UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`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
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`v.
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`UNILOC LUXEMBOURG, S.A.
`Patent Owner
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`IPR2017-02080
`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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`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
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`v.
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`UNILOC LUXEMBOURG, S.A.
`Patent Owner
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`IPR2017-02080
`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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`I.
`II.
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`V.
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`IPR2017-2080
`U.S. Patent 8,724,622
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`Table of Contents
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`1
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`2
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`5
`6
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`9
`10
`12
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`14
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`15
`15
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`16
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`18
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`19
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`20
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`27
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`INTRODUCTION
`PETITIONERS FAIL TO NAME ALL REAL PARTIES
`IN INTEREST
`III. THE PETITION SHOULD BE DENIED AS
`IMPERMISSIBLY REDUNDANT WITH PRIOR INTER
`PARTES REVIEW PETITIONS
`A.
`Evidence of a Coordinated Multi-Petition Strategy
`B.
`Petitioners Provide No Rational Justification for the
`Redundancy
`The Cases Petitioners Cite Confirm Denial Is Appropriate Here
`C.
`The Board’s Precedential Factors Support Denial
`D.
`IV. THE PETITION IS ITSELF INTERNALLY
`REDUNDANT
`THE ’622 PATENT DESCRIBES INSTANT VOICE
`MESSAGING OVER A PACKET-SWITCHED
`NETWORK.
`A.
`Effective Filing Date of the ’622 Patent
`B.
`The ’622 Patent Describes and Claims Instant Voice
`Messaging over a Packet-Switched Network
`The Challenged Claims of the ’622 Patent Recite a Method for
`Instant Voice Messaging over a Packet-Switched Network.
`VI. THERE IS NO REASONABLE LIKELIHOOD THAT
`ANY OF THE CHALLENGED CLAIMS ARE
`UNPATENTABLE
`A.
`Zydney does not anticipate “wherein the instant voice message
`includes an object field including a digitized audio file” (all
`challenged claims)
`Enete does not cure the deficiencies of Zydney concerning
`“wherein the instant voice message includes an object field
`including a digitized audio file” (all challenged claims)
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`C.
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`B.
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`ii
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`IPR2017-2080
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`US. Patent 8,724,622
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`The challenged dependent claims 4-23 remain patentable
`because there the Petition presents no prima facie theory of
`unpatentability for independent claim 3
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`Zydney does not anticipate or render obvious “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)
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`No prima facie obviousness for “wherein the communication
`platform system updates the connection information for each
`of the instant voice message client systems by periodically
`transmitting a connection status request to the given one of the
`plurality of instant voice message client systems” (claim 12)
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`VII. THE SUPRENIE COURT IS CURRENTLY REVIEWING
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`THE CONSTITUTIONALITY OF INTER PARTES
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`REVIEW
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`VIII. CONCLUSION
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`List of Exhibits
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`Exhibit No.
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`2001
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`2002
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`Declaration of William C. Easttom II
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`Invalidity Contentions Submitted on March 28, 2017 in the
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`underlying consolidated case of Uniloc USA, Inc. v. Samsung
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`Electronic America ’s, Inc., Case No. 2: l6-cv-642
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`2003
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`Invalidity Contentions Submitted on December 16, 2016 in the
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`underlying consolidated case of Uniloc USA, Inc. v. Samsung
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`Electronic America ’s, Inc., Case No. 2: l6-cv—642
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`28
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`28
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`30
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`31
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`32
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`iii
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`IPR2017-2080
`U.S. Patent 8,724,622
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`I.
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`INTRODUCTION
`Uniloc Luxembourg S.A. (the “Patent Owner”) submits this Preliminary
`Response to Petition IPR2017-1797 for Inter Partes Review (“Pet.” or “Petition”)
`of United States Patent No. 8,724,622 B2, System and Method for Instant VoIP
`Messaging, (“the ’622 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.
`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.” There is sufficient evidence to conclude, based on public
`filings, and even at this preliminary stage, that Petitioners failed to identify all real
`parties-in-interest. The Petition is further procedurally defective in that it is
`redundant with both earlier-filed petitions and is itself internally redundant, thereby
`invoking the discretion of § 325(d).
`Even if the Board were to overlook the numerous procedural defects of the
`Petition and consider its substantive merits, the Petition should be denied in its
`entirety because it fails to meet the threshold burden of proving that there is a
`reasonable likelihood that even one challenged claim is unpatentable. Petitioners
`argue that claims 3-23 are unpatentable primarily in view of International
`Publication No. WO 01/11824 (“Zydney” or “EX1005”), which is a reference the
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`1
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`U.S. Patent 8,724,622
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`Board has already extensively considered in addressing this family of patents. As
`explained in prior Responses, which Petitioners had the benefit of reviewing, Zydney
`(either alone or in combination) fails to satisfy the All Elements Rule. Indeed, the
`instant Petitioners submit unreasonable arguments which are directly contradicted
`by concessions offered by their co-defendants in earlier-filed petitions. Accordingly,
`there is ample reason to deny the Petition in its entirety.
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`II.
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`PETITIONERS FAIL TO NAME ALL REAL PARTIES-IN-INTEREST
`The ’622 Patent is in a family of patents including United States Patent Nos.
`7,535,890 (“the ’890 Patent”); 8,243,723 (“the ’723 Patent”); 8,199,747 (“the ’747
`Patent”); and 8,995,433 (“the ’433 Patent”).1 The diagram below how this family
`of patents is interrelated.
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` 1
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` 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.”
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`2
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`IPR2017-2080
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`US. Patent 8,724,622
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`App. No.: 105740.030
`Filed: 12-18-2003
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`Pat. No: 7.535.890
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`App. No.: 125398.063
`Filed: 03-04-2009
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`App. No.: 12398076
`Filed: 03-04-2009
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`Pat. No: 3.243.723
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`Pat. No: 3.199.747
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`App. No.: 135546.673
`Filed: 07-11-2012
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`Pat. No: 8.724.622
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`App. No.: 14.52.24.125
`Filed: 03-25-2014
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`Pat. No: 8.995.433
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`The Petitioners collectively have initiated nine of the thirty-six IPRs filed
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`against these five patents, as highlighted below. Nearly all those thirty—six IPR
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`petitions (33 of 36) initiated against these related patents predate the present Petition.
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`m
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`IPR2017-2080
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`US. Patent 8,724,622
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`Petitioner
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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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`Apple
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`LG Electronics
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`IPR2017-2080
`U.S. Patent 8,724,622
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`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.
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`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 IPR2017-2090 challenges the same
`’622 Patent at issue here 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.
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`III. THE PETITION SHOULD BE DENIED AS IMPERMISSIBLY
`REDUNDANT WITH PRIOR INTER PARTES REVIEW PETITIONS
`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
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`5
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`U.S. Patent 8,724,622
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`identical) arguments that is already before the Board in no less than seven IPR
`proceedings filed collectively by the same group of joint defendants. See, e.g.,
`IPR2017-1667, IPR2017-1668, IPR2017-1697, IPR2017-1698, IPR2017-1804,
`IPR2017-1805, and IPR2017-2090.
`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 ’890 Patents—using at least 18
`combinations of 13 references: Abburi, Dahod, Daniell, Deshpande, Hogan,
`Holtzberg, Lerner, Logan, Malik, SMSS, Stubbs, Väänänen, Vuori. In denying
`institution of both petitions challenging the ’622 patent, the Board found that Apple
`elucidated no significant difference between Dahod and Vuori. See IPR2017-0224
`Order Denying Institution, Paper No. 7, May 25, 2017, at 7. This initial wave of
`redundancy has since been repeated in the tsunami of petitions that followed.
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`IPR2017-2080
`U.S. Patent 8,724,622
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`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
`from the earlier filings are in bold italics): Abburi, Appelman, Clark, Greenlaw,
`Hethmon, Holtzberg, Logan, Malik, Martin-Flatin, Microsoft, Moghe, Newton,
`Shinder, Väänänen, Vuori, and Zydney.2
`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, ’747, and ’890 Patents—using at least 10 combinations of 9
`references: Aravamudan, Clark, Griffin, Lee, Low, Malik, Väänänen, Vuori, and
`Zydney.3
`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, ’747, and ’890 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.
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`
` IPR2017-1667 and IPR2017-1668 argued that claims of the ’622 Patent are obvious
`over Zydney and Shinder.
`3 IPR2017-1697 and IPR2017-1698 argued that claims of the ’622 Patent are obvious
`over Zydney and Griffin.
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`7
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`IPR2017-2080
`U.S. Patent 8,724,622
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`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. Many of those petitions rely on Zydney in challenging the same
`’622 patent at issue here. See, e.g., IPR2017-1667, IPR2017-1668, IPR2017-1697,
`IPR2017-1698, IPR2017-1804, IPR2017-1805, and IPR2017-2090. The instant
`Petition offers redundant anticipation and obviousness challenges based (yet again)
`either exclusively or primarily 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 ’622 Patent,
`Petitioners will eventually overwhelm the Board and Patent Owner.4 “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 17.5
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` 4
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` “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.
`5 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
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`U.S. Patent 8,724,622
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`For the foregoing reasons, the Board should reject the instant Petition outright
`as facially redundant with prior petitions.
`B.
`Petitioners Provide No Rational Justification for the Redundancy
`Petitioners do not provide any reasoned explanation to justify needlessly
`burdening the Board and the Patent Owner with such outright redundancy.6 To the
`contrary, Petitioners admit that “Zydney is asserted as a primary reference in other
`IPR Petitions against the ’622 patent, one of which [IPR2017-2081] is concurrently
`filed by Petitioner-Google” and all the other named Petitioners of the instant
`Petition. Pet. 7. Rather than justify the imposition of this unnecessary burden on the
`Board, Petitioners argue “this Petition challenges a different subset of claims than
`all other IPR Petitions based on Zydney.” Id. Petitioners’ assertion to the Board is
`demonstrably false.
`Every single claim challenged in the instant Petition (claims 3-23) has been
`challenged already in multiple grounds in multiple IPR filings that assert Zydney as
`an allegedly invalidating reference. See, e.g., IPR2017-1667, IPR2017-1668,
`IPR2017-1697, IPR2017-1698, IPR2017-1804, IPR2017-1805, and IPR2017-2090.
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`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’”).
`6 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).
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`9
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`U.S. Patent 8,724,622
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`The fact that other petitions asserting Zydney also challenge additional claims of the
`’622 Patent (i.e., in addition to claims 3-23) only confirms the instant Petition should
`be denied as unnecessarily redundant and harassing.7
`Contrary to what Petitioners argue, their overt redundancy is also not justified
`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
`
`
` The redundant overlap of the instant Petition with prior petitions is even more
`complete when one considers the concurrently filed petition in IPR2017-2081,
`which further challenges Claims 1, 2, 24, and 39 of the ’622 Patent.
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`10
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`U.S. Patent 8,724,622
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`Fitbit, Inc., v. BodyMedia, Inc.,8 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.,9 the Board observed that the dependent claims
`then at issue were not challenged in prior proceedings. The facts are distinguishable
`here because all the claims in the instant Petition have been redundantly challenged
`in multiple grounds in multiple IPR filings that assert Zydney as an allegedly
`invalidating reference (in addition to the original two petitions citing different
`references against the ’622 Patent, which the Board denied outright). See, e.g.,
`IPR2017-0223, IPR2017-00224, IPR2017-1667, IPR2017-1668, IPR2017-1697,
`IPR2017-1698, IPR2017-1804, IPR2017-1805, and IPR2017-2090.
`With respect to the other two cases Petitioners cite,10 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
`
`
` IPR2016-00545, Paper 8 at 8 (PTAB Aug. 8, 2016).
`9 IPR2015-00606, Paper 14 at 8 (PTAB Nov. 9, 2015).
`10 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)).
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`11
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`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 opinion11 as favoring denial under 35 U.S.C. § 325(d).
`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 both IPR2017-
`0223 and IPR2017-00224) and further had 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,
`
`
`
`11 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).
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`12
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`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 ’622 Patent as prior petitions, much less offer
`any explanation for the time elapsed between the filing dates of multiple petitions
`directed to the same claims of the same patent. General Plastic, IPR2016-01357,
`Paper 19, at 9 (factors 1 and 5). Moreover, for the Huawei entities in particular, the
`same entities previously filed a petition (IPR2017-2090) directed to the same claims
`of the same patent. Id.
`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).
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`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.
`
`IV. THE PETITION IS ITSELF INTERNALLY REDUNDANT
`The Petition should also be denied under § 325(d) as presenting internally
`redundant grounds. The Board has repeatedly held that multiple grounds for
`unpatentability for the same claim will not be considered unless the petition itself
`explains the relative strengths and weaknesses of each ground. See Liberty Mut. Ins.
`Co. v. Progressive Cas. Ins. Co., No. CBM2012-00003, Paper 7 (P.T.A.B. Oct. 25,
`2012); see also Berk-Tek LLC v. Belden Techs. Inc., No. IPR2013-00057, Paper No.
`21, Decision on Request for Rehearing at 4-5 (P.T.A.B. May 14, 2013) (When
`“petitioner makes no meaningful distinction between certain grounds, the Board may
`exercise discretion by acting on one or more grounds and regard the others as
`redundant” because “allowing multiple grounds without meaningful distinction by
`the petitioner is contrary to the legislative intent”).
`Petitioners first assert that Zydney alone anticipates all limitations recited in
`claims 3-23. Petitioners then hedge their bets by presenting redundant challenges of
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`the same claims based on obviousness theories that rely on additional references.
`Notably, Petitioners admit no relative weakness of Zydney in presenting its
`redundant challenges. Rather, it would appear Petitioners simply hope to indulge in
`their own multiple bites at the apple (i.e., in additional to the onslaught of prior
`petitions challenging the same claims of the same patent based on the same art).
`The Board in Eizo Corp. v. Barco N.V.12 flatly rejected a similar attempt to
`unnecessarily multiply the work of both the Board and the Uniloc. There, Board
`found insufficient the petitioner’s “conclusory assertion” that “[t]o the extent [the
`first prior art reference] may not explicitly teach” the limitation, another cited
`reference “explicitly teaches this limitation.” The Board explained that “such an
`assertion fails to resolve the exact differences sought to be derived from” the second
`prior art reference. Id. Here, the same reasoning proscribes Petitioners’ similar
`redundancy here. Accordingly, the Board should exercise its discretion to deny
`institution of at least the internally-redundant grounds presented in the instant
`Petition.
`
`V. OVERVIEW OF THE ’622 PATENT
`
`A. Effective Filing Date of the ’622 Patent
`The ’622 Patent is titled “System and Method for Instant VoIP Messaging.”
`The ’622 Patent issued May 13, 2014 from U. S. Pat. App. No. 13/546,673, which
`is a Continuation of U.S. Pat. App. No. 12/398,063, filed on March 4, 2009, which
`
`
`
`12 IPR2014-00358, Paper 11 (P.T.A.B. July 23, 2014).
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`is a Continuation of U.S. Pat. App. No. 10/740,030, filed on Dec. 18, 2003. The
`earliest-filed parent application issued as the ’890 Patent. During prosecution of the
`’890 Patent, to which the ’622 Patent claims priority, the Applicant filed an affidavit
`testifying it had a date of conception for the claims of the ’890 patent “prior to
`August 15, 2003.”
`
`B.
`
`The ’622 Patent Describes and Claims Instant Voice Messaging
`over a Packet-Switched Network
`circuit-switched
`conventional
`’622 Patent
`describes
`how
`The
`communications enabled traditional telephony yet had a variety of technical
`disadvantages that limited developing other forms of communication over such
`networks. According
`to
`the ʼ622 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.” EX1001, 1:32-34.
`The ʼ622 Patent expressly distinguishes circuit-switched networks from
`packet-switched networks at least in that the latter routes packetized digital
`information, such as “Voice over Internet Protocol (i.e., ‘VoIP’), also known as IP
`telephony or Internet telephony.” EX1001, 1:35-36. Because legacy circuit-switched
`devices were unable to communicate directly over packet-switched networks, media
`gateways were designed to receive circuit-switched signals and packetize them for
`transmittal over packet-switched networks, and vice versa. EX1001, 1:62-2:7. The
`conversion effected by media gateways highlights the fact that packetized data
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`carried over packet-switched networks is different from and is incompatible with an
`audio signal carried over a dedicated circuit-switched network. EX1001, 1:24-34.
`The ʼ622 Patent also describes how notwithstanding the advent of instant text
`messages, at the time of the claimed inventions there was no similarly convenient
`analog to leaving an instant voice message over a packet-switched network.
`EX1001, 2:8-46. Rather, “conventionally, leaving a voice message involves dialing
`the recipient’s telephone number—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
`the message for later pickup by the recipient. In that message, the user must typically
`identify … herself in order for the recipient to return the call.” EX1001, 2:23-33.
`The ʼ622 Patent solved the problem. The ’622 Patent describes how a user-
`accessible client can be configured for instant voice messaging using a direct
`communication over a packet-switched network (e.g., through an Ethernet card).
`EX1001, 12:4-50. Client devices can be configured to “listen[] to the input audio
`device 212,” “record[] the user’s speech into a digitized audio file 210 (i.e., instant
`voice message) stored on the IVM client 208,” and “transmit[] the digitized audio
`file 210” as packetized data (e.g., using TCP/IP) over a packet-switched network
`(e.g., network 204) “to the local IVM server 202.” EX1001, 7:53-8:39, Fig. 2.
`The Abstract of the 622 Patent summarizes the technical disclosure:
`Methods, systems and programs for instant voice messaging over a
`packet-switched network are provided. A method for instant voice
`messaging may comprise receiving an instant voice message having
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`one or more recipients, delivering the instant voice message to the one
`or more recipients over a packet-switched network, temporarily
`storing the instant voice message if a recipient is unavailable; and
`delivering the stored instant voice message to the recipient once the
`recipient becomes available.
`EX1001, Abstract (emphasis added).
`
`C. The Challenged Claims of the ’622 Patent Recite a Method for
`Instant Voice Messaging over a Packet-Switched Network.
`The only independent claim challenged in the Petition is independent claim
`3, copied below:
`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.
`Among other patentable limitations, independent claim 3 recites an “instant
`voice message” limitation and a “network interface” communicatively coupled to a
`“packet-switched network.” Independent claim 3 further recites a “messaging
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`system” and an “object field including a digitized audio file” in the instant voice
`message.
`
`VI. THERE IS NO REASONABLE LIKELIHOOD THAT ANY OF THE
`CHALLENGED CLAIMS ARE UNPATENTABLE
`Petitioners have the burden of proof to establish entitlement to relief. 37
`C.F.R. §42.108(c) (“review shall not be instituted for a ground of unpatentability
`unless . . . there is a reasonable likelihood that at least one of the claims
`challenged . . . is unpatentable”). The Petition should be denied as failing to meet
`this burden.
`Notably, none of Petitioners’ co-defendants in related litigation asserted
`Zydney in their respective petitions as an allegedly anticipating reference against
`claim 3 of the ’622 patent. Rather, each one of the several earlier-filed petitions
`citing Zydney recognized that reference had certain deficiencies which rendered it
`ineffective as an allegedly anticipating reference. Here, Petitioners gloss over the
`deficiencies acknowledged by their co-defendants.
`
`A. Claim Construction
`The instant Petitioners do not identify any claim term as requiring a particular
`construction apart from the claim language itself. Rather, Petitioners submit that all
`claim terms should be
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