UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`
`
`GOOGLE INC., MOTOROLA MOBILITY LLC, HUAWEI DEVICE CO.,
`LTD., HUAWEI DEVICE USA, INC., HUAWEI INVESTMENT & HOLDING
`CO., LTD., HUAWEI TECHNOLOGIES CO., LTD., AND HUAWEI DEVICE
`(DONGGUAN) CO., LTD.
`
`Petitioners
`
`v.
`
`
`
`
`
`UNILOC LUXEMBOURG, S.A.
`
`Patent Owner
`
`
`
`
`
`IPR2017-02067
`PATENT 8,995,433
`
`
`
`
`
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`
`PURSUANT TO 37 C.F.R. §42.107(a)
`
`
`
`
`
`

`

`IPR2017-2067
`U.S. Patent 8,995,433
`
`
`Table of Contents
`
`
`I.
`
`II.
`
`INTRODUCTION
`
`THE PETITION SHOULD BE DENIED AS
`IMPERMISSIBLY REDUNDANT WITH PRIOR INTER
`PARTES REVIEW PETITIONS
`
`A.
`
`B.
`
`C.
`
`D.
`
`The Board Has Recently Confirmed Denial is Appropriate
`Under These Facts
`
`Petitioners Provide No Rational Justification for the
`Redundancy
`
`The Cases Petitioners Cite Confirm Denial Is Appropriate Here
`
`The Board’s Precedential Factors Support Denial
`
`III. PETITIONERS FAIL TO NAME ALL REAL PARTIES-
`IN-INTEREST
`
`A.
`
`B.
`
`Evidence of a Coordinated Multi-Petition Strategy
`
`Additional Evidence of Failure to Name Real Parties-In-
`Interest
`
`IV. OVERVIEW OF THE ’433 Patent
`
`A.
`
`B.
`
`Effective Filing Date of the ’433 Patent
`
`The ’433 Patent Describes and Claims Instant Voice
`Messaging over a Packet-Switched Network
`
`V.
`
`THERE IS NO REASONABLE LIKELIHOOD THAT
`ANY OF THE CHALLENGED CLAIMS ARE
`UNPATENTABLE
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Claim Construction
`
`Independent Claim 9 is Not Anticipated by Zydney
`
`Dependent Claims 10-27 Are Patentable by Virtue of Their
`Dependence on Claim 9
`
`Independent Claims 1 and 6 are not Rendered Obvious Over
`Zydney and Stern
`
`Dependent Claims 2-5, 7-8, Are Patentable by Virtue of Their
`Dependence on Claim 1
`
`1
`
`2
`
`2
`
`5
`
`6
`
`7
`
`9
`
`12
`
`15
`
`16
`
`16
`
`16
`
`18
`
`19
`
`19
`
`23
`
`23
`
`25
`
`ii
`
`

`

`IPR2017-2067
`U.S. Patent 8,995,433
`
`
`VI. THE SUPREME COURT IS CURRENTLY REVIEWING
`THE CONSTITUTIONALITY OF INTER PARTES
`REVIEW
`
`VII. CONCLUSION
`
`26
`
`26
`
`
`
`
`
`List of Exhibits
`
`Exhibit No.
`
`Description
`
`2001
`
`2002
`
`Declaration of Dr. Val DiEliius from IPR2017-01428
`
`Invalidity Contentions Submitted on March 28, 2017 in the
`
`underlying consolidated case of Uniloc USA, Inc. v. Samsung
`
`Electronic America’s, Inc., Case No. 2:16-cv-642
`
`2003
`
`Invalidity Contentions Submitted on December 16, 2016 in the
`
`underlying consolidated case of Uniloc USA, Inc. v. Samsung
`
`Electronic America’s, Inc., Case No. 2:16-cv-642
`
`iii
`
`

`

`
`
`INTRODUCTION
`
`U.S.
`8,995,433
`Uniloc Luxembourg S.A. (the “Patent Owner”) submits this Preliminary
`
`IPR2017-2067
`U.S. Patent 8,995,433
`7-1428
`Patent
`
`I.
`
`Response to Petition IPR2017-2084 for Inter Partes Review (“Pet.” or “Petition”)
`
`of United States Patent No. 8,995,433, System and Method for Instant VoIP
`
`Messaging, (“the ’433 Patent” or “EX1001”) filed by Google Inc., Motorola
`
`Mobility LLC, Huawei Device Co., Ltd., Huawei Device USA, Inc., Huawei
`
`Investment & Holding Co., Ltd., Huawei Technologies Co., Ltd., and Huawei
`
`Device (Dongguan) Co., Ltd. (“Petitioners”). The instant Petition is procedurally
`
`and substantive defective for at least the reasons set forth herein.
`
`The Board should exercise its discretion under 35 U.S.C. § 325(d) and deny
`
`the Petition because it relies on the same art and substantially the same (if not
`
`identical) arguments that are already before the Board in no less than eight IPR
`
`proceedings filed collectively by the same group of joint defendants. More
`
`specifically, Petitioners’ co-defendants already previously asserted Zydney as a
`
`primary reference (in combination with other references) in eight IPR proceedings
`
`also challenging the ’433 Patent. Presumably, the instant Petitioners strategically
`
`delayed the instant filing to benefit from Patent Owner’s Preliminary Responses and
`
`the Board’s decisions in those prior proceedings.
`
`As another fatal procedural defect supporting outright denial, there is
`
`sufficient evidence to conclude, based on public filings, that Petitioners failed to
`
`identify all real parties-in-interest. Under 35 U.S.C. § 312(a)(4), “[a] petition filed
`
`under section 311 may be considered only if … the petition provides such other
`
`information as the Director may require by regulation.”
`
`1
`
`

`

`
`
`IPR2017-2067
`U.S. Patent 8,995,433
`7-1428
`II. THE PETITION SHOULD BE DENIED AS IMPERMISSIBLY
`Patent
`U.S.
`REDUNDANT WITH PRIOR INTER PARTES REVIEW PETITIONS
`8,995,433
`The Board should exercise its discretion under 35 U.S.C. § 325(d) and deny
`
`the Petition because it relies on the same art and substantially the same (if not
`
`identical) arguments that is already before the Board in no less than eight IPR
`
`proceedings filed collectively by the same group of joint defendants. See, e.g.,
`
`IPR2017-0225, IPR2017-01427, IPR2017-01428, IPR2017-01611, IPR2017-
`
`01634, IPR2017-01801, IPR2017-02087, and IPR2017-02088.
`
`A. The Board Has Recently Confirmed Denial is Appropriate Under
`These Facts
`
`In IPR2017-01780, the Board recently held that:
`
`“On its face, § 325(d) does not contain any recitation
`
`regarding the identity of the party that previously
`
`presented the prior art; instead, the language of § 325(d)
`
`focuses solely on whether or not a petition relies on “the
`
`same or substantially the same prior art or argument
`
`previously . . . presented to the Office.” 35 U.S.C. §
`
`325(d). This stands in contrast to the estoppel provisions,
`
`for example, which only apply when the same petitioner
`
`brings a second petition for inter partes review.”
`
`IPR2017-01780, Paper 8 at 8. There, the Board found Ҥ 325(d) is not limited to
`
`instances where the petitioner is the party who previously brought the prior art to the
`
`Office’s attention.” Id. Accordingly, the Board found it was appropriate to dismiss
`
`the petition under § 325(d), where: the asserted art was identical to that presented in
`
`previous petitions, and it was the third petition challenging the patentability of the
`
`2
`
`

`

`
`
`IPR2017-2067
`U.S. Patent 8,995,433
`7-1428
`claims of the patent-at-issue as obvious based on the same prior art reference; and
`Patent
`U.S.
`8,995,433
`based on the timing of the filing of that petition, the petitioner had the benefit of the
`
`Board’s prior decisions on institution, as well as patent owner’s preliminary
`
`responses in those prior proceedings. Id. at 8-9.
`
`Here, the facts are strikingly similar to those in IPR017-01780: the asserted
`
`art, Zydney is identical to that presented in eight previous IPR proceedings; and the
`
`Petitioners also have had the benefit of the Board’s prior decisions and Patent
`
`Owner’s Preliminary Responses and Patent Owner’s Responses in those previous
`
`two IPR proceedings.1 Just as in IPR2017-01780, the Board should exercise its
`
`discretion and dismiss the Petition in its entirety.
`
`Notably, the Board also recently rejected a similar approach by Google in
`
`another matter (2017-01665) in which Google challenged another one of Uniloc’s
`
`patents. See Google v. Uniloc, IPR2017-01665, Decision Denying Institution of
`
`Inter Partes Review (PTAB Jan. 11, 2018) (Paper 10). There, the Board found
`
`persuasive Uniloc’s argument that “the burden of defending against a subsequent
`
`case based on the same art ‘would be substantial in having to twice overcome, in
`
`
`
` 1
`
` See, e.g., IPR2017-0225, Paper 6 (Patent Owner’s Preliminary Response), Paper 7
`(Board’s Decision on Institution), Paper 11 (Patent Owner’s Response); IPR2017-
`01427, Paper 7 (Patent Owner’s Preliminary Response), Paper 8 (Board’s Decision
`on Institution); IPR2017-01428, Paper 7 (Patent Owner’s Preliminary Response),
`Paper 8 (Board’s Decision on Institution); IPR2017-01611, Paper 9 (Patent Owner’s
`Preliminary Response), Paper 11 (Board’s Decision on Institution); IPR2017-01634,
`Paper 8 (Patent Owner’s Preliminary Response), Paper 10 (Board’s Decision on
`Institution); IPR2017-01801, Paper 6 (Patent Owner’s Preliminary Response);
`IPR2017-02087, Paper 7 (Patent Owner’s Preliminary Response); and IPR2017-
`02088, Paper 7 (Patent Owner’s Preliminary Response).
`
`3
`
`

`

`
`
`IPR2017-2067
`U.S. Patent 8,995,433
`7-1428
`two separate trials involving separate discovery and potentially even a separate
`Patent
`U.S.
`8,995,433
`panel, what Petitioner admits is the same arguments concerning the same
`
`combination of references.’” IPR2017-01665, Paper 10 at 21 (quoting Uniloc’s
`
`Preliminary Response, in that matter, at 6). In support of its decision to deny
`
`institution under §325(d), the Board also applied the precedential decision in
`
`General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-
`
`01357 (PTAB Sept. 6, 2017) (Paper 19). The Board explained:
`
`Although General Plastic discussed § 314(a) rather than § 325(d),
`
`General Plastic’s reasoning on this factor in particular guides how
`
`we view “shifts in the prior art asserted and the related arguments in
`
`follow-on petitions” as it relates to the burden on a Patent Owner.
`
`Id. at 17. In particular,
`
`Multiple, staggered petitions challenging the same patent and
`
`same claims raise the potential for abuse. The absence of any
`
`restrictions on follow-on petitions would allow petitioners the
`
`opportunity to strategically stage their prior art and arguments
`
`in multiple petitions, using our decisions as a roadmap, until
`
`a ground is found that results in the grant of review. All other
`
`factors aside, this is unfair to patent owners and is an
`
`inefficient use of the inter partes review process and other
`
`post-grant review processes.
`
`Id. at 17–18 (footnote omitted).
`
`Id. at 22. The reasoning the Board provided in support of its decision to deny
`
`Google’s petition in IPR2017-01665 also applies here.
`
`4
`
`

`

`
`
`IPR2017-2067
`U.S. Patent 8,995,433
`7-1428
`Petitioners Provide No Rational Justification for the Redundancy
`Patent
`U.S.
`8,995,433
`Petitioners do not provide any reasoned explanation to justify needlessly
`
`B.
`
`burdening the Board and the Patent Owner with such outright redundancy.2 To the
`
`contrary, Petitioners admit that “other IPR petitions rely on Zydney to challenge a
`
`certain subset of the ’433 Patent’s claims”. Pet. 8. Rather than justify the imposition
`
`of this unnecessary burden on the Board, Petitioners argue “the present Petition
`
`challenges all claims of the ’433 Patent.” Id. However, the instant Petition relies on
`
`Zydney in the same way as the previous petitions.
`
`The instant Petition challenges claims previously challenged in petitions
`
`which also had asserted Zydney as an allegedly invalidating reference. See e.g.,
`
`IPR2017-0225, IPR2017-01427, IPR2017-01428, IPR2017-01611, IPR2017-
`
`01634, IPR2017-01801, IPR2017-02087, and IPR2017-02088. Additionally, the
`
`instant Petition challenges claim language that was previously challenged in
`
`petitions of patents in the same family (including challenges that the Board
`
`ultimately rejected). See, e.g., IPR2017-1523, IPR2017-1524, IPR2017-1697,
`
`IPR2017-1698, IPR2017-1804, IPR2017-1805, and IPR2017-2090. The fact that the
`
`instant Petition asserts Zydney in the same way that the Board has already considered
`
`only confirms the instant Petition should be denied as unnecessarily redundant and
`
`harassing.
`
`
`
` 2
`
` In presenting vertically-redundant obviousness theories based primarily on Zydney,
`Petitioner uses cumulative secondary references only as a wedge to pry open the
`door for an additional IPR Petition. The substance of Petitioner’s arguments focuses
`either exclusively, or nearly exclusively, on Zydney (again).
`
`5
`
`

`

`
`
`IPR2017-2067
`U.S. Patent 8,995,433
`7-1428
`Contrary to what Petitioners argue, their overt redundancy is not justified
`Patent
`U.S.
`8,995,433
`simply because one of the seven Petitioners (Google) was served its respective
`
`complaint sometime after its co-petitioners. As the Petition recognizes, the instant
`
`Petitioners waited until the very eve of the one-year time bar, relative to when certain
`
`named Petitioners were served with complaints in related litigation. Those
`
`Petitioners presumably delayed their filing for a year to use Patent Owner’s prior
`
`Responses and the Board’s decisions as a roadmap to revise arguments based on the
`
`same or cumulative art of which it indisputably was aware. Notably, Google’s co-
`
`petitioners make no attempt to justify their unnecessary delay in filing the instant
`
`Petition. Those Petitioners have not and cannot inoculate their unexplained delay
`
`simply by naming Google as a co-Petitioner. On the contrary, Google is tainted by
`
`the gamesmanship and unjustified delay of its co-petitioners, if not also by its own
`
`unexplained delay.
`
`C. The Cases Petitioners Cite Confirm Denial Is Appropriate Here
`
`The cases Petitioners cite (without explanation) are distinguishable from the
`
`present facts and condemn, rather than justify, Petitioners’ overt redundancy. In
`
`Fitbit, Inc., v. BodyMedia, Inc.,3 the Board observed that the claims then at issue
`
`“were not challenged in, or subject to, the [prior proceeding].” Similarly, in Ford
`
`Motor Company, v. Paice LLC et al.,4 the Board observed that the dependent claims
`
`then at issue were not challenged in prior proceedings. The facts are distinguishable
`
`
`
` 3
`
` IPR2016-00545, Paper 8 at 8 (PTAB Aug. 8, 2016).
`4 IPR2015-00606, Paper 14 at 8 (PTAB Nov. 9, 2015).
`
`6
`
`

`

`
`
`IPR2017-2067
`U.S. Patent 8,995,433
`7-1428
`here because many of the claims in the instant Petition have been redundantly
`Patent
`U.S.
`8,995,433
`challenged in multiple grounds in multiple IPR filings that assert Zydney as an
`
`allegedly invalidating reference. See, e.g., IPR2017-1523, IPR2017-1524, IPR2017-
`
`1697, IPR2017-1698, IPR2017-1804, IPR2017-1805, and IPR2017-2090.
`
`With respect to the other two cases Petitioners cite,5 Petitioners fail to explain
`
`what specific considerations from those cases might apply here. This omission is
`
`particularly glaring given that Petitioners have the burden to prove they are entitled
`
`to the relief requested. Contrary to what Petitioners suggest, those two related cases
`
`do not stand for the proposition that each defendant in a litigation has an unfettered
`
`right to file its own independent and redundant petition based on the same or
`
`substantially similar grounds as other defendants. Such a holding would frustrate the
`
`intent and purpose of § 325(d), would discourage attempts to seek joinder, and would
`
`ultimately overwhelm the Board and anyone attempting to assert patent rights.
`
`D. The Board’s Precedential Factors Support Denial
`
`The present facts align with example factors summarized by the Board in the
`
`precedential General Plastic opinion6 as favoring denial. First, at the time of filing
`
`of the instant Petition, the Petitioners had the benefit of Patent Owner’s preliminary
`
`responses to earlier petitions (e.g., in IPR2017-1523, IPR2017-1524, IPR2017-1697,
`
`
`
` 5
`
` Pet. at 8 (citing Sony Mobile Communications (USA) Inc., v. EWatch, Inc.,
`IPR2015-00402, Paper 7 (PTAB July 1, 2015) and related case Apple Inc., v.
`EWatch, Inc., IPR2015-00414, Paper 13 (PTAB July 1, 2015)).
`6 General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357,
`Paper 19 (P.T.A.B. Sept. 6, 2017) (precedential decision denying institution of inter
`partes review and summarizing factors to consider).
`
`7
`
`

`

`
`
`IPR2017-2067
`U.S. Patent 8,995,433
`7-1428
`IPR2017-1698, IPR2017-1804, IPR2017-1805, and IPR2017-2090) and further had
`Patent
`U.S.
`8,995,433
`the benefit of the Board’s decision on whether to institute review in those earlier
`
`petitions. Id. at 9 (factor 3, citations omitted).
`
`Second, there is irrefutable evidence that Petitioners either knew of the
`
`references cited in the Petition, or should have known of them, long before the filing
`
`date of the Petition. Petitioners are conspicuously silent on when they first learned
`
`of the cited references. In any event, Petitioners cannot escape the demonstrable fact
`
`that the references cited in the Petition (including the primary Zydney reference) are
`
`identified by Petitioners in their joint invalidity contentions dated March 28, 2017.
`
`Notably, Petitioners copied those invalidity contentions (nearly verbatim) from the
`
`contentions filed over three months earlier by the remainder of the joint defendants
`
`on December 16, 2016. See, e.g., EX2002 at 14-15 (listing references, including
`
`“WO Patent No. 2001/011824 to Zydney”) and EX2003 at 18 (listing references,
`
`including “WO Patent No. 2001/011824 to Zydney”).
`
`These facts confirm Petitioners knew of the references cited in the Petition
`
`and the arguments set forth in the second round of invalidity contentions well before
`
`filing the finalized version of those contentions. Petitioners offer no explanation for
`
`the length of time that elapsed between the time the Petitioners first learned of the
`
`alleged prior art and the filing date of the instant Petition. General Plastic, IPR2016-
`
`01357, Paper 19, at 9 (factor 4).
`
`Third, Petitioners fail to even acknowledge the instant Petition redundantly
`
`challenges the same claims of the same ’433 Patent as prior petitions, much less offer
`
`any explanation for the time elapsed between the filing dates of multiple petitions
`
`8
`
`

`

`
`
`IPR2017-2067
`U.S. Patent 8,995,433
`7-1428
`directed to the same claims of the same patent. General Plastic, IPR2016-01357,
`Patent
`U.S.
`8,995,433
`
`Paper 19, at 9 (factors 1 and 5).
`
`Fourth, Petitioners application of Zydney in the instant Petition demonstrably
`
`relies on “the same or substantially the same prior art or arguments previously were
`
`presented to the Office” in at least the earlier-filed Petitions. General Plastic,
`
`IPR2016-01357, Paper 19, at 19 (confirming that a factor to consider under § 325(d)
`
`is whether “the same or substantially the same prior art or arguments previously were
`
`presented to the Office”).
`
`Fifth, “the finite resources of the Board” confirm denial is appropriate here.
`
`Id. at 9 (factor 6).
`
`Sixth, “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” weighs in favor of denial here. Id. at 9 (factor 7).
`
`While each one of the above factors set forth in the precedential General
`
`Plastic Order independently confirms denial is appropriate here, their collective
`
`weight overwhelmingly invokes the discretion of § 325(d). And while Petitioners
`
`have the obligation to address § 325(d) within the Petition itself, Petitioners make
`
`no mention of these factors, much less explain why they do not apply here.
`
`III. PETITIONERS FAIL TO NAME ALL REAL PARTIES-IN-INTEREST
`
`The ’433 Patent is in a family of patents including United States Patent Nos.
`
`8,724,622 (“the ’622 Patent”); 8,243,723 (“the ’723 Patent”); 7,535,890 (“the ’890
`
`9
`
`

`

`
`
`IPR2017-2067
`U.S. Patent 8,995,433
`7-1428
`Patent”); and 8,199,747 (“the ’747 Patent”).7 The diagram below how this family
`Patent
`U.S.
`8,995,433
`
`of patents is interrelated.
`
`
`
`The Petitioners collectively have initiated nine of the thirty-six IPRs filed
`
`against these five patents, as highlighted below. Nearly all those thirty-six IPR
`
`petitions (33 of 36) initiated against these related patents predate the present Petition.
`
`
`
` 7
`
` All five related patents derive from United States Patent Application
`No. 10/740,030 and are referred to collectively as members of the ’622 Patent’s
`“family.”
`
`10
`
`

`

`
`
`Apple
`
`Apple
`
`Apple
`
`Apple
`
`Apple
`
`Apple
`
`IPR2017-0222
`
`14-Nov-16
`
`IPR2017-0223
`
`14-Nov-16
`
`IPR2017-0224
`
`14-Nov-16
`
`IPR2017-0225
`
`14-Nov-16
`
`Facebook / WhatsApp
`
`IPR2017-1257
`
`7-Apr-17
`
`Facebook / WhatsApp
`
`IPR2017-1365
`
`3-May-17
`
`Facebook / WhatsApp
`
`IPR2017-1427
`
`11-May-17
`
`Facebook / WhatsApp
`
`IPR2017-1428
`
`11-May-17
`
`Facebook / WhatsApp
`
`IPR2017-1523
`
`Facebook / WhatsApp
`
`IPR2017-1524
`
`2-Jun-17
`
`2-Jun-17
`
`Facebook / WhatsApp
`
`IPR2017-1667
`
`22-Jun-17
`
`Petitioner
`
`IPR#
`IPR2017-0220
`
`IPR2017-0221
`
`IPR2017-2067
`U.S. Patent 8,995,433
`7-1428
`Patent
`Patent
`’890
`
`Date
`U.S.
`14-Nov-16
`8,995,433
`14-Nov-16
`
`’890
`
`’723
`
`’622
`
`’622
`
`’433
`
`’747
`
`’723
`
`’433
`
`’433
`
`’890
`
`’890
`
`’622
`
`’433
`
`Snap
`
`Snap
`Facebook / WhatsApp
`
`Facebook / WhatsApp
`
`Facebook / WhatsApp
`
`Samsung Elec
`
`Samsung Elec
`
`Samsung Elec
`
`Samsung Elec
`
`Samsung Elec
`
`Samsung Elec
`
`Apple
`
`Apple
`
`IPR2017-1611
`
`15-Jun-17
`
`IPR2017-1612
`
`16-Jun-17
`
`IPR2017-1634
`
`16-Jun-17
`
`IPR2017-1635
`
`16-Jun-17
`
`IPR2017-1636
`IPR2017-1797
`
`IPR2017-1798
`
`IPR2017-1799
`
`IPR2017-1800
`
`IPR2017-1801
`
`IPR2017-1802
`
`IPR2017-1804
`
`IPR2017-1805
`
`16-Jun-17
`20-Jul-17
`
`20-Jul-17
`
`20-Jul-17
`
`20-Jul-17
`
`20-Jul-17
`
`20-Jul-17
`
`20-Jul-17
`
`20-Jul-17
`
`LG Electronics
`
`IPR2017-2087
`
`11-Sep-17
`
`
`
`
`
`’890
`
`’433
`
`’723
`
`’890
`’622
`
`’622
`
`’747
`
`’723
`
`’433
`
`’890
`
`’622
`
`’622
`
`’433
`
`11
`
`

`

`
`
`LG Electronics / Huawei
`
`IPR2017-2088
`
`LG Electronics / Huawei
`
`IPR2017-2090
`
`Google/Huawei/Motorola
`
`IPR2017-2080
`
`IPR2017-2067
`U.S. Patent 8,995,433
`7-1428
`’433
`Patent
`’622
`
`11-Sep-17
`
`U.S.
`11-Sep-17
`8,995,433
`12-Sep-17
`
`’622
`
`’622
`
`’890
`
`’890
`
`’890
`
`’433
`
`’747
`
`Google/Huawei/Motorola
`
`IPR2017-2081
`
`12-Sep-17
`
`Google/Huawei/Motorola
`
`IPR2017-2082
`
`11-Sep-17
`
`Google/Huawei/Motorola
`
`IPR2017-2083
`
`11-Sep-17
`
`Google/Huawei/Motorola
`
`IPR2017-2084
`
`11-Sep-17
`
`Google/Huawei/Motorola
`
`IPR2017-2067
`
`12-Sep-17
`
`Google/Huawei/Motorola
`
`IPR2017-2085
`
`11-Sep-17
`
`A. Evidence of a Coordinated Multi-Petition Strategy
`
`The same joint defendants who coordinated in preparing joint invalidity
`
`contentions in related litigation used those contentions as a playbook in collectively
`
`filing thirty-six IPR petitions. Each petition only names a subset of the defendants
`
`as avatars for respective challenges that can be traced back to joint invalidity
`
`contentions filed with the district court. An overview of the IPR petitions reveals a
`
`significant overlap and pattern in the arguments presented. This coordinated
`
`onslaught of petitions could be the poster children for abuse of the IPR process.
`
`Over a year ago, on November 14, 2016, Apple concurrently filed 6 IPR
`
`petitions (IPRs 2017-0220 through 0225), challenging at least 71 patent claims in 4
`
`of the 5 related patents—the ’433, ’622, ’723, and ’433 Patents—using at least 18
`
`combinations of 13 references: Abburi, Dahod, Daniell, Deshpande, Hogan,
`
`Holtzberg, Lerner, Logan, Malik, SMSS, Stubbs, Väänänen, Vuori.
`
`In April and June 2017, Facebook filed 9 IPR petitions (IPR2017-1257, 1365,
`
`1427, 1428, 1523, 1524, 1634, 1667, and 1668) challenging 96 claims of the same 5
`
`related patents—using at least 18 combinations of 16 references (references retread
`
`12
`
`

`

`
`
`IPR2017-2067
`U.S. Patent 8,995,433
`7-1428
`from the earlier filings are in bold italics): Abburi, Appelman, Clark, Greenlaw,
`Patent
`U.S.
`8,995,433
`Hethmon, Holtzberg, Logan, Malik, Martin-Flatin, Microsoft, Moghe, Newton,
`
`Shinder, Väänänen, Vuori, and Zydney.8
`
`In July 2017, Samsung filed 6 IPR petitions (IPR2017-1797 through 1802)
`
`challenging 80 patent claims, many on multiple grounds, in 5 related patents—the
`
`’433, ’622, ’723, ’890, and ’747 Patents—using at least 10 combinations of 9
`
`references: Aravamudan, Clark, Griffin, Lee, Low, Malik, Väänänen, Vuori, and
`
`Zydney.9
`
`More recently, in September 2017, the present group of Petitioners
`
`collectively filed 9 IPR Petitions (IPR2017-2067 and IPR2017-2080 through 2085,
`
`IPR2017-2088, and IPR2017-2090) challenging well over 150 patent claims in 4 of
`
`the 5 related patents—the ’433, ’622, ’890, and ’747 Patents—using dozens of
`
`combinations
`
`involving now-familiar
`
`references: Aggarwal, Appelman,
`
`Bartholemew, Boneh, Coussement, Clark, Demsky, Enete, Erekson, Gralla,
`
`Greenlaw, Katsef, Newton, Okano, Oppenheimer, RFC793, RFC2131, Shinder,
`
`Stern, Trapani, and Zydney.
`
`Of the thirty-six IPRs that have been filed against the patents in this family, at
`
`least twenty-five IPRs—including the instant Petition—rely primarily on the same
`
`Zydney reference. Two of those petitions relied on Zydney in challenging the same
`
`
`
` 8
`
` IPR2017-1667 and IPR2017-1668 argued that claims of the ’622 Patent are obvious
`over Zydney and Shinder.
`9 IPR2017-1697 and IPR2017-1698 argued that claims of the ’622 Patent are obvious
`over Zydney and Griffin.
`
`13
`
`

`

`
`
`IPR2017-2067
`U.S. Patent 8,995,433
`7-1428
`’433 Patent at issue here. See IPR2017-1257 and IPR2017-1799. The instant Petition
`Patent
`U.S.
`8,995,433
`offers redundant anticipation challenges based (yet again) on Zydney.
`
`Petitioners clearly are gaming the system. The inter partes review system is
`
`not a piñata party in which each member of a joint defense group can take a turn
`
`swinging at Patent Owner’s patents with the Zydney stick. Petitioners appear to be
`
`playing the odds: if Petitioners keep filing IPR Petitions against the ’433 Patent,
`
`Petitioners will eventually overwhelm the Board and Patent Owner.10 “The absence
`
`of any restrictions on follow-on petitions would allow petitioners the opportunity to
`
`strategically stage their prior art and arguments in multiple petitions, using our
`
`decisions as a roadmap, until a ground is found that results in the grant of review.”
`
`General Plastic Industrial Co. Ltd v. Canon Kabushiki Kaisha, IPR2016-1357,
`
`Decision Denying Petitioner’s Request for Rehearing, Paper No. 19 at 17.11
`
`For the foregoing reasons, the Board should reject the instant Petition outright
`
`as facially redundant with prior petitions.
`
`
`
`10 “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.
`11 See also LG Elecs. Inc. v. Core Wireless Licensing S.A.R.L., Case IPR2016-00986
`(P.T.A.B. 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 (P.T.A.B. Oct. 14, 2014) (Paper 8) (“[T]he four obviousness grounds are
`‘second bites at the apple’”).
`
`14
`
`

`

`
`
`IPR2017-2067
`U.S. Patent 8,995,433
`7-1428
`B. Additional Evidence of Failure to Name Real Parties-In-Interest
`Patent
`U.S.
`8,995,433
`Even at this preliminary stage, there is sufficient evidence to conclude
`
`Petitioners failed to name all real parties-in-interest. Petitioners jointly submitted
`
`invalidity contentions on March 28, 2017 that are largely duplicative of the invalidity
`
`contentions filed on December 16, 2016 by other members of the same joint-defense
`
`group. See EX2002 and EX2003. In addition to that apparent coordination in joint
`
`invalidity contentions, members of this same joint defense group admittedly
`
`coordinated in various IPR filings. These filings have been based on references
`
`named in the joint invalidity contentions and known before the original IPR was
`
`filed.
`
`The present Petitioners collectively filed nine IPRs over the space of two days
`
`(September 11-12, 2017) and, not coincidentally, at the same time LG Electronics
`
`filed a tenth IPR challenge (IPR2017-2087). LG Electronics and Huawei admittedly
`
`coordinated their efforts at least in filing the petitions in IPR2017-2090 and
`
`IPR2017-2088. The currently-filed petition in IPR2017-2087 and IPR2017-2088
`
`challenges the same ’433 Patent at issue in the instant Petition, based on largely
`
`overlapping (and hence redundant) arguments. At a minimum, therefore, joint-
`
`defendant LG Electronics should also have been named as a real party in interest in
`
`the instant petition. The failure to name all real parties-in-interest provides an
`
`independent basis to deny the Petition.12
`
`
`
`12 Notably, Google is the only named Petitioner to claim it is “not a real party-in-
`interest to any of” the admittedly related IPR proceedings identified in the Petition.
`
`
`15
`
`

`

`
`
`IV. OVERVIEW OF THE ’433 Patent
`
`A. Effective Filing Date of the ’433 Patent
`
`IPR2017-2067
`U.S. Patent 8,995,433
`7-1428
`Patent
`
`U.S.
`8,995,433
`
`The ’433 Patent is titled “SYSTEM AND METHOD FOR INSTANT VOIP
`
`MESSAGING.” Ex. 1001. The ’433 Patent issued from U.S. Patent
`
`Application No. 14/244,125, which is a continuation of U.S. Patent No. 8,724,622,
`
`8,243,723, which is a continuation of U.S. Patent No. 7,535,890, filed on Dec. 18,
`
`2003. The ’433 Patent issued on March 31, 2015.
`
`B.
`
`The ’433 Patent Describes and Claims Instant Voice Messaging
`over a Packet-Switched Network
`
`The
`
`’433 Patent
`
`recognized
`
`that
`
`conventional
`
`circuit-switched
`
`communications enabled traditional telephony yet had a variety of technical
`
`disadvantages that limited developing other forms of communication over such
`
`networks. According to the ’433 Patent, “[c]ircuit switching provides a
`
`communication path (i.e., dedicated circuit) for a telephone call from the telephone
`
`terminal to another device 20 over the [public switched telephone network or] PSTN,
`
`including another
`
`telephone
`
`terminal. During
`
`the
`
`telephone call, voice
`
`communication takes place over that communication path.” Ex. 1001, 1:29-34.
`
`The ’433 Patent expressly distinguishes circuit-switched networks from
`
`packet-switched networks (e.g., the Internet) at least in that the latter routes
`
`packetized digital information, such as “Voice over Internet Protocol (i.e., “VoIP”),
`
`
`
`Pet. 5. Not only is this unexplained claim by Google questionable, the other named
`Petitioners are conspicuously silent as to whether they claim to not be a real party-
`in-interest in the related matters.
`
`
`16
`
`

`

`
`
`IPR2017-2067
`U.S. Patent 8,995,433
`7-1428
`also known as IP telephony or Internet telephony.” 13 Id., 1:35-36. Because legacy
`Patent
`U.S.
`8,995,433
`circuit-switched devices were unable to communicate directly over packet-switched
`
`networks, media gateways (114) were designed to receive circuit-switched signals
`
`and packetize them for transmittal over packet-switched networks, and vice versa.
`
`Id., 2:8-18. The conversion effected by media gateways (e.g., 114 and 118)
`
`highlights the fact that packetized data carried over packet-switched networks (e.g.,
`
`IP network 102) are different from, and are incompatible with, an audio signal
`
`carried over a dedicated packet-switched circuit. Id., 2:8-21.
`
`The ’433 Patent further recognized that, notwithstanding the advent of instant
`
`text messages, at the time of the claimed invention there was no similarly convenient
`
`analog to leaving an instant voice message over a packet-switched network. Id.,
`
`2:22-53. Rather, “conventionally, leaving a voice message involves dialing 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
`
`navigating through a menu of options, listening to a greeting message, and recording
`
`
`
`13 Consistent with the ’433 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.”
`
`17
`
`

`

`
`
`IPR2017-2067
`U.S. Patent 8,995,433
`7-1428
`the m