of Petitioner’s contentions rely on ‘text-only’ buddy
`features.” FWD (Paper 31) at 32 (citation omitted). This misses the point. The
`problem with the proposed combination is not that Petitioner allegedly relies on
`“text-only” buddy features. Rather, it is that the proposed combination would
`render Griffin unsatisfactory for its intended purpose and would produce in
`
`
`
`4
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`
`
`operative result by fundamentally changing how Griffin determines availability and
`responds accordingly.
`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
`
`
`/s/ Brett A. Mangrum
`Brett A. Mangrum
`brett@etheridgelaw.com
`Reg. No. 64,783
`
`Ryan Loveless
`ryan@etheridgelaw.com
`Reg. No. 51,970
`
`Counsel for Patent Owner
`
`
`
`5
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`CERTIFICATE OF SERVICE
`
`The undersigned certifies that the foregoing was served electronically on
`
`counsel of record for Petitioner.
`
`Date: March 4, 2019
`
`
`
`/Brett A. Mangrum/
`
`Brett A. Mangrum
`brett@etheridgelaw.com
`Reg. No. 64,783
`
`Counsel for Patent Owner
`
`6
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