Trials@uspto.gov
`571-272-7822
`
`
`Paper No. 12
`
`Entered: November 1, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`v.
`UNILOC LUXEMBOURG, S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-02080
`Patent 8,724,622 B2
`____________
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`571-272-7822
`
`
`Paper No. 12
`
`Entered: November 1, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`v.
`UNILOC LUXEMBOURG, S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-02080
`Patent 8,724,622 B2
`____________
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`IPR2017-02080
`Patent 8,724,622 B2
`
`
`INTRODUCTION
`Google, Inc., now known as Google LLC (“Petitioner”), filed a
`Petition requesting inter partes review of claims 3–23 (the “challenged
`claims”) of U.S. Patent No. 8,724,622 B2 (Ex. 1001, “the ’622 patent”) on
`five asserted grounds. Paper 2 (“Pet.”). Uniloc Luxembourg S.A. (“Patent
`Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”). With
`authorization from the Board, Petitioner additionally filed a Reply to Patent
`Owner’s Preliminary Response. Paper 9. After considering the information
`presented in the Petition, the Preliminary Response, and the Reply, we
`determined that Petitioner had not established a reasonable likelihood of
`prevailing as to any of the challenged claims of the ’622 patent, and we,
`accordingly, denied institution of inter partes review. Paper 10 (“Decision”
`or “Dec.”); see 35 U.S.C. § 314(a) (providing that an inter partes review
`may not be instituted unless “the information presented in the
`petition . . . and any response . . . shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1 of the claims
`challenged in the petition”). Petitioner requests rehearing of our Decision,
`contending that “evidence in the Petition . . . was misapprehended or
`overlooked” and that “[p]roper consideration of th[at] evidence . . . compels
`a conclusion that Grounds 1–5 . . . provide a reasonable likelihood of
`Petitioner prevailing against each of claims 3–23.” Paper 11 (“Req.
`Reh’g”), 1.
`“When rehearing a decision on petition, a panel will review the
`decision for an abuse of discretion.” 37 C.F.R. § 42.71(c). “The burden of
`showing a decision should be modified lies with the party challenging the
`decision[,]” which party “must specifically identify all matters the party
`
`
`
`2
`
`
`
`IPR2017-02080
`Patent 8,724,622 B2
`
`believes the Board misapprehended or overlooked, and the place where each
`matter was previously addressed in a motion, an opposition, or a reply.”
`37 C.F.R. § 42.71(d).
`For the reasons discussed below, Petitioner’s Request for Rehearing is
`denied.
`
`ANALYSIS
`Claim 3 is the only independent claim among the asserted claims and
`recites, in part, “a messaging system communicating with a 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.” Ex. 1001, 24:15–27 (emphasis
`added). Petitioner alleges that claims 3–8, 11, 13, and 18–21 are anticipated
`by Zydney1 and that claims 3–23 also are unpatentable as obvious over the
`combined teachings of Zydney and certain other references (Pet. 6, 11–68),
`relying in each of the asserted grounds on Zydney as teaching the recited
`“object field including a digitized audio field” (id. at 17–19, 38).
`In particular, according to Petitioner, Zydney discloses a system in
`which “digitized audio files in the form of ‘voice messages’ (also referred to
`as ‘voice data’) are distributed in ‘voice containers’ that include . . . digitized
`voice messages and ‘voice data properties components’ that indicate
`parameters for the voice message’s distribution.” Id. at 18. “The ‘voice
`container’ in Zydney corresponds to the claimed instant voice message,”
`Petitioner contends, “and the ‘digitized voice message’ embedded in
`
`1 Zydney et al., WO 01/11824 A2, published Feb. 15, 2001 (Ex. 1005,
`“Zydney”)
`
`
`
`3
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`IPR2017-02080
`Patent 8,724,622 B2
`
`Zydney’s voice container corresponds to the claimed digitized audio file.”
`Id. Petitioner further contends “Zydney teaches an arrangement of fields . . .
`for the ‘voice data properties components’ of a voice container” and
`“teaches elsewhere that the voice container includes a ‘body,’ which is in
`addition to the voice data properties components shown in Figure 3 [of
`Zydney], and which holds the digitized voice message itself.” Id. at 19.
`According to Petitioner, “[t]he ‘body’ of the voice container corresponds to
`the claimed ‘object field’ in an instant voice message to carry a digitized
`audio file,” where, under the broadest reasonable interpretation, “the recited
`‘object field’ is a field of a data packet that includes a digitized audio file.”
`Id. at 18–19 (citing Ex. 1003 ¶ 60; Ex. 1005, 34:4–7 (“Each message will
`have . . . [a] body of the message”), 23:1–2 (“the voice container [has] voice
`data and voice data properties components”), FIG. 7 (1.1.5) (recorded voice
`message compressed and stored “in a voice ‘container’”)). Petitioner further
`contends a person of ordinary skill in the art “would have appreciated that
`providing the digitized voice message in an object field (e.g., body) of the
`voice container would allow the recipient software agent to locate and
`extract the digitized voice message from other data stored in the voice
`container.” Id. at 19 (citing Ex. 1003 ¶ 62).
`In our Decision, we found that there was insufficient evidence on the
`record to support Petitioner’s contention that Zydney’s disclosure of a
`message “body” expressly discloses the recited object field and, further, that
`Petitioner did not establish a reasonable likelihood of showing that the
`claimed object field is inherently anticipated by Zydney. Dec. 17. We
`explained, in particular, that “[a]lthough Zydney discloses that its voice
`container includes ‘voice data,’ . . . Petitioner has not shown that voice data
`
`
`
`4
`
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`IPR2017-02080
`Patent 8,724,622 B2
`
`necessarily would be included in an ‘object field.’” Id. We, accordingly,
`determined that Petitioner did not demonstrate a reasonable likelihood of
`showing that the object field limitation of claim 3 is disclosed by Zydney.
`In its Request for Rehearing, Petitioner contends “[r]ehearing is
`appropriate because the Decision misapprehended or overlooked Petitioner’s
`cited evidence showing what is encompassed within the scope of the term
`‘object field,’” pointing particularly to the Petition’s reliance on testimony of
`Petitioner’s declarant, Paul S. Min, Ph.D., that “[b]ased on the teachings of
`the ’622 patent, . . . the claimed ‘object field’ encompasses a data packet that
`includes a digitized audio file.” Req. Reh’g 2–3 (citing Ex. 1003 ¶ 60).
`Petitioner contends the Decision “fails to address Petitioner’s explanation of
`elements falling within the scope of the ‘object field’ limitation, and also
`fails to explain why Petitioner’s cited evidence pertaining to this fact was
`not considered” and “does [not] cite any evidence . . . refuting Petitioner’s
`express argument of what type of data element constitutes a disclosure
`falling within the scope of ‘object field’ under the broadest reasonable
`interpretation standard.” Id. at 3. Petitioner further contends that “[i]n
`concluding that the Petition presents insufficient evidence that the ‘body’ of
`Zydney’s voice container constitutes an ‘object field,’ the Board implicitly
`construed the outermost boundaries of the scope of the ‘object field’ element
`in a manner far narrower than what the intrinsic evidence warrants,” and
`“[i]n so doing, the Board misapprehended or overlooked Petitioner’s
`evidence and the ‘broadest reasonable interpretation’ . . . standard that
`applies in this proceeding.” Id. at 4–5; see id. at 5–8.
`We have considered Petitioner’s contentions but are not persuaded of
`any error in our Decision. Our Decision was premised not on a rejection of
`
`
`
`5
`
`
`
`IPR2017-02080
`Patent 8,724,622 B2
`
`Petitioner’s proposed formulation of the broadest reasonable interpretation
`of the “object field” limitation recited in claim 3, but instead on Petitioner’s
`failure to persuade us that Zydney’s “body” maps to the recited object field.
`A prior art reference cannot anticipate “unless [it] discloses within the four
`corners of the document not only all of the limitations claimed but also all of
`the limitations arranged or combined in the same way as recited in the
`claim.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir.
`2008). Moreover, “[a]nticipation requires that a single reference ‘describe
`the claimed invention with sufficient precision and detail to establish that the
`subject matter existed in the prior art.’” Wasica Fin. GmbH v. Cont’l Auto.
`Sys., Inc., 853 F.3d 1272, 1284 (Fed. Cir. 2017) (alteration in original)
`(quoting Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir.
`2002)). “For this reason, it has long been understood that ambiguous
`references do not, as a matter of law, anticipate a claim.” Id. But the
`disclosure of Zydney relied upon by Petitioner for the object field limitation
`of claim 3 is, at best, ambiguous.
`Indeed, we find the term “body” recited only twice in Zydney, first, as
`one of a list of elements that may be “encode[d]” by a “unique identifier,”
`and second, as an element of a message that may be withheld from
`transmission to a server during a peer-to-peer embodiment described by
`Zydney:2
`
`
`2 As noted in our Decision, Petitioner also asserted in the Petition that
`“Zydney teaches elsewhere that the voice container includes a ‘body,’ which
`is in addition to the voice data properties components shown in Figure 3 [of
`Zydney].” Pet. 19 (quoted at Dec. 15–16). Petitioner, however, did not
`provide any citation for that assertion, and we are unable to locate such
`teaching “elsewhere” in Zydney.
`
`
`
`6
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`IPR2017-02080
`Patent 8,724,622 B2
`
`
`Each message will have a unique identifier that will
`encode the sending software agents identifier, the destination
`software agents and non-registered users, the codec used, date
`and time of the message, the forwarding rules and permissions,
`body of the message, and whether the message was received,
`played, or deleted without listening. Since a message may go
`from one peer to another without the messaging server being
`involved a message will be sent to the server with all of the
`pertinent information about the message but not the body.
`Ex. 1005, 34:4–10 (emphases added). Neither of those two recitations of the
`term “body” provides “sufficient precision and detail to establish” the object
`field’s existence in Zydney (cf. Wasica Fin., 853 F.3d at 1284), even if
`construed according to Petitioner’s proposal to “encompass[] a data packet
`that includes a digitized audio file” (Req. Reh’g 2–3).
`We have considered Petitioner’s remaining arguments presented in the
`Request for Rehearing and likewise conclude that they are unpersuasive of
`error.
`In conclusion, we determine that the Petitioner’s Request for
`Rehearing does not demonstrate that the Board misapprehended or
`overlooked any matters raised in the Petition by declining to institute review
`of the challenged claims.
`
`
`ORDER
`
`Accordingly, it is
`ORDERED that Petitioner’s Request for Rehearing is denied.
`
`
`
`7
`
`
`
`IPR2017-02080
`Patent 8,724,622 B2
`
`For PETITIONER:
`
`Jeffrey A. Miller
`ARNOLD & PORTER KAYE SCHOLER LLP
`jmillerptab@apks.com
`
`Michael T. Hawkins
`Nicholas Stephens
`Kim Leung
`Patrick J. Bisenius
`Kenneth Darby
`FISH & RICHARDSON P.C.
`hawkins@fr.com
`nstephens@fr.com
`leung@fr.com
`bisenius@fr.com
`kdarby@fr.com
`
`
`For PATENT OWNER:
`
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`Ryan Loveless
`ETHERIDGE LAW GROUP
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`ryan@etheridgelaw.com
`
`Sean D. Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`
`
`8
`
`
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