throbber
Case 2:16-cv-00725-JRG Document 21 Filed 05/16/17 Page 1of1PagelD#: 194
`AO 120 (Rev. 08/10)
`
`TRADEMARK
`
`TO:
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`
`filed in the U.S. District Court
`Eastern District of Texas, Marshall Division
`on the following
`(] Trademarks or
`(Patents.
`( [] the patent action involves 35 U.S.C. § 292.):
`
`DOCKET NO.
`2:16-cv-725
`PLAINTIFF
`
`DATE FILED
`7/5/2016
`
`U.S. DISTRICT COURT
`Eastern District of Texas, Marshall Division
`DEFENDANT
`
`UNILOC USA, INC., and
`UNILOC LUXEMBOURG, S.A.
`
`BEETALK PRIVATE LTD.
`
`DATE INCLUDED
`
`In the above—entitled case, the following patent(s)/ trademark(s) have been included:
`INCLUDED BY
`
`PATENT OR
`TRADEMARK NO.
`
`_] Amendment
`DATEOF PATENT
`OR TRADEMARK
`
`LC] Answer
`
`CL) Cross Bill
`
`L] Other Pleading
`
`HOLDER OF PATENT OR TRADEMARK
`
`
`
`DISMISSED WITH PREJUDICE. CLERK
`
`In the above—entitled case, the following decision has been rendered or judgementissued:
`DECISION/JUDGEMENT
`
`Any and all claims by Uniloc against Defendant BeeTalk Private Limited (“BeeTalk”) in Case No. 2:16-cv-725 are
`
`aoe
`p
`awd A. OT reke.
`
`(BY) DEPUTY CLERK
`.
`Nakisha Love
`
`DATE
`5/16/17
`
`Copy 1—Uponinitiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director
`Copy 2—Uponfiling document adding patent(s), mail this copy to Director Copy 4—Casefile copy
`
`1
`
`GOOGLE 1002
`
`1
`
`GOOGLE 1002
`
`

`

`SQ P20 Res L&E
`
`TRADEMARK
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1430
`Alenandeia, WA 22315-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARBING 4 PATENT OR
`
`In Compliance with 35 LOS CL 8 20thandéer 1A USC. $ 1116 cou are hereby advised that a court action has beer
`Medic dhe US, Disteter Court
`Eastern District of Texas
`on the followiag
`
`[J Frademarks or
`Patents: (Pde patent action imvelves 32 USCS
`
`
`
`DOCKET NO
`DATE FILED
`LS DISTRICT COURT
`
`
`2.1 7-tv-347
`4/21/2017
`
`PLAINTIFF
`DEFENDANT
`
`Eastern District of Texas
`
`UNILOC USA. INC. and
`UNILOC LUXEMBOURG, S.A.
`
`KIK INTERACTIVE, INC.
`
`
`
`PATENT OR
`
`DATE OF PATENT TRADEMARK NO. OR TRADEMARK
`
`
`
`1 8724622
`7
`> 8,995,433
`
`5/31/2015
`
`HOLDER or PATENT OR TRADEMARK
`Uniloc Luxembourg S.A,
`”
`Uniloc Luxembourg S.A.
`
`{
`
`3 7,535,890
`
`4 8,199,747
`
`
`
`
`
`5/19/2009
`
`6/12/2012
`
`Unitoc Luxembourg S.A.
`
`1 Uniloc Luxembourg S.A.
`
`DATE INCLUDED
`
`PATENT OR
`TRADFATARK NO.
`
`Tn the abosc—ontitfed case. the following patentts)
`INCLUDED BY
`
`irademarkist have heen imeluded:
`
`—] Amendment
`DATE OF PATENT
`OR TEADEMARER
`
`
`EL] Cross Bul
`Py Answer
`LJ Odher Pleading
`HOLDER OF PATENT OR TRADEMARK
`
`
`(BY) DEPUTY CLERK
`
`In the abowe-—omlithed case, the following devision has boon rendcred or pudwcniunt issued:
`DECISION JUDGEMENT
`
`Copy [—Upon initiation of action, mail this cops to Director©Copy 3—Upoentermination of action, mail this cops to Director
`Cups 2—Lpon filing document adding pateat(s}, mail this copy to Director
`Copy +—Case file copy
`
`2
`
`

`

`ACH 120 (Rev 08/ Lt
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORTON TIE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`TRADEMARK
`
`in Compliance with 34 U.S.C. § 290 and/or 15 U.S.C, § 1116 youare hereby advised thal a court action bas been
`filed in the 1.8. District Court
`Eastern District of Texas
`on the following
`
`(J Trademarks or
`
`[Mf Patents
`
`{ {'
`
`the patent action mvolves 35 U.S.C. § 292.)
`
`DATE FILED
`4/21/2017
`
`U.S. DISTRICT COURT
`
`Eastern District of Texas
`
`DOCKET NO.
`2:17-cv-349
`PLAINTIFF
`
`UNILOC USA,INC. and
`UNILOC LUXEMBOURG, S.A.
`
`DEFENDANT
`
`HIKE LTD.
`
`
`
`
`
`
`
`
`
`
`
`
`BUM
`
`
`
`
`
`DATE INCLUDED
`
`PATENT OR
`TRADEMARK NO.
`
`In the above—entitled case, ihc following patent(s)! tradcmark(s) have beenincluded:
`
`INCLUDED BY
`
`
`
`
`
`C] Amendment
`DATE OF PATENT
`OR TRADEMARK
`
`Answer
`CJ Cross Bill
`[] Other Pleading
`,
`HOLDER OF PATENT OR TRADEMARK
`
`
`
`
`
`
`
`
` eo
`(BY) DEPUTY CLERK
`
`po
`po
`po
`
`In the above—entitled case. the following Uecision has been rendered or judgement issucd:
`DECISION/JUDGEMENT
`
`Copy 1—Upon initiationofaction, mail this copy to Director Copy 3-—Upon termination ofaction, mail this copy to Director
`Copy 2—Upan filing document adding patent(s), mail this copy te Director Copy 4—Casefile copy
`
`3
`
`

`

`Case 2:16-cv-00992-JRG Document 2 Filed 09/06/16 Page 1of1PagelD#: 145
`AO 120 (Rev. 08/10)
`
`TRADEMARK
`
`TO:
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`
`filed in the U.S. District Court
`Eastern District of Texas, Marshall Division
`on the following
`(] Trademarks or
`(Patents.
`( [] the patent action involves 35 U.S.C. § 292.):
`
`DOCKET NO.
`2:16-cv-992
`PLAINTIFF
`
`DATE FILED
`9/6/2016
`
`U.S. DISTRICT COURT
`Eastern District of Texas, Marshall Division
`DEFENDANT
`
`UNILOC USA, INC., and
`UNILOC LUXEMBOURG, S.A.
`
`MOTOROLA MOBILITY LLC
`
`
`HOLDER OF PATENT OR TRADEMARK
`
`DATE INCLUDED
`
`In the above—entitled case, the following patent(s)/ trademark(s) have been included:
`INCLUDED BY
`
`PATENT OR
`TRADEMARK NO.
`
`_] Amendment
`DATEOF PATENT
`OR TRADEMARK
`
`LC] Answer
`
`CL) Cross Bill
`
`L] Other Pleading
`
`In the above—entitled case, the following decision has been rendered or judgementissued:
`
`DECISION/IUDGEMENT
`
`CLERK
`
`(BY) DEPUTY CLERK
`
`DATE
`
`Copy 1—Uponinitiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director
`Copy 2—Uponfiling document adding patent(s), mail this copy to Director Copy 4—Casefile copy
`
`4
`
`

`

`Case 2:16-cv-00993-JRG Document 2 Filed 09/06/16 Page 1of1PagelD#: 184
`AO 120 (Rev. 08/10)
`
`TRADEMARK
`
`TO:
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`
`filed in the U.S. District Court
`Eastern District of Texas, Marshall Division
`on the following
`(] Trademarks or
`(Patents.
`( [] the patent action involves 35 U.S.C. § 292.):
`
`DOCKET NO.
`2:16-cv-993
`PLAINTIFF
`
`DATE FILED
`9/6/2016
`
`U.S. DISTRICT COURT
`Eastern District of Texas, Marshall Division
`DEFENDANT
`
`UNILOC USA, ING., and
`UNILOC LUXEMBOURG, S.A.
`
`ZTE (USA), INC. and ZTE (TX), INC.,
`
`
`HOLDER OF PATENT OR TRADEMARK
`
`DATE INCLUDED
`
`In the above—entitled case, the following patent(s)/ trademark(s) have been included:
`INCLUDED BY
`
`PATENT OR
`TRADEMARK NO.
`
`_] Amendment
`DATEOF PATENT
`OR TRADEMARK
`
`LC] Answer
`
`CL) Cross Bill
`
`L] Other Pleading
`
`In the above—entitled case, the following decision has been rendered or judgementissued:
`
`DECISION/IUDGEMENT
`
`CLERK
`
`(BY) DEPUTY CLERK
`
`DATE
`
`Copy 1—Uponinitiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director
`Copy 2—Uponfiling document adding patent(s), mail this copy to Director Copy 4—Casefile copy
`
`5
`
`

`

`Case 2:16-cv-00994-JRG Document 2 Filed 09/06/16 Page 1of1PagelD#: 134
`AO 120 (Rev. 08/10)
`
`TRADEMARK
`
`TO:
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`
`filed in the U.S. District Court
`Eastern District of Texas, Marshall Division
`on the following
`(] Trademarks or
`(Patents.
`( [] the patent action involves 35 U.S.C. § 292.):
`
`DOCKET NO.
`2:16-cv-994
`PLAINTIFF
`
`DATE FILED
`9/6/2016
`
`U.S. DISTRICT COURT
`Eastern District of Texas, Marshall Division
`DEFENDANT
`
`UNILOC USA, INC., and
`UNILOC LUXEMBOURG, S.A.
`
`HUAWEI DEVICE USA, INC. and
`HUAWEI TECHNOLOGIES USA, INC.,
`
`
`HOLDER OF PATENT OR TRADEMARK
`
`DATE INCLUDED
`
`In the above—entitled case, the following patent(s)/ trademark(s) have been included:
`INCLUDED BY
`
`PATENT OR
`TRADEMARK NO.
`
`_] Amendment
`DATEOF PATENT
`OR TRADEMARK
`
`LC] Answer
`
`CL) Cross Bill
`
`L] Other Pleading
`
`In the above—entitled case, the following decision has been rendered or judgementissued:
`
`DECISION/IUDGEMENT
`
`CLERK
`
`(BY) DEPUTY CLERK
`
`DATE
`
`Copy 1—Uponinitiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director
`Copy 2—Uponfiling document adding patent(s), mail this copy to Director Copy 4—Casefile copy
`
`6
`
`

`

`Case 2:17-cv-00347-JRG Document5 Filed 04/24/17 Page 1of1PagelD#: 133
`AGS 126 (Rev. 08/10}
`
`TO:
`
`|
`|
`
`REPORT ON THE
`FILING GOR DETERMINATION OF AN
`ACTRON REGARDING A PATENT OR
`
`TRADEMARK
`
`Mail Step 8
`IMrecter of the U.S. Patent and Trademark (Hfice
`P.O. Box 1450
`Alexandria, VA 22314-1450
`
`
`ewith 35 0.5.0. § 290 and/or 15 USC. § 1116 vouare hereby advised that a court action has beer
`fn. Compliai
`ict Court
`Eastern District of Texas
`on the followtag
`
`
`
`iff atoms.
`the patent achen invoives 35 US. § 292):
`Prademaths or
`DOCKET NO.
`LS. DISTRICT COURT
`2:1 7-Gv-347
`PLAINTIFF
`
`¢
`
`(1)
`
`DATE FILED
`Afs1f2017
`
`{DEPENDANT
`
`Eastern District of Texas
`
`DATE OF PATENT
`
`UNILOC USA, INC. and
`UNILOC LUXEMBOURG, S.A.
`
`KIK INTERACTIVE, INC.
`
`PATENT OR
`TRADEMARK NO.
`
`DATE OF PATENT
`OR TRADEMARK
`
`‘
`on OT PAT
`GOLDEROF PATENT OB TRADEMARK
`
`8,724,822
`
`2 8,995,433
`
`5/43/2044
`
`8/31/2015
`
`Uniloc Luxembourg $.A.
`
`Uniloc Luxembourg S.A.
`
`Pt Amendment
`
`Ib Answet
`
`{7} Cress Bit
`
`[| Other Pleadiag
`
`{n the above---euittied case, the following decision las been rendered or judgement issued:
`CECTSIONJUDGEMENT
`
`(BY) DEPUTY CLERK.
`
`Copy b--Upon hutiation ofaction. mau this copy to Director Copy 3--Upor termination of action, mall this copy te Birector
`Copy 2---Upon filing document adding patent(s)}, mail this copy te Director Copy 4---(Case fie copy
`
`7
`
`

`

`Case 2:17-cv-00349-JRG Document5 Filed 04/24/17 Page 1of1PagelD#: 134
`AGS 126 (Rev. 08/10}
`
`TO:
`
`|
`|
`
`REPORT ON THE
`FILING GOR DETERMINATION OF AN
`ACTRON REGARDING A PATENT OR
`
`TRADEMARK
`
`Mail Step 8
`IMrecter of the U.S. Patent and Trademark (Hfice
`P.O. Box 1450
`Alexandria, VA 22314-1450
`
`
`ewith 35 0.5.0. § 290 and/or 15 USC. § 1116 vouare hereby advised that a court action has beer
`fn. Compliai
`ict Court
`Eastern District of Texas
`on the followtag
`
`
`
`iff atoms.
`the patent achen invoives 35 US. § 292):
`Prademaths or
`DOCKET NO.
`LS. DISTRICT COURT
`2:1 7-Gv-349
`PLAINTIFF
`
`¢
`
`(1)
`
`DATE FILED
`Afs1f2017
`
`{DEPENDANT
`
`Eastern District of Texas
`
`DATE OF PATENT
`
`UNILOC USA, INC. and
`UNILOC LUXEMBOURG, S.A.
`
`HIKE LTD.
`
`PATENT OR
`TRADEMARK NO.
`
`DATE OF PATENT
`OR TRADEMARK
`
`‘
`on OT PAT
`GOLDEROF PATENT OB TRADEMARK
`
`8,724,822
`
`2 8,995,433
`
`5/43/2044
`
`8/31/2015
`
`Uniloc Luxembourg $.A.
`
`Uniloc Luxembourg S.A.
`
`Pt Amendment
`
`Ib Answet
`
`{7} Cress Bit
`
`[| Other Pleadiag
`
`{n the above---euittied case, the following decision las been rendered or judgement issued:
`CECTSIONJUDGEMENT
`
`(BY) DEPUTY CLERK.
`
`Copy b--Upon hutiation ofaction. mau this copy to Director Copy 3--Upor termination of action, mall this copy te Birector
`Copy 2---Upon filing document adding patent(s)}, mail this copy te Director Copy 4---(Case fie copy
`
`8
`
`

`

`Case 2:16-cv-00779-JRG Document 32 Filed 04/19/17 Page 1of1PagelD#: 207
`AO 120 (Rev. 08/10)
`
`TRADEMARK
`
`TO:
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`
`DOCKET NO.
`2:16-cv-779
`PLAINTIFF
`
`DATE FILED
`7/15/2016
`
`U.S. DISTRICT COURT
`Eastern District of Texas, Marshall Division
`DEFENDANT
`
`UNILOC USA, INC., and
`UNILOC LUXEMBOURG, S.A.
`
`SHORETEL, INC.
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`
`filed in the U.S. District Court
`Eastern District of Texas, Marshall Division
`on the following
`(] Trademarks or
`(Patents.
`( [] the patent action involves 35 U.S.C. § 292.):
`
`HOLDER OF PATENT OR TRADEMARK
`
`DATE INCLUDED
`
`INCLUDED BY
`
`PATENT OR
`TRADEMARK NO.
`
`_] Amendment
`DATEOF PATENT
`OR TRADEMARK
`
`LC] Answer
`
`CL) Cross Bill
`
`L] Other Pleading
`
`In the above—entitled case, the following decision has been rendered or judgementissued:
`DECISION/JUDGEMENT
`
`Any and all claims by Uniloc USA, Inc. and Uniloc Luxembourg S.A. (collectively, “Uniloc”) against ShoreTel, Inc.
`
`(‘ShoreTel’) are DISMISSED WITH PREJUDICE (BY) DEPUTY CLERK
`
`Nakisha Love
`
`DATE
`
`4/19/17
`
`Copy 1—Uponinitiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director
`Copy 2—Uponfiling document adding patent(s), mail this copy to Director Copy 4—Casefile copy
`
`9
`
`

`

`Case 2:16-cv-00641-JRG Document 21 Filed 04/18/17 Page 1of1PagelD#: 331
`AO 120 (Rev. 08/10)
`
`TRADEMARK
`
`TO:
`
`Mail Stop 8
`Director of the U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`REPORT ON THE
`FILING OR DETERMINATION OF AN
`ACTION REGARDING A PATENT OR
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that a court action has been
`
`filed in the U.S. District Court
`Eastern District of Texas, Marshall Division
`on the following
`(] Trademarks or
`(Patents.
`( [] the patent action involves 35 U.S.C. § 292.):
`
`DOCKET NO.
`2:16-cv-641
`PLAINTIFF
`
`DATE FILED
`6/14/2016
`
`U.S. DISTRICT COURT
`Eastern District of Texas, Marshall Division
`DEFENDANT
`
`UNILOC USA, INC., and
`UNILOC LUXEMBOURG, S.A.
`
`LINE EURO-AMERICAS CORP. & LINE
`CORPORATION
`
`DATE INCLUDED
`
`In the above—entitled case, the following patent(s)/ trademark(s) have been included:
`INCLUDED BY
`
`PATENT OR
`TRADEMARK NO.
`
`_] Amendment
`DATEOF PATENT
`OR TRADEMARK
`
`LC] Answer
`
`CL) Cross Bill
`
`L] Other Pleading
`
`HOLDER OF PATENT OR TRADEMARK
`
`
`
`DISMISSED WITH PREJUDICE CLERK
`
`In the above—entitled case, the following decision has been rendered or judgementissued:
`DECISION/JUDGEMENT
`
`Any and all claims by Uniloc against Line Euro-Americas Corporation and Line Corporation (together, “Line”) are
`
`Dad A. Orie.
`
`(BY) DEPUTY CLERK
`
`Nakisha Love
`
`DATE
`
`4/18/17
`
`Copy 1—Uponinitiation of action, mail this copy to Director Copy 3—Upon termination of action, mail this copy to Director
`Copy 2—Uponfiling document adding patent(s), mail this copy to Director Copy 4—Casefile copy
`
`10
`
`10
`
`

`

`
`
`
`MailStop8
`TO:
`REPORT ONTHE
`
`Director ofthe U.S. Patent andTrademark Office
`FILING ORPETERMINATION OF AN
`,
`
`
`
`ACTION REGARDING A PATENT OR
`P.O. Box 1450
`
`
`
`TRADEMARK
`Alexandria, VA 22313-1450
`
`
`In Compliance with 35 U.S.C. § 290 and/or 15 U.S.C. § 1116 you are hereby advised that acourt action has been
`filed in theU.S. District Court
`Eastern District ofTexas
`onthefollowing
`
`(Cl Trademarks or
`(Patents.
`(
`[1] thepatent action involves 35 U.S.C. § 292.):
`
`DOCKET NO.
`DATE FILED
`US. DISTRICT COURT
`
`
`
`
`9:47-tv-0231-JRG
`3/26/2017
`Eastern District of Texas
`PLAINTIFF
`DEFENDANT
`
`
`
` Google,Inc.
`Uniloc USA, Inc. and Uniloc Luxembourg §.A.
`
`
`
`
`TRAERTARKNO.
`HOLDEROFPATENT ORTRADEMARK
`
`
`
`
`
`
`pases|aatzots UnilocLuxembourg S.A.
`
`
`po
`
`
`eea
`
`
`
`
`
`
`
`
`In the above-—entitled case, the following patent(s)/ trademark(s) have been included:
`
`
`
`
`
`INCLUDED BY
`(1 Amendment
`(1 Answer
`Ll Cross Bill
`(1 Other Pleading
`
`
`
`HOLDER OFPATENT ORTRADEMARKeeTRADEMARKNO. ORTRADEMARK
`
`
`DATE OF PATENT
`
`2 _
`pd
`
`
`(BY) DEPUTY CLERK
`
`
`
`Copy 1—Uponinitiation ofaction,mailthis copyto Director Copy 3—Upon termination ofaction,mailthis copyto Director
`Copy 2—-Uponfiling document adding patent(s), mail this copy to Director Copy 4—Casefile copy
`
`
`
`11
`
`DATE INCLUDED
`
`PATENT OR
`
`In the above—entitled case,th
`
`¢ following decision has been rendered orjudgement issued:
`
`DECISION/JUDGEMENT
`
`11
`
`

`

`Trials@uspto.gov
`571-272-7822
`
`Paper No. 7
`Entered: May 25, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`Vv.
`
`UNILOC USA,INC. and UNILOC LUXEMBOURGS.A.,!
`
`Case IPR2017-00223
`Patent 8,724,622 B2
`
`Before MIRIAM L. QUINN, KERRY BEGLEY,and
`CHARLES J. BOUDREAU,Administrative Patent Judges.
`
`BOUDREAU,Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`37 CFR. § 42.108
`
`! Patent Owner’s Mandatory Notice filed pursuant to 37 C.F.R. § 42.8
`identifies Uniloc USA,Inc. and Uniloc Luxembourg S.A. as Patent Owner
`and as real parties in interest. Paper 4 at caption, 1. Therefore, we adjust the
`case caption to include Uniloc USA,Inc.
`
`12
`
`12
`
`

`

`IPR2017-00223
`Patent 8,724,622 B2
`
`I. INTRODUCTION
`
`Apple Inc. (“Petitioner”) filed a Petition (Paper2, “Pet.”) requesting
`an inter partes review of claims 3, 4, 6-8, 10-19, 21-23, and 38 (“the
`challenged claims”) of U.S. Patent No.8,724,622 B2 (Ex. 1001, “the
`°622 patent”). Pet. 2. Uniloc USA,Inc. and Uniloc Luxembourg S.A.
`(“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`Wereview the Petition under 35 U.S.C. § 314, which provides that an
`inter partes review may not be instituted “unless .
`.
`. there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of the
`claims challengedin the petition.” 35 U.S.C. § 314(a). For the reasonsthat
`follow and on this record, we are not persuaded that Petitioner demonstrates
`
`a reasonablelikelihood of prevailing in showing the unpatentability of any
`of the challenged claims on the asserted grounds. Accordingly, we deny
`
`Petitioner’s request to institute an inter partes review.
`
`Il. BACKGROUND
`
`A, Related Matters
`
`Petitioner indicates that the °622 patent is involved in Uniloc USA,
`
`Inc. v. Apple Inc., No. 2:16-cv-00638 (E.D. Tex.) and twenty-six other
`actions in the U.S. District Court for the Eastern District of Texas. Pet. 71—
`73. The °622 patentalso is the subject of Case IPR2017-00224, which
`Petitioner filed concurrently with the instant proceeding. See Pet. 2-3;
`
`Prelim. Resp. 1 & n.1.
`
`B. Overview ofthe ’622 Patent
`The ’622 patent explains that “[v]oice messaging” and “instant text
`messaging”in both the Voice overInternet Protocol (“VoIP”) and public
`switched telephone network environments are known. Ex. 1001, 2:22—46.
`
`13
`
`13
`
`

`

`IPR2017-00223
`Patent 8,724,622 B2
`
`In prior art instant text messaging systems, a server presents a user of a
`client terminal with a “list of persons who are currently ‘online’ and ready to
`
`receive text messages,” the user “select[s] one or more”recipients and types
`the message, andthe server immediately sends the messageto the respective
`client terminals. Jd. at 2:34-46. According to the ’622 patent, however,
`
`“there is still a need in the art for... a system and methodfor providing
`
`instant VoIP messaging over an IP network,” such asthe Internet.
`
`Id. at 1:18-22, 2:47-S9, 6:47-49.
`
`In one embodiment, the 622 patent discloses local instant voice
`
`messaging (“IVM”) system 200, depicted in Figure 2 below. Jd. at 6:22-24.
`200
`
`214
`
`216
`
` \
`@t| GATEWAY
`
`7114
`
`FIG, 2
`Asillustrated in Figure 2, local packet-switched IP network 204, which may
`be a local area network (“LAN”), “interconnects” IVM clients 206, 208 and
`legacy telephone 110 to local IVM server 202. Jd. at 6:50-7:2; see id.
`at 7:23-24, 7:61-65. Local IVM server 202 enables instant voice messaging
`
`functionality over network 204. Jd. at 7:61-65.
`
`14
`
`14
`
`

`

`IPR2017-00223
`Patent 8,724,622 B2
`
`In “record mode,” IVM client 208, exemplified as a VoIP softphone
`
`in Figure 2, “displays a list of one or more IVM recipients,” provided and
`stored by local IVM server 202, andthe user selects recipients from thelist.
`Id. at 7:57-59, 7:65-8:4. IVM client 208 then transmits the selections to
`
`IVM server 202 and “records the user’s speech into .
`
`.
`
`. digitized audio
`
`file 210 (i.e., an instant voice message).” /d. at 8:4—-11.
`
`Whenthe recording is complete, [VM client 208 transmits audio
`
`file 210 to local IVM server 202, which delivers the message to the selected
`recipients via local IP network 204. Id. at 8:15—29. “[O]nly the available
`IVMrecipients, currently connected to ... IVM server 202, will receive the
`
`instant voice message.” Jd. at 8:33-34. IVM server 202 “temporarily saves
`the instant voice message” for any IVMclient that is “not currently
`connected to... local IVM server 202(i.e., is unavailable)” and “deliversit
`
`... when the IVM client connects to... local IVM server 202(i.e., is
`
`available).” Jd. at 8:34-39; see id. at 9:17-21. Upon receiving the instant
`voice message,the recipients can audibly play the message. Jd. at 8:29-32.
`
`C. Illustrative Claims
`
`Ofthe challenged claims, claims 3 and 38 are independent. Those
`two independentclaims, which are reproduced below,areillustrative of the
`
`recited subject matter:
`
`3. A system comprising:
`a network interface connected to a packet-switched network;
`a messaging system communicating with a plurality of instant
`voice messageclient systems via the network interface; and
`a communication platform system maintaining connection
`information for each of the plurality of instant voice
`messageclient systems indicating whether there is a current
`connection to each ofthe plurality of instant voice message
`client systems,
`
`15
`
`15
`
`

`

`IPR2017-00223
`Patent 8,724,622 B2
`
`wherein the messaging system receives an instant voice
`message from oneofthe plurality of instant voice message
`client systems, and
`wherein the instant voice message includes an object field
`including a digitized audiofile.
`
`38. A system comprising:
`a client device;
`a networkinterface coupledto the client device and connecting
`the client device to a packet-switched network; and
`an instant voice messaging application installed on the client
`device, wherein the instant voice messaging application
`includes a client platform system for generating an instant
`voice message and a messaging system fortransmitting the
`instant voice message overthe packet-switched network via
`the network interface,
`a display displaying a list of one or more potential recipients
`for an instant voice message.
`
`Ex. 1001, 24:12-27, 27:11-23.
`
`D. References Relied Upon
`
`Petitioner relies on the following references:
`
`
`
`Vuori US 2002/0146097 Al—_Oct. 10, 2002 (Ex. 1005)
`
`Holtzberg US 6,625,261 B2
`Sept. 23, 2003 (Ex. 1007)
`Vaananen
`US7,218,919 B2
`May 15, 2007 (Ex. 1008)
`European Telecommunications Standards Institute (ETSI), Technical
`Specification (TS) 123 040 v3.5.0 (2000-07): Universal Mobile
`Telecommunications System (UMTS); Technicalrealization ofthe
`Short Message Service (SMS) (“SMSS”; Ex. 1006)
`
`Pet. 2. Petitioneralso relies on a declaration of Leonard J. Forys, Ph.D.
`
`(Ex. 1003).
`
`16
`
`16
`
`

`

`IPR2017-00223
`Patent 8,724,622 B2
`
`E. Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 3, 4, 6-8, 10-19, 21-
`23, and 38 under 35 U.S.C. § 103 on the following grounds:
`.
`\
`
`Reference(s)
`Vuori and SMSS
`
`Claim(s) Challenged
`3, 4, 6-8, 11-13, 18, and 21—23
`
`
`
`
`Vuori, SMSS,and Holtzberg|10 and 14-17
`
`
`
`
`Vuori, SMSS, and Vaananen
`
`Pet. 2.
`
`III. DISCUSSION
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144-46 (2016) (upholding the use of
`
`the broadest reasonable interpretation standard as the claim construction
`
`standard to be applied in an inter partes review proceeding). Underthe
`broadest reasonable interpretation standard, claim terms generally are given
`their ordinary and customary meaning as would be understood by one of
`ordinary skill in the art in the context of the entire disclosure. See /n re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`|
`Petitioner proposes constructions for “object field,” as recited in
`independentclaim 3; “action field,” as recited in dependent claim 4;
`“identifier field,” as recited in dependent claim 6; “source field,” as recited
`
`in dependentclaim 7; “destination field,” as recited in dependentclaim 8;
`
`17
`
`17
`
`

`

`IPR2017-00223
`Patent 8,724,622 B2
`
`and “display[ing] at least one of the plurality of instant voice messages,” as
`recited in dependentclaim 16. Pet. 6-8.? Patent Owner doesnot proffer any
`terms for construction, but contendsthat Petitioner’s construction of“object
`
`field” “risks rending other claim language superfluous” and “should also be
`rejected as seeking to eviscerate the expressly recited ‘object’ qualifier.”
`Prelim. Resp. 20-23. Patent Owner contends, however,that regardless
`whether we adopt Petitioner’s proposed construction of“object field,”
`
`Petitioner fails to meet its burden with respect to the asserted grounds. Jd. at
`
`23-24.
`
`Based on our review of the record before us, we determine that no
`
`claim terms.require an express construction to resolve the issues presented
`by the patentability challenges in this case. See Vivid Techs., Inc. v. Am. Sci.
`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only claim
`termsthat “are in controversy” needto be construed and“‘only to the extent
`necessary to resolve the controversy”). Our determination infra that
`Petitioner has not demonstrated a reasonablelikelihood of prevailing with
`
`respect to any challenged claim does not turn on the construction of any
`
`disputed claim term.
`B. Analysis ofAsserted Grounds of Unpatentability
`
`1. Principles ofLaw
`
`_ A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter andthe prior art are “such
`
`2 In the Petition, Petitioner identifies each of “objectfield,” “action field,”
`“Gdentifier field,” “sourcefield,” and “destination field” as being recited in
`claim 1. Pet. 6-7. As Patent Ownerpoints out, however, claim 1 is not
`challenged in the Petition, and in any event, none of those termsis recited in
`claim 1. Prelim. Resp. 20.
`
`18
`
`18
`
`

`

`IPR2017-00223
`Patent 8,724,622 B2
`
`that the subject matter as a whole would have been obviousatthe time the
`
`invention was madeto a person having ordinary skill in the art to which said
`
`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007). The question of obviousness is resolved onthe basis of underlying
`factual determinations, including: (1) the scope and contentofthe priorart;
`(2) any differences betweenthe claimed subject matter and the priorart;
`(3) the level of skillin the art;? and (4) objective evidence of
`nonobviousness,i.e., secondary considerations.’ Graham v. John Deere Co.,
`
`383 U.S. 1, 17-18 (1966).
`
`“Tosatisfy its burden of proving obviousness, a
`
`petitioner cannot employ mere conclusory statements. The petitioner must
`instead articulate specific reasoning, based on evidenceof record, to support
`the legal conclusion of obviousness.” In re Magnum Oil Tools Int'l, Ltd.,
`829 F.3d 1364, 1380 (Fed. Cir. 2016). We analyze the asserted grounds
`
`with the principles stated above in mind.
`2. Obviousness over Vuori and SMSS (Claims 3, 4, 6-8, 11-13,
`18, and 21-23) or Vuori alone (Claim 38)
`
`Petitioner contends that Vuori teaches or suggests all limitations of
`
`claims 3, 4, 6-8, 11-13, 18, 21-23, and 38 of the ’622 patent. Pet. 12-19,
`21-22, 24-25, 27, 29, 31, 33-34, 36-47, 65-71. Petitioner further contends,
`
`however,that, “[t]o the extent Patent Owner argues” Vuori does not
`explicitly teach or suggest “wherein the instant voice message includes an
`
`3 Petitioner proposes an assessmentofthe level ofskill in the art with
`respect to the ’622 patent. Pet. 5. Patent Owner does notchallengethis
`assessment or propose an alternative assessment. For purposesofthis
`Decision and to the extent necessary, we adopt Petitioner’s assessment.
`4 Patent Ownerdoes not contendin its Preliminary Response that such
`secondary considerations are present.
`
`19
`
`19
`
`

`

`IPR2017-00223
`Patent 8,724,622 B2
`
`object field including a digitized audiofile,” as recited in independent
`claim 3, and certain limitations recited in claims 4 and 6-8,those limitations
`
`are taught or suggested by SMSS.
`
`/d. at 19-20, 22-23, 25, 27-30, 32, 34—
`
`35,
`
`Patent Ownerraises several argumentsin its Preliminary Response,
`
`including that the Petition does not identify anything in Vuori thatsatisfies
`
`the “network interface”limitations of independent claims 3 and 38.
`
`Prelim. Resp. 25-26, 35-37.
`Webegin with a brief overview of Vuori and relevantlegal principles
`
`and then address the parties’ arguments.
`
`a. Overview of Vuori
`
`Vuoriis titled “Short Voice Message (SVM) Service Method,
`
`Apparatus and System.” Ex. 1005, [54]. Vuori discloses a method for
`sending voice-type short messages using an SVM service. Ex. 1005, [57],
`431. Vuori teaches that SVMs“are recorded in the sending terminal and
`sent to an SVMservice center (SVMSC),” and a “second terminal may then
`
`commencea bidirectional communication so that an instant voice message
`session can be established.” Jd. 31.
`In one embodiment, a user initiates a short voice message by pressing
`a menu key on a user equipment, whichpreparesto receive the message and
`may emit a sound to alert the user to commence speaking. Jd. ¥ 32, Figs. 1—
`2. The user equipmentthen receivesand stores the short voice message. Jd.
`Next, the user “select[s] one or more intended recipients” andinitiates the
`transfer. Jd. 33. The short voice message is then sent to the SVMSC,
`which “check[s]” and “determines the availability of the one or more
`intended recipients.” Id. J] 34, 50; see id. 937. The SVMSC sendsthe
`
`20
`
`20
`
`

`

`IPR2017-00223
`Patent 8,724,622 B2
`
`short voice message “immediately to the intended recipients who are
`
`available.” Jd.
`
`34; see id 750. For recipients who are not available,
`
`however, the SVMSC “temporarily stor[es]” the message and “continue[s]
`
`attempting to send [the message].. . until the[ recipients] becomeavailable
`or until a time out occurs.” Id. J] 34, 50. Upon delivery of the short voice
`
`message, the recipient may play back the message. Jd. § 35, Figs. 1-2.
`
`Vuori teaches that the SVM service may becarried out in a Global
`
`System for Mobile communications (“GSM”) network as shownin Figure 3,
`
`reproduced below. Jd. § 37.
`
`|
`BASE STATION
`SUBSYSTEM(BSS) |
`
`|
`
`Figure 3 of Vuori.
`In Figure 3, SVMSC 50 is shown along with interworking mobile
`switching center (“MSC”) 52 connected by line 54 to GSM Network
`Subsystem 56. Jd. Gateway 58 is provided for interworking between
`
`10
`
`21
`
`21
`
`

`

`TPR2017-00223
`Patent 8,724,622 B2
`
`SVMSC50 and “MSC 58”of another GSM network 59. Id. Vuori
`
`explains that GSM Network Subsystem 56 also includes MSC 66 connected
`to a base station subsystem (“BSS”) 68 as well as other base station
`subsystems 70 for communication with a plurality of mobile stations, but
`that only one mobile station 72 is shown in Figure 3. Jd. According to
`Vuori, MSC 66is also connected to public switched telephone network
`(“PSTN”)/Integrated Services Digital Network (“ISDN”) network 78 for
`allowing mobile stations to communicate with wired telephonesets in a
`circuit-switched manner, as well as to a plurality of databases that may in
`
`turn be connected directly to MSC 66 or via data network 80 and operation
`
`and maintenance center 82. Jd.
`
`b. Analysis
`As reproduced above, independentclaim 3 recites, in part, “a network
`interface connectedto a packet-switched network”and “‘a messaging system
`communicating with a plurality of instant voice message client systems via
`the networkinterface.” Ex. 1001, 24:13-17. Independentclaim 38 similarly
`
`recites “a network interface coupled to [a] client device and connecting the
`
`client device to a packet-switched network.” Jd. at 27:13-14.
`In support ofits contention that the combination of Vuori and SMSS
`renders claim 3 unpatentable, Petitioner contends “Vuori teaches or suggests
`
`a networkinterface (i.e., interconnected interfaces) connected to a
`
`5 It appears from Figure 3 that Vuori may haveintendedto refer instead to
`“MSC 60,” which is within the dotted line encompassing GSM Network
`Subsystem 59.
`
`11
`
`22
`
`22
`
`

`

`IPR2017-00223
`Patent 8,724,622 B2
`
`packet-switched network(i.e., a GPRSinfrastructure).” Pet. 13 (citing
`
`Ex. 1003 J§ 123-125). According to Petitioner:
`
`For example, in FIG. 3, reproduced below, Vuori providesthat:
`
`At the subscriber side, a user equipment 124 is
`connected by one or more radio links (Uu) to one
`or more corresponding Node Bs 126 which are in
`turn connected (lub)
`to corresponding radio
`network controllers (RNCs) 128... The RNCs 128
`are connected to the UMTSinfrastructure 120 via
`Iu interfaces
`to
`a
`third generation-serving
`[General Packet Radio Service] GPRS support
`node (3G-SGSN) 140...
`It may also be connected
`to an SVM service 146 similar to

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket