UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
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`IPR2017-01805
`PATENT 8,724,622
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC.,
`Petitioner
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
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`IPR2017-01805
`PATENT 8,724,622
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`Tables of Contents
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`IPR2017-01805
`U.S. Patent 8,724,622
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`18
`19
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`20
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`22
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`27
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`28
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`29
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`15
`16
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`1
`INTRODUCTION
`I.
`2
`II. RELATED MATTERS OF THE ’622 PATENT
`2
`III. THE BOARD SHOULD DENY INSTITUTION UNDER § 325(d)
`IV. PETITIONER WILL BE ESTOPPED UNDER 35 U.S.C. § 315(e)(1) 11
`V.
`THE ’622 PATENT
`11
`Effective Filing Date of the ’622 Patent
`11
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`Overview of the ’622 Patent
`11
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`PERSON OF ORDINARY SKILL IN THE ART
`15
`V.
`VI. PETITIONER RELIES ON INCORRECT CLAIM
`CONSTRUCTION
`“communication platform system”
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`V. NO REASONABLE LIKELIHOOD THAT AT LEAST ONE OF
`THE CHALLENGED CLAIMS IS UNPATENTABLE
` No prima facie obviousness for dependent Claims 4, 5 and 12
`1.
`Zydney distinguishes voice containers from voice
`messages
`Zydney does not render obvious “wherein the instant
`voice message includes an object field” (claims 3, 4, 5
`and 12)
`Zydney teaches away from “wherein the instant voice
`message includes an action field identifying one of a
`predetermined set of permitted actions requested by the
`user” (claims 4 and 5)
`Zydney does not render obvious “wherein the messaging
`system receives connection object messages from the
`plurality of instant voice message client systems,
`wherein each of the connection object messages
`includes data representing a state of a logical connection
`with a given one of the plurality of instant voice
`message client systems” (claims 24-26)
`Zydney expressly teaches away from use of “connection
`objects” as defined in the ’622 patent
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`2.
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`3.
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`1.
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`ii
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`IPR2017-01805
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`US. Patent 8,724,622
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`2.
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`No motivation to combine Zydney with Hethmon
`because Zyndey’s transport mechanism would not have
`worked with HTTP at that time
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`VI. THE SUPREME COURT IS CURRENTLY REVIEWING THE
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`CONSTITUTIONALITY OF INTER PARTES REVIEW
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`PROCEEDINGS
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`VII. CONCLUSION
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`30
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`32
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`33
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`List of Exhibits
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`enabled com ression over HTTP
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`Exhibit No.
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`2001
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`2002
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`Declaration of William Easttom II
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`Microsoft TechNet article showing Microsoft IIS 6.0
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`iii
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`IPR2017-01805
`U.S. Patent 8,724,622
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`I.
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`INTRODUCTION
`Petitioner Apple Inc. has now filed four petitions for inter partes review
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`against U.S. Patent No. 8,724,622 (“the ’622 patent”) owned by Uniloc Luxembourg
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`S.A. (“Patent Owner”). See IPR2017-0223, IPR2017-0224, IPR2017-1804 (filed
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`concurrently with the present Petition), and IPR2017-1805 (the present Petition).
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`The Board denied institution on Apple’s first pair of petitions. See IPR2017-0223
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`and IPR2017-0224. As a procedural matter, the Board should deny the instant
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`Petition under 35 U.S.C. § 325(d) because Petitioner provides no persuasive
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`justification for its latest piecemeal and harassing challenges based on a combination
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`of references it admittedly knew of a year ago. Contrary to what Petitioner alleges,
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`the non-exhaustive example factors set forth in Blue Coat Systems v. Finjan1 confirm
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`the present facts warrant denial pursuant to 35 U.S.C. § 325(d).
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`Even if the Board were inclined to consider the merits of the present Petition,
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`notwithstanding the fact that the present circumstances invoke 35 U.S.C. § 325(d),
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`the Petition is admittedly duplicative of the petition filed in IPR2017-1667 and,
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`consequently, the instant Petition has at least the same substantive deficiencies
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`previously identified in Patent Owner’s Preliminary Response filed in that earlier
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`matter. See IPR2017-1667.
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`1 IPR2016-01443, Paper 13, pp. 8-9.
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`1
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`IPR2017-01805
`U.S. Patent 8,724,622
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`II. RELATED MATTERS OF THE ’622 PATENT
`The ’622 patent is in a family of patents including United States Patent Nos.
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`7,535,890 (the ’890 Patent); 8,243,723 (the ’723 Patent); 8,199,747 (the ’747
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`Patent); and 8,995,433 (the ’433 Patent). The diagram below illustrates how this
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`family of patents are interrelated by priority claims.
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`Petitioner has filed eight of the thirty-six petitions for inter partes review filed
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`against these five patents, as highlighted in the table below. See Case Nos. IPR2017-
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`0220, -221, -222, -223, -224, -225, -1804, and -1805. No less than eighteen inter
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`2
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`parres review petitions filed against this family of patents predate Petitioner’s latest
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`IPR2017-01805
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`U. S. Patent 8,724,622
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`filings.
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`Apple
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`Apple
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`Apple
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`Apple
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`Apple
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`Apple
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`Facebook / WhatsApp
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`Facebook / WhatsApp
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`Facebook / WhatsApp
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`Facebook / WhatsApp
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`Facebook / WhatsApp
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`Facebook / WhatsApp
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`Facebook / WhatsApp
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`Snap
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`Snap
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`Facebook / WhatsApp
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`Facebook / WhatsApp
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`Facebook / WhatsApp
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`Samsung Elec
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`Samsung Elec
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`Samsung Elec
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`Samsung Elec
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`Samsung Elec
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`Samsung Elec
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`Apple
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`mow-0220
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`1 6
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`IPR2017-0221
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`4
`l -Nov-l6
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`IPR2017-0222
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`14-Nov-16
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`IPR2017-0223
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`14-Nov-16
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`IPR2017-0224
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`14-Nov—16
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`[91120110225
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`14-Nov-
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`1 6
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`'890
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`'723
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`'622
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`'622
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`IPR2017-1804
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`20-Jul-17
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`US. Patent 8,724,622
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`IPR2017-01805
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`Petitioner
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`IPR#
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`Date
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`Patent
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`Huawei / LG Electronics
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`LG Electronics / Huawei
`IPR2017-2088
`11—Sep—17
`'433
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`Google/Huawei/Motorola
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`mm
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`Google/Huawei/Motorola
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`Google/Huawei/Motorola
`IPR20] 7-2084
`1 l—Sep— l 7
`'890
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`As shown in the table above, on November 14, 2016, Apple Inc. filed two
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`petitions against the ’622 patent (case Nos. IPR2017—00223 and IPR2017—00224).
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`On May 25, 2017, the Board fully denied (at the preliminary stage) both of those
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`petitions.
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`Having failed in its initial attempts to present a prima facie challenge, and
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`with the benefit of a year’s worth of multiple filings in these related matters,
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`Petitioner now seeks additional bites at the apple by concurrently filing two
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`additional petitions against the ’622 patent (case nos. IPR2017-1804 and IPR2017-
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`1805). Notably, Petitioner filed its latest challenges on the eve of the one-year
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`§315(b) time bar. See 35 U.S.C. § 315(b) (“An inter partes review may not be
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`instituted if the petition requesting the proceeding is filed more than 1 year after the
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`date on which the petitioner .
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`.
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`. is served with a complaint alleging infringement of
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`4
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`IPR2017-01805
`U.S. Patent 8,724,622
`the patent). It is also worth noting that Petitioner concurrently filed its latest round
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`of petitions on the same day (July 20, 2017) that Samsung Elec. filed its six petitions
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`against this patent family. Although presumably the parties coordinated their efforts,
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`neither party identifies the other as a real party in interest.
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`The instant Petition neglects to identify all the related matters pursuant to the
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`requirements of 37 C.F.R. § 42.8(b)(2) and 35 U.S.C. § 312(a)(4). The Board has
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`previously held that “[t]he Petition’s failure to comply with 37 C.F.R. § 42.8(b)(2),
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`and thus also 35 U.S.C. § 312(a)(4), could be grounds for denial of the Petition.” See
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`Apple, Inc. v. ContentGuard Holdings, Inc., IPR2015-00356, Paper No. 9 (P.T.A.B.
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`June 26, 2015) (Decision Denying Institution of Inter Partes Review) (citations
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`omitted). In its decision denying institution, the Board offered the following
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`explanation:
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`A petition for an inter partes review “may be considered only if,”
`among other things, ‘the petition provides such other information
`as the Director may require by regulation.” 35 U.S.C. § 312(a)(4).
`In that regard, the Director requires a petitioner to include certain
`mandatory notices with its petition. 37 C.F.R. § 42.8(a)(1). The
`mandatory notices include a requirement to “[i]dentify any other
`judicial or administrative matter that would affect, or be affected
`by, a decision in the proceeding.” 37 C.F.R. § 42.8(b)(2) (titled
`“Related matters”); see also 35 U.S.C. § 312(a)(4). “Judicial
`matters include actions involving the patent in federal court.
`Administrative matters include every application and patent
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`5
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`U.S. Patent 8,724,622
`claiming, or which may claim, the benefit of the priority of the
`filing date of the party’s involved patent or application as well as
`any ex parte and inter partes reexaminations for an involved
`patent.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
`48,760 (Aug. 14, 2012).
`Id., at pp. 5-6. At a minimum, the Petition fails to notify the Board of all the related
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`inter parties review matters listed in the table above which predate the filing of the
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`present Petition. This procedural deficiency provides independent grounds for denial
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`of the Petition, particularly given Apple Inc. has been admonished by the Board
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`already for this very defect. See Apple, Inc. v. ContentGuard Holdings, Inc.,
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`IPR2015-00356, Paper No. 9 (P.T.A.B. June 26, 2015) (Decision Denying
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`Institution of Inter Partes Review) (citations omitted).
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`The instant Petition does provide what appears to be an accurate summary of
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`pending litigation related to the ’622 patent. Pet. 1-3.
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`III. THE BOARD SHOULD DENY INSTITUTION UNDER § 325(d)
`After twice failing in its attempt to challenge the validity of the ’622 patent,
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`and with the benefit of Patent Owner’s Preliminary Responses and the Board’s
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`decisions in those matters, Petitioner now seeks third and fourth attempts to
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`challenge the same claims previously addressed. In doing so, Petitioner makes no
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`attempt to differentiate the art it now cites from the art cited in the previously-denied
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`petitions (IPR2017-00223 and IPR2017-00224). Such piecemeal and harassing
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`attacks against the same patent invokes 35 U.S.C. § 325(d).
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`6
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`IPR2017-01805
`U.S. Patent 8,724,622
`To the extent the example and non-exhaustive factors set forth in Blue Coat
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`Systems v. Finjan 2 are informative to the present analysis, they only serve to confirm
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`that § 325(d) applies here. The first factor, “the finite resources of the Board,”
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`disfavors permitting Petitioner to serially-file multiple petitions against the same
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`patent. Id. The second factor (addressing the one-year requirement under 35 U.S.C.
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`§ 316(a)(11)) is neutral at best, given that multiplying a proceeding with multiple
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`Petitioner can only put further strain on the Board regarding this statutory
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`requirement. The third factor, “whether the same petitioner previously filed a
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`petition directed to the same claims of the same patent” is directly applicable here
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`and independently confirms denial is appropriate. Id.
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`The fourth factor, “whether, at the time of filing of the earlier petition, the
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`petitioner knew of the prior art asserted in the later petition or should have known of
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`it,” also confirms denial is appropriate. Id. While Petitioner vaguely alleges that its
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`search for “prior art did not uncover Zydney, Shinder, Clark, and Appelman” (Pet.
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`76-77), Petitioner makes no attempt to support that allegation with a sworn
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`declaration or an explanation of the how it had previously conducted its prior art
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`searches in a manner that did not encompass the references it now cites.
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`2 IPR2016-01443, Paper 13, pp. 8-9 (collecting cases). Notably, nothing in the Blue
`Coat order suggests its example factors are exhaustive or provide a bright-line test
`as to whether 35 U.S.C. § 325(d).
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`7
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`U.S. Patent 8,724,622
`Regardless whether Petitioner actually knew of the Zydney, Shinder, Clark,
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`and Appelman references at the time of the earlier filings, the evidence before the
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`Board confirms Petitioner should have known of those references. Apple Inc. can
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`hardly be considered a small enterprise without resources to conduct a thorough
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`search for what it considers to be the best prior art. Moreover, Petitioner admits that
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`it knew of the references cited in the present Petition within mere weeks of filing its
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`original petitions in Case Nos. IPR2017-0223 and IPR2017-0224. Pet. 77. Petitioner
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`provides no explanation for why it was able to locate the cited references in
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`December 2016, but was purportedly unable to do so just a few weeks earlier (i.e.,
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`as of the filing date of the prior petitions). Given that nearly coincident timing, it is
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`reasonable to conclude Petitioner should have known of those references as of the
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`earlier filings.
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`Turning to the references themselves, the primary reference cited in the instant
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`petition (Zydney) is a PCT patent application that is text searchable using the same
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`free online search engines Petitioner no doubt used in selecting the U.S. patents cited
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`in the pair of denied petitions. The same is true for the Appelman and Clark
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`references, which are both U.S. patents. Similarly, it should not have been difficult
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`for Apple Inc. to have located the Shinder reference a few weeks earlier. Given the
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`overwhelming evidence that Petitioner should have known of these references as of
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`8
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`IPR2017-01805
`U.S. Patent 8,724,622
`the original petitions, the fourth example factor of Blue Coat independently confirms
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`denial is appropriate.
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`The fifth factor also favors denial—i.e., “whether, at the time of filing of the
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`later petition, the petitioner already received the patent owner’s preliminary response
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`to the earlier petition or received the Board’s decision on whether to institute review
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`in the earlier petition.” Blue Coat, PR2016-01443, Paper 13, pp. 8-9. Here, Petitioner
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`now seeks through joinder to derive the benefit provided at least by Patent Owner’s
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`two preliminary responses (both filed on March 17, 2017) and the Board’s two
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`decisions to deny institution (both dated May 25, 2017).
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`The sixth and seventh factors strongly favor denial. The sixth factor addresses
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`“the length of time that elapsed between the time the petitioner learned of the
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`prior art asserted in the later petition and the filing of the later petition.” Blue Coat,
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`PR2016-01443, Paper 13, pp. 8-9. The seventh factor is “whether the petitioner
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`provides adequate explanation for the time elapsed between the filing dates of
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`multiple petitions directed to the same claims of the same patent.” Id. Petitioner
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`offers no explanation whatsoever for why it waited nearly a year, indeed the very
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`last day before expiration of the statutory time bar, before attempting to challenge
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`the same claims of the ’622 patent based on the references cited in the present
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`Petition. The Board in Blue Coat emphasized similar circumstances as strongly
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`favoring denial:
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`9
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`U.S. Patent 8,724,622
`Further, as Patent Owner points out (Prelim. Resp. 12), the
`instant Petition was filed on the one-year anniversary of the
`filing of Patent Owner’s complaint against Petitioner in the
`district court on July 15, 2015—i.e., just before the raising of
`the bar against further challenges by Petitioner to any claims
`of the ’494 patent. … Thus, it is appropriate to consider the
`harassing impact that the resulting piecemeal challenges have
`on Patent Owner in defending its patent.
`Blue Coat Systems v. Finjan, IPR2016-01443, Paper 13, pp. 14-15 (citations
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`omitted).3
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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.” Petitioner provides
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`no explanation for why the arguments and art cited in its Petition differ in any way
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`from either the art cited during prosecution or the art Petitioner previously cited in
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`Case No. IPR2017-0223.
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`For the foregoing reasons, each one of the eight model factors set forth in Blue
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`Coat provides an independent basis to confirm the Board should deny the Petition
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`under § 325(d).
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`3 Notably, the Board in Blue Coat stated “[t]hese various considerations also inform
`our consideration of the first and second factors.” Id. (citing Alarm.com Inc. v. Vivint,
`Inc., Case IPR2016-01091, slip op. at 13 (PTAB Nov. 23, 2016) (Paper 11)).
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`10
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`IPR2017-01805
`U.S. Patent 8,724,622
`IV. PETITIONER WILL BE ESTOPPED UNDER 35 U.S.C. § 315(e)(1)
`35 U.S.C. § 315(e)(1) will estop Petitioner from maintaining this IPR. As
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`explained in the preceding section, Petitioner’s grounds raised in the current Petition
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`either were raised or “reasonably could have been raised” in either of Petitioner’s
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`two previous petitions concerning the ’622 Patent, mandating dismissal of this
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`proceeding.
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`V.
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`THE ’622 PATENT
` Effective Filing Date of the ’622 Patent
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`The ’622 patent is titled “SYSTEM AND METHOD FOR INSTANT VOIP
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`MESSAGING.” Ex. 1001. The ’622 patent issued from U.S. Patent Application No.
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`13/546,673, which is a continuation of U.S. Patent No. 8,243,723, which is
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`a continuation of U.S. Patent No. 7,535,890, filed on December 18, 2003. The
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`’622 patent issued on May 13, 2014. Petitioners do not contest that the ’622 patent
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`is at least entitled to an effective filing date of December 18, 2003.
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` Overview of the ’622 Patent
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`The
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`’622
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`patent
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`recognized
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`that
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`conventional
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`circuit-switched
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`communications enabled traditional telephony yet had a variety of technical
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`disadvantages that limited developing other forms of communication over such
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`networks. According
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`to
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`the ’622 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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`11
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`U.S. Patent 8,724,622
`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
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`the
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`telephone call, voice
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`communication takes place over that communication path.” Ex. 1001, 1:29-34. Ex.
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`2001 ¶18.
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`The ’622 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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`packetized digital information, such as “Voice over Internet Protocol (i.e., “VoIP”),
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`also known as IP telephony or Internet telephony.”4 Ex. 1001., 1:35-36. Ex. 2001
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`¶19.Because legacy circuit-switched devices were unable to communicate directly
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`over packet-switched networks, media gateways (114) were designed to receive
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`circuit-switched signals and packetize them for transmittal over packet-switched
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`networks, and vice versa. Ex. 1001., 2:8-18. Ex. 2001 ¶19.The conversion effected
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`4 Consistent with the ’622 patent specification, the USPTO has also recognized there
`are significant differences between circuit-switched and packet-switched networks
`during the relevant timeframe. See, e.g., U.S. Application No. 90/012,728 and
`90/012,789 (Notice of Intent to Issue Ex Parte Reexamination Certificate, dated
`April 10, 2014) at page 9, where the USPTO confirmed the following:
`
`
`Ethernet packet switching protocol, including TCP/IP, are very specific
`connectionless/packet switched protocols. In contrast to connection-
`oriented protocols, connectionless/packet switched protocols do not
`need to set up a dedicated path in advance. Rather, routers send
`fragmented messages or “packets” to their destination independently.
`Connectionless protocols have a number of advantages over
`connection-oriented protocols, including better use of available
`bandwidth.
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`12
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`U.S. Patent 8,724,622
`by media gateways (e.g., 114 and 118) highlights the fact that packetized data carried
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`over packet-switched networks (e.g., IP network 102) are different from, and are
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`incompatible with, an audio signal carried over a dedicated packet-switched circuit.
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`Ex. 1001., 2:8-21. Ex. 2001 ¶19.
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`The ’622 patent further recognized 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 over a packet-switched network. Ex.
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`1001., 2:22-53. Ex. 2001 ¶20. Rather, “conventionally, leaving a voice message
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`involves dialing the recipient’s telephone number (often without knowing whether
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`the recipient will answer), waiting for the connection to be established, speaking to
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`an operator or navigating through a menu of options, listening to a greeting message,
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`and recording the message for later pickup by the recipient. In that message, the user
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`must typically identify himself or herself in order for the recipient to return the call.”
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`Ex. 1001., 2:26-33. Ex. 2001 ¶20.
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`The inventor observed, therefore, that “notwithstanding the foregoing
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`advances in the VoIP/PSTN voice communication and voice/text messaging, there
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`is still a need in the art for providing a system and method for providing instant VoIP
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`messaging over an IP network.” Ex. 1001., 2:47-51. Ex. 2001 ¶21. In certain
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`disclosed embodiments, the ’622 patent addressed that need, in part, by providing a
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`user-accessible client (208) that is specially configured for instant voice message
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`13
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`IPR2017-01805
`U.S. Patent 8,724,622
`(IVM) and for direct communication over a packet-switched network (e.g., through
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`an Ethernet card). Ex. 1001., 12:13-14. Ex. 2001 ¶21.More specifically, the ’622
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`patent teaches that certain clients (208) are specially configured to “listen[] to the
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`input audio device 212,” “record[] the user’s speech into a digitized audio file 210
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`(i.e., instant voice message) stored on the IVM client 208,” and “transmit[] the
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`digitized audio file 210” as packetized data (e.g., using TCP/IP) over a packet-
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`switched network (e.g., network 204) “to the local IVM server 202.” Ex. 1001., 8:8-
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`11 and 8:21-22. Ex. 2001 ¶21.
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`The Petition challenges two independent (claims 3, 27, and 38) and seventeen
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`dependent claims (6-8, 10, 11, 13, 14-23, 28-35, and 39). For the convenience of the
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`Board, independent claim 3 is reproduced below:
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`3. A system comprising:
`a network interface connected to a packet-switched
`network;
`a messaging system communicating with a plurality of
`instant voice message client systems via the network
`interface; and
`a communication platform system maintaining connection
`information for each of the plurality of instant voice
`message client systems indicating whether there is a
`current connection to each of the plurality of instant
`voice message client systems,
`wherein the messaging system receives an instant voice
`message from one of the plurality of instant voice
`message client systems, and
`wherein the instant voice message includes an object field
`including a digitized audio file.
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`14
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`IPR2017-01805
`U.S. Patent 8,724,622
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`V.
`
`PERSON OF ORDINARY SKILL IN THE ART
`Petitioner allege through its declarant, Dr. Lavian, that “a person of ordinary
`
`skill in the art for purposes of the ’622 patent would have possessed at least a
`
`bachelor’s degree in computer science, computer engineering, or electrical
`
`engineering with at least two years of experience in development and programming
`
`relating to network communication systems (or equivalent degree or experience).”
`
`Pet. 6 (citing Ex. 1002 ¶¶13-15). To simplify the issues before the Board at this
`
`preliminary stage, Patent Owner does not presently offer a different definition for a
`
`person of ordinary skill in the art. Mr. Easttom opines that a POSITA is someone
`
`who would have possessed on the priority date a bachelor’s degree in electrical
`
`engineering or computer science (or equivalent degree/experience) with at least two
`
`years of experience in computer programming and software development, including
`
`the development of software for communication with other computers over a
`
`network. Ex. 2001 ¶21. Mr Easttom believes Dr. Lavian’s opinions concerning a
`
`POSITA are essentially the same as his, and any differences are inconsequential to
`
`the dispute before the Board. Id.
`
`VI. PETITIONER RELIES ON INCORRECT CLAIM CONSTRUCTION
`Petitioner seeks to construe two terms: (1) “connection object messages”; and
`
`(2) “communication platform system.” Patent Owner agrees with Petitioner’s
`
`proposed construction of “connection object messages”. However, Petitioner’s
`
`15
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`
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`IPR2017-01805
`U.S. Patent 8,724,622
`proposed definition of “communication platform system” should be rejected as
`
`violating fundamental canons of claim construction equally applicable in this forum
`
`when applying the broadest reasonable interpretation. Petitioner’s reliance on
`
`incorrect claim constructions taints the entire Petition and provides an independent
`
`basis for denial at the preliminary stage.
`
`
`
`“communication platform system”
`
`Petitioner’s argument that “communication platform system” should be
`
`construed to mean a “system of the server which relays communications and/or tracks
`
`client connection information” should also be rejected. See Pet. at 8. Petitioner’s
`
`construction fails because the claims themselves of the ’622 Patent defines
`
`“communication platform system”:
`
`“a communication platform system maintaining connection information for
`each of the plurality of instant voice message client systems indicating
`whether there is a current connection to each of the plurality of instant voice
`message client systems”
`
`e.g. EX1001, 24:19-22 (emphasis added). Additionally, Fig. 8 of the ’622 Patent
`
`illustrates:
`
`16
`
`
`
`IPR2017-01805
`
`US. Patent 8,724,622
`
`608
`
`
`
`COMMUNICATION PLATFORM
`
`
`
`MESSAGING
`SYSTEM
`lDCAL SERVER
`MANAGER
`
`
`
`FIG. 8
`
`’622 Patent, Fig. 8 (red box added). Therefore, the claims of the ‘622 Patent
`
`define the “communications platform system” to be required to perform the tasks of
`
`“maintaining connection information for each of the plurality of instant voice
`
`message client systems” and “indicating whether there is a current connection to
`
`each of the plurality of instant voice message client systems”.
`
`17
`
`
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`IPR2017-01805
`
`US. Patent 8,724,622
`
`V.
`
`NO REASONABLE LIKELIHOOD THAT AT LEAST ONE OF THE
`
`CHALLENGED CLAINIS IS UNPATENTABLE
`
`As explained above, Petitioner has now filed four separate inter partes review
`
`petitions. The present Petition challenges the patentability of claims 4, 5, 12, 24, 25,
`
`and 26 3 under 35 U.S.C. § 103(a) over the following grounds:
`
`
`
`Ground
`
`4, 5, a, 25, 26
`Zydney‘, Shindef‘, Hethm0n7
`12
`Z dn '
`, Shinder, and two other references
`
`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
`
`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 cited in
`
`the Petition- Petitioner “must specify where each element of the claim is found in
`
`the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4).
`
`The Petition should be denied as failing to meet this burden.8
`
`A patent is obvious “if the differences between the subject matter sought to
`
`be patented and the prior art are such that the subject matter as a whole would have
`
`5 Ex. 1003, PCT Patent Application No. PCT/USOO/21555 (“Zydney”).
`6 Ex. 1014, Excerpts from Debra Littlejohn Shinder, Computer Networking
`Essentials (“Shinder”).
`7 Ex. 1115, Paul S. Hethmon, Illustrated Guide to HTTP (“Hethmon”).
`8 While certain deficiencies in the Petition are addressed herein, Patent Owner
`
`hereby expressly reserves the right to address other deficiencies of the Petition in a
`full Response (and with the support of its own expert) if an inter partes review is
`instituted.
`
`18
`
`
`
`IPR2017-01805
`U.S. Patent 8,724,622
`been obvious at the time the invention was made to a person having ordinary skill
`
`in the art to which said subject matter pertains.” 35 U.S.C. § 103(a). An obviousness
`
`determination must be based on four factual inquiries: (1) the scope and content of
`
`the prior art; (2) the differences between the claims and the prior art; (3) the level of
`
`ordinary skill in the art; and (4) objective indicia of non-obviousness. KSR Int’l Co.
`
`v. Teleflex Inc., 550 U.S. 398, 406 (2007) (citing Graham v. John Deere Co. of Kan.
`
`City, 383 U.S. 1, 17-18 (1966)).
`
`If a single limitation of a claim is absent from the prior art, the claim cannot
`
`be considered obvious. See CFMT, Inc. v. YieldUp Int’l Corp., 349 F.3d 1333, 1342
`
`(Fed. Cir. 2003) (“Obviousness requires a suggestion of all limitations in a claim.”)
`
`(citing In re Royka, 409 F.2d 981, 985 (C.C.P.A. 1974)); In re Rijckaert, 9 F.3d
`
`1531, 1534 (Fed. Cir. 1993) (reversing obviousness rejection where prior art did not
`
`teach or suggest all claim limitations); Garmin Int’l, Inc. v. Patent of Cuozzo Speed
`
`Techs. LLC, Case No. IPR2012-00001, slip op. at 15 (P.T.A.B. Jan. 9, 2013)
`
`(refusing to institute an inter partes review under 35 U.S.C. § 103 where prior art
`
`did not disclose all claim limitations).
`
` No prima facie obviousness for dependent Claims 4, 5 and 12
`Claims 4, 5 and 12 all ultimately depend from claim 3 (and claim 5
`
`additionally depends from claim 4). Accordingly, dependent claims 4, 5 and 12 are
`
`all patentable over the proposed combinations at least by virtue of their dependence
`
`19
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`
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`IPR2017-01805
`U.S. Patent 8,724,622
`on a nonobvious independent claim, as explained in Patent Owner’s Preliminary
`
`Response filed in IPR2017-01667. In re Fine, 837 F.2d 1071 (Fed. Cir. 1988)
`
`(“Dependent claims are nonobvious under section 103 if the independent claims
`
`from which they depend are nonobvious.”). For the convenience of the Board, the
`
`deficiencies of IPR2017-01667 with respect to independent claim 3 are repeated
`
`below. Following that analysis addressing independent claim 3, Patent Owner
`
`identifies additional deficiencies of the present Petition with respect to claim
`
`language recited in dependent claims 4 and 5.
`
`1.
`Zydney distinguishes voice containers from voice messages
`In addressing independent claim 3, the Petition repeats the same error of
`
`IPR2017-01667 by relying exclusively on Zydney’s voice container for the
`
`limitation “wherein the instant voice message includes an object field ….” Pet. 34-
`
`46. The claim language, however, does not refer to a container for the “instant voice
`
`message” but rather refers to the “instant voice message” itself. Notably, the ’622
`
`patent repeatedly and consistently equates the “instant voice message” to the
`
`recorded audio file. EX1001, 8:7-11 (“In response to the start signal, the IVM client
`
`(softphone) 2008 listens to the input audio device 212 and records the user’s speech
`
`into a digitized audio file 210 (i.e., instant voice message) stored on the IVM client
`
`208.”); see also 8:16-17; 9:63-66; 10:36-39; 10:44-47; 12:40-41; 16:14-17; 16:20-
`
`23; 17:22-26; 18:6-9; 18:56-58; 18:62-66; 19:45-48; 20:48-51.
`
`20
`
`
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`IPR2017-01805
`U.S. Patent 8,724,622
`Alleged teachings concerning Zydney’s voice container does not render the
`
`claim language obvious at least because Zydney expressly distinguishes its voice
`
`container from its voice message. Petitioner attempts to gloss over this distinction
`
`by incorrectly asserting Zyndey “calls” voice messages by the name of voice
`
`containers.9 Even a cursory review of the refence, however, confirms that Zydney
`
`(not surprisingly) refers to its “voice messages” as “voice messages” and expressly
`
`distinguishes “voice containers” from the “voice messages” contained therein. For
`
`example, Zydney teaches a voice message is stored in a distinct container only after
`
`the voice message is generated and compressed: “the [voice] message is first
`
`acquired, compressed and then stored in a voice container 26 ….” Moreover, Zydney
`
`uses reference number 26 to refer to the containers (which are used only for
`
`transmission); and Zydney refers, instead, to reference number 30 when referring to
`
`the voice messages. EX1003, 11:1-6.
`
`At least the above disclosures confirm that Zydney’s voice container and
`
`voice message are not one and the same. Consequently, Petitioner’s exclusive
`
`
`9 Pet. 11. Notably, the only citation Petitioner offers as alleged support for conflating
`Zyndey’s “voice container” with its distinct “voice message” is that Zydney’s system
`“allows a software agent … to send, receive and store messages using voice
`containers.” Id. (citing EX1003, 2:2-3). However, that statement from Zydney
`(consistent with the remainder of the specification) in fact distinguishes the container
`from the message. One is used to send the other, just as an envelope may be used to
`mail a folded sheet of paper, though the envelope and the paper contained therein
`are readily distinguishable from one another.
`
`21
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`
`
`I
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