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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`
`IPR2017-01802
`PATENT 7,535,890
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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 IPR2017-1802 SHOULD BE DENIED AS
`REDUNDANT. ......................................................................................................... 4
`A. Petitioner Uses Impermissible Vertical Redundancy. ................................... 4
`B. Zydney is Materially the Same as the art Cited During Prosecution
`of the ʼ890 Patent and Therefore is Demonstrably Duplicative. ......................... 10
`C. The Board Should Exercise its Discretion and Deny the Petition ............... 14
`IV. THE ʼ890 PATENT ........................................................................................ 16
`A. Effective Filing Date of the ʼ890 Patent ...................................................... 16
`B. Overview of the ʼ890 Patent ........................................................................ 16
`V. NO REASONABLE LIKELIHOOD THAT AT LEAST ONE OF
`THE CHALLENGED CLAIMS IS UNPATENTABLE .................................... 18
`A. Claim Construction ...................................................................................... 19
`1. The Board Should Construe “Transmitting the Selected
`Recipients and the Instant Voice Message” as “Transmitting the
`Selected Recipients (in Response to the Selecting) and Separately
`Transmitting the Instant Voice Message” ........................................................ 20
`2. The Board Should Construe “Receiving the Selected Recipients
`and the Instant Voice Message” as “Receiving the Selected Recipients
`and Separately Receiving the Instant Voice Message.” .................................. 24
`3. The Board Should Construe “Delivering the Instant Voice
`Message to the Selected Recipients” as “Delivering the Instant Voice
`Message (from the Server) to (a Subset of) the Selected Recipients
`that are Determined by the Server to be Available.” ....................................... 25
`4. The Board Should Construe “Storing the Instant Voice Message
`if a Selected Recipient is Unavailable” as “Storing the Instant Voice
`Message for a Selected Recipient Determined by the Server to be
`Unavailable.” .................................................................................................... 26
`5. The Board Should Construe “Temporarily Storing . . . and
`Delivering the Stored Instant Voice Message” as “Temporarily
`Storing . . . until Delivering the Stored Instant Voice Message.” ................... 27
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`ii
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`B. Ground 1 Fails Because Petitioner Fails to Provide Prima Facie
`Evidence that Griffin plus Zydney Renders Obvious Claims 1, 3–6, 9,
`and 40–43. ............................................................................................................ 29
`1. Zydney is Materially the Same as the art Cited During
`Prosecution of the ʼ890 Patent and Therefore is Demonstrably
`Duplicative for the Purposes Relied on by Petitioner. ..................................... 29
`2.
`Including Zydney with Griffin Frustrates the Purpose of Griffin
`of a Server-Based Messaging Paradigm. .......................................................... 33
`3. The Combination of Griffin and Zydney is also Inoperable for
`Text-only Buddies. ........................................................................................... 39
`4. The Combination of Griffin and Zydney Is Also Inoperable
`Because it would Result in Messages Being Lost. .......................................... 41
`5. The Combination of Griffin and Zydney Would Require
`Changing the Principle of Operation of One or the Other. .............................. 42
`6. Griffin plus Zydney Does Not Disclose or Render Obvious a
`Client “Transmitting the Selected Recipients and the Instant Voice
`Message” or a Server “Receiving the Selected Recipients and the
`Instant Voice Message.” .................................................................................. 43
`7. Griffin plus Zydney Does Not Disclose or Render Obvious a
`Server “Delivering the Instant Voice Message to the Selected
`Recipients Over the Network” and “Storing the Instant Voice
`Message if a Selected Recipient is Unavailable.” ........................................... 47
`1.
`Independent Claims 1 and 40 are not Obvious Over Griffin plus
`Zydney ............................................................................................................. 50
`2. Dependent Claims 3–6, 9, and 41–43 are Not Obvious Over
`Griffin plus Zydney. ......................................................................................... 51
`C. Ground 2 Fails Because Petitioner Fails to Provide Prima Facie
`Evidence that Griffin plus Zydney and Malik Renders Obvious Claims
`2, 14, 15, 17–20, 23, 51–54, and 57. .................................................................... 52
`1. Malik is Cumulative with a Continuation Application Thereof
`Previously Considered by the Examiner During Prosecution. ........................ 52
`2.
`Independent Claims 14 and 51 are not Obvious Over Griffin plus
`Zydney and Malik. ........................................................................................... 55
`3. Dependent Claims 2, 15, 17–20, 23, 52–54, and 57 are not
`Obvious Over Griffin plus Zydney and Malik. ............................................... 56
`VI. THE SUPREME COURT IS CURRENTLY REVIEWING THE
`CONSTITUTIONALITY OF INTER PARTES REVIEW ............................... 56
`VII. CONCLUSION .............................................................................................. 57
`
`iii
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`List of Exhibits
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`
`
`2001
`
`Declaration of William C. Easttom II
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`2002
`
`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
`
`2003
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`US. Pat. App. Pub. No 2004/0128356 (Bernstein)
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`2004
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`US. Pat. App. Pub. No. 2007/0112925 (Malik 11)
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`
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`iv
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`I.
`
`INTRODUCTION
`Uniloc Luxembourg S.A. (“Patent Owner”) pursuant to 35 U.S.C. § 313 and
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`37 C.F.R. § 42.107(a), submits this Preliminary Response to the Petition for Inter
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`Partes Review (“the Petition” or “Pet. at __”) of United States Pat. No. 7,535,890
`
`(EX1001; “the ʼ890 Patent”) filed by SAMSUNG ELECTRONICS AMERICA,
`
`INC. (“Petitioner”).
`
`The Petition fails to “specify where each element of the claim is found in the
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`prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4).
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`Rather, Petitioner uses the claim language as a blue-print to speculate (outside the
`
`four corners of the cited references) various ways in which the duplicative (i.e.,
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`cumulative) references could possibly be modified and combined to atone for
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`missing limitations. Petitioner further impermissibly attempts to fill in the missing
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`limitations, at least in part, by offering interpretations that conflict with contents of
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`the duplicative references, with express language in the claims, and with
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`unambiguous constructions in the prosecution history. The Petition’s approach
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`invites reversible error and should be rejected outright.
`
`II. RELATED MATTERS
`The ʼ890 Patent is in a family of patents including United States Patent Nos.
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`8,243,723 (the ’723 Patent); 8,724,622 (the ’622 Patent); 8,199,747 (the ’747
`
`1
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`

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`Patent); and 8,995,433 (the ’433 Patent).l The diagram below how this family of
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`patents is interrelated.
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`App. No.: 103740030
`Filed: 12-18-2003
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`Pat. No: 7.535.890
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`App. No.: 12.898063
`Filed: 03-04-2009
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`App. No.: 12.898076
`Filed: 03-04-2009
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`Pat. NO: 8.243.723
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`Pat. NO: 8.199.747
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`
`
`App. No.: l3;"546.673
`Filed: 07-11-2012
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`Pat. No: 8.72-1.62}.
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`App. No: Hill-1.125
`Filed: 03-25-2014
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`Pat. No: 8.995.433
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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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`14-Nov-16
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`1m “—
`IPR2017-0220
`14-Nov-16
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`IPR2017-0221
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`14-Nov-16
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`IPR2017-0222
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`Apple
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`Apple
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`Apple
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`

`

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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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`Apple
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`IPR2017-0223
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`14-Nov-16
`
`IPR2017—0224
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`l4—Nov-l6
`
`IPR20170225
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`14-Nov-16
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`
`
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`Facebook / WhatsApp
`IPR2017 1257
`7-Apr—l7
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`Facebook / WhatsApp
`
`IPR2017 1365
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`3May-l7
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`’723
`
`Facebook / WhatsApp
`
`Facebook / WhatsApp
`
`Facebook / WhatsApp
`
`IPR2017 1427
`IPR2017—1428
`
`11-May-17
`11-May—17 —
`
`
`IPR2017 1524
`2-Jun—17
`’890
`Facebook / WhatsApp
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`Facebook / WhatsApp
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`IPR2017 1667
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`22Jun-17
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`’622
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`Snap
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`Snap
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`IPR2017-1611
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`15-Jun-17
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`IPR2017-1612
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`16-Jun-17
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`Facebook / WhatsApp
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`IPR2017—1634
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`16—Jun—17
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`Facebook / WhatsApp
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`IPR2017-1635
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`16-Jun-17
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`’723
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`Facebook / WhatsApp
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`IPR2017—1636
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`16—Jun—17
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`’890
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`Huawei / LG Electronics
`IPR2017—2090
`11—Sep— 17
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`LG Electronics
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`IPR2017-2087
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`11-Sep-17
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`1 All five related patents derive from United States Patent Application No.
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`10/740,030- Also referred to collectively as the ’890 Patent family.
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`

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`Petitioner
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`IPR#
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`Date
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`Patent
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`LG Electronics / Huawei
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`Google/Huawei/Motorola
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`Google/Huawei/Motorola
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`IPR20 l 7-2082
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`1 l—Sep— 1 7
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`’ 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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`GooglefHuawei/Motorola
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`IPR2017—2067
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`12—Sep—17
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`Google/Huawei/Motorola
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`IPR2017-2085
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`11-Sep-17
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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. 2, 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 ’890 Patent. Pet. at 1—3.
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`HI. THE PETITION FOR IPR2017—1802 SHOULD BE DENIED AS
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`REDUNDANT.
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`A.
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`Petitioner Uses Impermissible Vertical Redundancy.
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`Petitioner concurrently filed six IPR Petitions, IPRs 2017-1797 through 1802,
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`against the ’890 Patent family. Those Petitions could be the poster children for the
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`abusive filing of redundant
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`inter partes review petitions.
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`In IPR2017-1802,
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`Petitioner redundantly brings against claims of the ’890 Patent a reference, Zydney,
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`on grounds that are already before the Board in other Petitions.
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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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`4
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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.2
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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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`2 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.
`
`
`5
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`

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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.3
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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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`On July 20, 2017, Petitioner filed IRP2017-1802 on grounds that the ʼ890
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`Patent claims are obvious over Griffin4 plus Zydney5. On September 11, 2017,
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`Petitioner Google filed IRP2017-2082 also on grounds that the ʼ890 Patent claims
`
`
`3 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.
`4 EX1005.
`5 EX1006.
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`
`6
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`

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`are obvious over Zydney.6 These Petitions, references, and grounds are redundant.
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`Yet, Petitioner does not provide any reasoned explanation to justify needlessly
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`burdening the Board and the Patent Owner with this redundant Petition. To the
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`contrary, Petitioner ignores the Zydney-redundancy and for Griffin relies on the
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`excuse that “Ground 1–2 rely on Griffin as a primary reference, which is not at issue
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`in the other IPRs … the Board should consider and adopt Grounds 1–2 because they
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`are different than those in the other IPRs.” Pet. at 7. See also Petitions in IPR2017-
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`1797 at 7 (ditto), IPR2017-1798 at 8 (ditto), IPR2017-1800 at 8 (ditto), and
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`IPR2017-1801 at 8 (ditto). If all that is needed is “different” then there will never be
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`an end to Petitioners’ abuse of the system and harassment of Patent Owner. Thus,
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`IPR2017-1799 should be denied.
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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, IPR2017-1802 should be denied. It is clear that Petitioner is
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`gaming the system. Petitioner appears to be playing the odds: If Petitioners
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`(Samsung, Google, and others) keep filing IPR Petitions against the ʼ890 Patent
`
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`6 On the same day, Petitioner Google filed IPR2017-02083 and IPR2017-02084
`asserting grounds of unpatentability against the '890 Patent claims based also on
`Zydney.
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`
`7
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`

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`family, Petitioners will eventually overwhelm the Board and Patent Owner.7 “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
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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 17.8
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`“Multiple grounds, which are presented in a redundant manner by a petitioner
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`who makes no meaningful distinction between them, are contrary to the regulatory
`
`and statutory mandates, and therefore are not all entitled to consideration.” See 37
`
`C.F.R. §42.1(b) which mandates a “just, speedy, and inexpensive resolution of every
`
`proceeding.” The Board should disregard redundant grounds. See Berk-Tek LLC v.
`
`Belden Techs. Inc., No. IPR2013-00057, Paper No. 21, Decision on Request for
`
`
`7 “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.
`8 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,’”).
`
`8
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`

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`Rehearing at 4–5 (PTAB 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
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`grounds without meaningful distinction by Petitioner is contrary to the legislative
`
`intent”); Oracle Corp. v. Clouding IP, LLC, No. IPR2013-00075, Paper No. 8,
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`Decision Institution of Inter Partes Review at 13–14 (PTAB May 3, 2013) (denying
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`various grounds of unpatentability because they were redundant); AmkorTech., Inc.
`
`v. Tessera, Inc., No. IPR2013-00242, Paper No. 37, Decision Institution of Inter
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`Partes Review at 32–33 (PTAB Oct. 11, 2013) (ditto). For at least the reasons
`
`presented above, IPR2017-1802 should be denied as redundant. See Liberty Mutual
`
`Insurance Co. v. Progressive Casualty Insurance Co., CBM2012-00003, Paper 7
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`Order (PTAB October 25, 2012) at 2 (“A petitioner has the burden of proof to
`
`establish that it is entitled to the requested relief. 37 C.F.R. §42.20(c)”).9
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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
`
`
`9 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.
`
`9
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`

`

`Petitions filed by Petitioner allege that Griffin is the “primary reference”, Zydney is
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`the substance-over-form primary reference doing most of the work in each of the six
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`Petitions. The inter partes review system is not a piñata party in which each
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`colluding Petitioner can take a turn whacking at Patent Owner’s patents with the
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`Zydney stick. The Board should therefore reject the instant Petition outright.
`
`Regardless whether the Board considers the merits of any of Petitioner’s
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`redundant theories, the Petition still fails to present a prima facie case of obviousness
`
`for even one challenge claim, for reasons explained below.
`
`B.
`
`Zydney is Materially the Same as the art Cited During Prosecution
`of the ʼ890 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
`
`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 ʼ890 Patent.
`
`10
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`

`

`All of the assertions in the Petition against the claims of the ʼ890 Patent are
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`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 ʼ890 Patent) to allegedly invalidate each
`
`challenged claim of the ʼ890 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 14 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. (EX1002, ¶¶97–105.)” However,
`
`U.S. Pat. App. Pub. No 2004/0128356 (EX2003; “Bernstein”), listed on the face of
`
`the ʼ890 Patent10 similarly describes a terminal directly connected to a network.
`
`EX2003, ¶ 0013, Fig. 1.
`
`On page 25 of the Petition, Petitioner relies on another alleged teaching in
`
`Zydney, stating “it would have been obvious to a POSA to modify Griffin’s
`
`system/process based on the teachings of Zydney so that status 702 indicates whether
`
`
`10 Bernstein was explicitly asserted by the Examiner Creighton Smith in rejecting
`claims of the’890 Patent in an Office Action mailed August 11, 2008.
`
`11
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`

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`terminal 100 is ‘available’ or ‘unavailable’ for messaging based on whether terminal
`
`100 is currently connected to server 204. (Id., ¶¶122–30.)” However, Bernstein,
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`similarly describes indicating whether the terminal is available or unavailable. Id. at
`
`¶¶ 0007, 0016, 0017, 0122, and 0132.
`
`On page 28 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 based on the teachings of Zydney so that speech messages are
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`temporarily stored (if the recipient is unavailable) and delivered (once the recipient
`
`becomes available) depending on whether the recipient’s status 702 indicates that
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`the recipient is available (e.g., currently connected). (Id., ¶¶131–44.)” However,
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`Bernstein similarly describes storing instant messages to a server (e.g., for later
`
`retrieval by a user becoming available) in addition to describing indicating whether
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`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 ʼ890 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
`
`12
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`

`

`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
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`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
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`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
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`discretion under §325(d) with respect to a second asserted obviousness combination,
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`where the examiner did not consider the asserted references during prosecution, and
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`the references were not cumulative of the prior art the examiner considered during
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`prosecution. In Cultec, the Board denied institution under § 325(d) because (i) the
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`examiner previously considered two of the asserted references—one reference was
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`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
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`(ii) the two additional references upon which the petitioner relied were cumulative
`
`of prior art the examiner considered during prosecution.
`
`C. The Board Should Exercise its Discretion and Deny the Petition
`
`35 U.S.C. §314(a) and 37 C.F.R. §42.108 make it clear that institution of an
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`inter partes review is discretionary. Various factors have been considered by the
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`Board in determining whether to exercise discretion to deny review. Blue Coat
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`Systems LLC v. Finjan, Inc., No. IPR2016-01443, Paper 13, Decision Denying
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`Institution of Inter Partes Review at 8–9 (P.T.A.B. Jan. 23, 2017) provides a listing
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`of eight such factors (collecting cases, internal citations omitted):
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`(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;
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`(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
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`Board considers factors (2)–(7) inapplicable because there are no earlier-filed IPR
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`Petitions listing Samsung Electronics America, Inc. as Petitioner, factors (1) and (8)
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`counsel against institution. The first factor, “the finite resources of the Board,”
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`disfavors permitting the serial filing of multiple petitions against the same patent
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`using the same Zydney reference and associated arguments (which Patent Owner
`
`would otherwise have no choice but to serially rebut in the same manner).
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`The eighth factor also favors denial because “the same or substantially same
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`prior art or arguments were previously presented to the office.” As explained above,
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`Petitioner provides no explanation for why the arguments and art cited in the instant
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`Petition differ in any way from either the art cited during prosecution or for the
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`horizontal or vertical redundancy reflected by the IPRs pending against this patent
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`family.
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`The Board should therefore exercise its discretion to deny institution of any
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`ground presented in the instant Petition.
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`IV. THE ʼ890 PATENT
`A. Effective Filing Date of the ʼ890 Patent
`The ʼ890 Patent is titled “System and Method for Instant VoIP Messaging.”
`
`The ʼ890 Patent issued from U.S. Pat. App. No. 10/740,030, filed December 18,
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`2003. The ʼ890 Patent issued May 19, 2009.
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`B. Overview of the ʼ890 Patent
`The
`ʼ890 Patent
`recognizes
`
`that
`
`conventional
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`circuit-switched
`
`communications enabled traditional telephony yet had a variety of technical
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`disadvantages that limited development of other forms of communication over such
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`networks. According
`
`to
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`the ʼ890 Patent, “[c]ircuit switching provides a
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`communication path (i.e., dedicated circuit) for a telephone call from the telephone
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`terminal to another device 20 over the [public switched telephone network or] PSTN,
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`including another
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`telephone
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`terminal. During
`
`the
`
`telephone call, voice
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`communication takes place over that communication path.” EX1001, 1:18–23.
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`The ʼ890 Patent expressly distinguishes circuit-switched networks from
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`packet-switched networks (e.g., the Internet) at least in that the latter routes
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`16
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`packetized digital information, such as “Voice over Internet Protocol (i.e., “VoIP”),
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`also known as IP telephony or Internet telephony.” Id. at 1:24–26. Because legacy
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`circuit-switched devices were unable to communicate directly over packet-switched
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`networks, media gateways (114) were designed to receive circuit-switched signals
`
`and packetize them for transmittal over packet-switched networks, and vice versa.
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`Id. at 1:54–2:10. The conversion effected by media gateways (e.g., 114 and 118)
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`highlights the fact that packetized data carried over packet-switched networks (e.g.,
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`IP network 102) are different from and are incompatible with an audio signal carried
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`over a dedicated packet-switched circuit. Id. at 1:18–23.
`
`The ʼ890 Patent further recognizes that, notwithstanding the advent of instant
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`text messages, at the time of the claimed invention there was no similarly convenient
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`analog to leaving an instant voice message (IVM) over a packet-switched network.
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`Id. at 2:11–43. Rather, “conventionally, leaving a voice message involves dialing
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`the recipient’s telephone number (often without knowing whether the recipient will
`
`answer), waiting for the connection to be established, speaking to an operator or
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`navigating through a menu of options, listening to a greeting message, and recording
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`the message for later pickup by the recipient. In that message, the user must typically
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`identify himself or herself in order for the recipient to return the call.” Id. at 2:15–
`
`22.
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`17
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`

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`In certain disclosed aspects, the ʼ890 Patent describes a user-accessible client
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`208 that is specially configured for IVM communication and for direct
`
`communication over a packet-switched network (e.g., through an Ethernet card). Id.
`
`at 12:4–5. More specifically, the ʼ890 Patent teaches that certain clients (208) are
`
`specially configured to “listen[] to the input audio device 212,” “record[] the user’s
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`speech into a digitized audio file 210 (i.e., [IVM]) stored on the IVM client 208,”
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`and “transmit[] the digitized audio file 210” as packetized data (e.g., using TCP/IP)
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`over a packet-switched network (e.g., network 204) “to the local IVM server 202.”
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`Id. at 7:65–8:1.
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`V. NO REASONABLE LIKELIHOOD THAT AT LEAST ONE OF THE
`CHALLENGED CLAIMS IS UNPATENTABLE
`The Petition presents the following grounds, which are all based on
`
`obviousness theories. As Ground 1, Petitioner alleges obviousness of Claims 1, 3–
`
`6, 9, and 40–43 under 35 U.S.C. § 103 over U.S. Pat. No. 8,150,922 to Chris Michael
`
`Griffin et al. (EX1005; “Griffin”) in view of International Pat. App. Pub. No. WO
`
`01/11824 to Herbert Zydney et al. EX1006; “Zydney”). As Ground 2, the Petition
`
`alleges obviousness of Claims 2, 14, 15, 17–20, 23, 51–54, and 57 under 35 U.S.C.
`
`§ 103 over Griffin in view of Zydney and U.S. Pat. No. 7,016,978 to Dale Malik et
`
`al. (EX1011; “Malik”).
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`Petitioner has the burden of proof to establish they are entitled to their
`
`requested relief. 37 C.F.R. § 42.108(c). Because the Petition only presents theories
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`18
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`of obviousness, Petitioner must demonstrate a reasonable likelihood that at least one
`
`of the challenged patent claims would have been obvious in view of the art