`UNITED STATES PATENT AND TRADEMARK OFFICE
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`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`__________________
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`GOOGLE LLC,
`Petitioner,
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`v.
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`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
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`__________________
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`Case IPR2017-02080
`Patent No. 8,724,622
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`______________________
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`PETITIONER’S REQUEST FOR REHEARING
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`Proceeding No. IPR2017-02080
`Attorney Docket No. 19473-0370IP1
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`Petitioner hereby requests rehearing under 37 CFR § 42.71(d) in response to
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`the non-institution decision (“Decision”) in proceeding IPR2017-02080.
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`I.
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`INTRODUCTION AND STATEMENT OF RELIEF REQUESTED
`In the Decision, the Board found that the Petition failed to demonstrate a
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`reasonable likelihood that claims 3-23 of U.S. Patent 8,724,622 (“the ’622 patent”)
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`would be found unpatentable based on Grounds 1-5 of the Petition.
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`Petitioner requests that the Board reconsider its Decision in light of evidence
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`in the Petition that was misapprehended or overlooked, including Petitioner’s cited
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`evidence of what type of data element constitutes an express disclosure falling
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`within the scope of the “object field” claim element recited in independent claim 3.
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`Proper consideration of the evidence on this issue compels a conclusion that
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`Grounds 1-5 (anticipation based on Zydney or obviousness based on Zydney in
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`view of Enete, Stern, Coussement, or RFC2131) provide a reasonable likelihood of
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`Petitioner prevailing against each of claims 3-23 of the ’622 patent. Therefore,
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`based upon the full record, the Board should institute inter partes review of claims
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`3-23 based on Grounds 1-5 of the Petition.
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`II. LEGAL STANDARDS
`A request for rehearing “must specifically identify all matters the party
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`believes the Board misapprehended or overlooked, and the place where each
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`matter was previously addressed in a motion, an opposition, or a reply.” 37 CFR §
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`1
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`Proceeding No. IPR2017-02080
`Attorney Docket No. 19473-0370IP1
`42.71(d). “When rehearing a decision on petition, a panel will review the decision
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`for an abuse of discretion.” 37 CFR § 42.71(c). “An abuse of discretion is found
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`if the decision: (1) is clearly unreasonable, arbitrary, or fanciful; (2) is based on an
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`erroneous conclusion of law; (3) rests on clearly erroneous fact finding; or (4)
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`involves a record that contains no evidence on which the Board could rationally
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`base its decision.” Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821
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`F.3d 1359, 1367 (Fed. Cir. 2016); Koninklijke Philips Electronics N.V. v. Cardiac
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`Science Operating Co., 590 F.3d 1326, 1334 (Fed. Cir. 2010).
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`III. BASIS FOR RELIEF REQUESTED
`A. The Decision Misapprehends or Overlooks Petitioner’s Evidence
`About The Scope Of The Term “Object Field”
`Rehearing is appropriate because the Decision misapprehended or
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`overlooked Petitioner’s cited evidence showing what is encompassed within the
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`scope of the term “object field,” as recited in independent claim 3. In particular,
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`the Petition explained that:
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`Claim 3 requires that the recited ‘instant voice message’ have an
`‘object field’ that includes a ‘digitized audio file.’ Thus, under BRI,
`the recited ‘object field’ is a field of a data packet that includes a
`digitized audio file.
`Petition, 18 (emphasis added). The Petition also cites Dr. Min to show that:
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`Based on the teachings of the ’622 patent, … the claimed ‘object
`field’ encompasses a data packet that includes a digitized audio file.
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`2
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`Proceeding No. IPR2017-02080
`Attorney Docket No. 19473-0370IP1
`GOOGLE1003, ¶60. Dr. Min’s testimony is based on analysis of how the term
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`“object field” is actually used in the ’622 patent. See id. As such, the cited
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`evidence in the record established that a prior art disclosure of “a data packet that
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`includes a digitized audio file” is an express disclosure of a conventional element
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`falling within the scope of the “object field” recited in independent claim 3. Id.;
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`Petition, 18.
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`Critically, the Decision misapprehended or overlooked this evidence.
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`Indeed, the Decision fails to address Petitioner’s explanation of elements falling
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`within the scope of the “object field” limitation, and also fails to explain why
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`Petitioner’s cited evidence pertaining to this fact was not considered by the Board.
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`The Decision never once acknowledges Petitioner’s reliance on Dr. Min’s
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`straightforward explanation (quoted above), nor does it cite any evidence—
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`whether from the ’622 patent, Dr. Min, Patent Owner’s declarant Mr. Easttom, or
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`elsewhere—refuting Petitioner’s express argument of what type of data element
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`constitutes a disclosure falling within the scope of “object field” under the broadest
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`reasonable interpretation standard.
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`The Decision’s failure to address Petitioner’s analysis and evidence on this
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`issue is contrary to Federal Circuit precedent, which requires the Board to consider
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`the parties’ positions and all material evidence in support of the same. See Owens
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`Corning v. Fast Felt Corp., 873 F.3d 896, 898 (Fed. Cir. 2017) (reversing PTAB
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`3
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`Proceeding No. IPR2017-02080
`Attorney Docket No. 19473-0370IP1
`decision because “once the key claim term is given its broadest reasonable
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`interpretation,” the record conclusively establishes unpatentability); see also Nestle
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`USA, Inc. v. Steuben Foods, Inc., 686 Fed. Appx. 917 (Fed. Cir. 2017); EMC Corp.
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`v. Clouding Corp., 686 Fed. Appx. 857 (Fed. Cir. 2017); SAS Inst., Inc. v.
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`ComplementSoft, LLC, 825 F.3d 1341 (Fed. Cir. 2016). By failing to address
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`Petitioner’s express argument and by failing to give proper weight to the testimony
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`evidence regarding what type of data element constitutes an express disclosure
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`falling within the scope of the recited “object field,” the Decision misapprehended
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`or overlooked critical portions of the Petition in contravention of law and the
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`Office’s own rules.1
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`B. The Decision’s Implicit Construction Of “Object Field” Is Improper
`Under BRI And Contrary To The Federal Circuit’s Recent Vacatur
`Of A PTAB Decision In Google LLC v. Network-1 Techs., Inc.
`In concluding that the Petition presents insufficient evidence that the “body”
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`of Zydney’s voice container constitutes an “object field,” the Board implicitly
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`1 Even if Patent Owner provided evidence to create a material dispute with respect
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`to Dr. Min’s testimony here (which it did not), the Decision failed to apply 37
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`C.F.R. § 42.108(c) requiring the Board to consider all testimony evidence “in the
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`light most favorable to the petitioner” for purposes of deciding whether to institute
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`an inter partes review.
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`4
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`Proceeding No. IPR2017-02080
`Attorney Docket No. 19473-0370IP1
`construed the outermost boundaries of the scope of the “object field” element in a
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`manner far narrower than what the intrinsic evidence warrants, as was shown in
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`Petitioner’s evidence cited above. Supra, Section III.A. In so doing, the Board
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`misapprehended or overlooked Petitioner’s evidence and the “broadest reasonable
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`interpretation” (“BRI”) standard that applies in this proceeding.
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`First, Petitioner’s showing of what is encompassed within the scope of
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`“object field” is reasonable. Supra, Section III.A. In fact, neither Patent Owner
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`nor the Board have ever contended that Petitioner’s showing of what is
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`encompassed within the scope of “object field” is unreasonable. After the
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`Board’s Decision here, the Federal Circuit recently vacated a PTAB decision in
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`Google LLC v. Network-1 Techs., Inc., Case Nos. 2016-2509 through 2016-2512,
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`2018 U.S. App. LEXIS 7801 (Fed. Cir. March 26, 2018), holding that, as between
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`two reasonable claim scope options, the BRI standard requires the Board to adopt
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`the broader scope for purposes of inter partes review. Google, Slip Op. at 11. The
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`Federal Circuit found error in the PTAB decision that implicitly construed a claim
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`element narrowly where the evidence provided a reasonable and broader
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`understanding of the claim scope:
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`In order to be found reasonable, it is not necessary that a claim be
`given its correct construction under the framework laid out in Phillips
`v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). … In other
`words, under the broadest reasonable construction standard, where
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`5
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`Proceeding No. IPR2017-02080
`Attorney Docket No. 19473-0370IP1
`two claim constructions are reasonable, the broader construction
`governs.
`Id. (emphasis added)); see also PPC Broadband, Inc. v. Corning Optical
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`Communs. RF, LLC, 815 F.3d 734, 742-43 (Fed. Cir. 2016) (affirming a PTAB
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`decision that properly applied the broader claim scope rather than an alleged
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`narrower scope).
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`As explained in Section III.A, supra, Petitioner’s analysis of what is
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`encompassed by the term “object field” is supported by both intrinsic and extrinsic
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`evidence—all of which is reasonable and uncontroverted. See Petition, 17-18;
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`GOOGLE1003, ¶¶60-63. In contrast, Patent Owner asserts a vague and
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`unsupported attorney argument that an “object field” is a “specific type” of field.
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`Preliminary Response, p. 22. Yet, Patent Owner never explains how an “object
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`field” differs from any other conventional type of field (supra, Section III.A) that
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`would hold a digitized audio file, and never disputes Dr. Min’s sworn testimony
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`that an “object field” would encompass a field of a data packet that includes a
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`digitized audio file. GOOGLE1003, ¶60. The Board’s Decision also includes no
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`formal construction of an “object field,” and includes no explanation of any
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`deficiency in Petitioner’s evidentiary showing of what a POSITA would have
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`understood to ordinarily fall within the scope of the recited “object field” under the
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`BRI standard. GOOGLE1003, ¶¶60-63 (cited at Petition pp. 17-19); see also id.,
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`¶62 (relying on Zydney’s page 34 and FIG. 7 and explaining why this common
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`6
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`Proceeding No. IPR2017-02080
`Attorney Docket No. 19473-0370IP1
`data structure of a “body” object field is what enabled Zydney’s software agent to
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`“locate and extract” the digitized voice message); supra, Section III.A. Under the
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`same standard that was applied by the Federal Circuit in Google, it was error for
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`the Board to employ a narrower claim scope, especially without any explanation as
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`to how Petitioner’s position was unreasonable in light of the available evidence.
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`Google, Slip Op. at 11; PPC Broadband, 815 F.3d at 742-43.
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`Second, not only was Petitioner’s showing of what is encompassed within
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`the scope of “object field” entirely reasonable, it was broader than Patent Owner’s
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`narrower view with respect to the “object field” claim element. Again, Petitioner
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`cited evidence of what type of data element constitutes an express disclosure
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`falling within the scope of the “object field” claim element under the BRI standard
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`Supra, Section III.A; GOOGLE1003, ¶60 and ¶62 (testifying that the “body”
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`object field described at Zydney’s page 34 and FIG. 7 is what enabled Zydney’s
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`software agent to “locate and extract” the digitized voice message). Patent Owner
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`never addressed this straightforward testimony from Dr. Min, and instead narrowly
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`argued for a “specific” object field that would apparently exclude Zydney’s above-
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`cited teaching of a data packet that includes a digitized audio file. The Board’s
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`Decision also implicitly construed the “object field” claim element in a narrow
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`manner to exclude Zydney’s teaching. For the reasons explained above, it was
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`error for the Board to employ such a narrower claim scope under the BRI standard.
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`7
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`Proceeding No. IPR2017-02080
`Attorney Docket No. 19473-0370IP1
`Google, Slip Op. at 11; PPC Broadband, 815 F.3d at 742-43.
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`Accordingly, on this record, the Board misapprehended or overlooked
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`Petitioner’s evidence on what is encompassed within the scope of the claimed
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`“object field” regardless of any formal construction defining the outermost
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`boundaries of that scope, and instead adopted an implicit construction of “object
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`field” that is meaningfully narrower than what is shown to be reasonable in
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`Petitioner’s cited evidence. This is contrary to the BRI standard and Federal
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`Circuit precedent.
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`IV. CONCLUSION
`For the foregoing reasons, Grounds 1-5 render all challenged claims
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`unpatentable.
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`Respectfully submitted,
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` /Michael T. Hawkins/
`Michael T. Hawkins, Reg. No. 57,867
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`Attorney for Petitioner
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`8
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`Dated: April 18, 2018
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`Proceeding No. IPR2017-02080
`Attorney Docket No. 19473-0370IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(1) and 42.6(e)(4)(iii), the undersigned
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`certifies that on April 18, 2018, a complete and entire copy of this Petitioner’s
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`Request for Rehearing was provided via email to the Patent Owner by serving the
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`email correspondence addresses of record as follows:
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`Brett Mangrum
`Ryan Loveless
`James Etheridge
`Jeffrey Huang
`Etheridge Law Group
`2600 E. Southlake Blvd., Ste. 120-324
`Southlake, TX 76092
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`Sean D. Burdick
`Uniloc USA, Inc.
`7160 Dallas Parkway, Ste. 380
`Plano, TX 75024
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`Email: brett@etheridgelaw.com
` sean.burdick@unilocusa.com
` ryan@etheridgelaw.com
` jim@etheridgelaw.com
` jeff@etheridgelaw.com
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`/Diana Bradley/
`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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