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
`
`v.
`
`UNILOC LUXEMBOURG, S.A.
`Patent Owner
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`
`
`IPR2017-02084
`PATENT 7,535,890
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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
`
`v.
`
`UNILOC LUXEMBOURG, S.A.
`Patent Owner
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`
`
`
`IPR2017-02084
`PATENT 7,535,890
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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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`B.
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`INTRODUCTION
`THE PETITION SHOULD BE DENIED AS
`IMPERMISSIBLY REDUNDANT WITH PRIOR INTER
`PARTES REVIEW PETITIONS
`A.
`The Board Has Recently Confirmed Denial is Appropriate
`Under These Facts
`Petitioners Provide No Rational Justification for the
`Redundancy
`The Cases Petitioners Cite Confirm Denial Is Appropriate Here
`C.
`The Board’s Precedential Factors Support Denial
`D.
`III. THE CONCURRENTLY-FILED PETITIONS ARE
`REDUNDANT
`IV. PETITIONERS FAIL TO NAME ALL REAL PARTIES-
`IN-INTEREST
`A.
`Evidence of a Coordinated Multi-Petition Strategy
`B.
`Additional Evidence of Failure to Name Real Parties-In-
`Interest
`V. OVERVIEW OF THE ’890 PATENT
`A.
`Effective Filing Date of the ’890 Patent
`B.
`The ’890 Patent Describes and Claims Instant Voice
`Messaging over a Packet-Switched Network
`VI. THERE IS NO REASONABLE LIKELIHOOD THAT
`ANY OF THE CHALLENGED CLAIMS ARE
`UNPATENTABLE
`A.
`Claim Construction
`B.
`In denying prior petitions, the Board has already considered
`and rejected the same impermissible conflation of Zydney’s
`voice container and voice message
`IV. THE SUPREME COURT IS CURRENTLY REVIEWING
`THE CONSTITUTIONALITY OF INTER PARTES
`REVIEW
`V. CONCLUSION
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`IPR2017-2084
`U.S. Patent 7,535,890
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`
`Table of Contents
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`1
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`2
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`2
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`4
`5
`7
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`9
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`10
`13
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`15
`17
`17
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`17
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`19
`19
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`20
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`26
`26
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`ii
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`IPR2017-2084
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`US. Patent 7,535,890
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`Exhibit No.
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`List of Exhibits
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`
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`2001
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`Declaration of Dr. Val DiEliius from IPR2017-01523 (under
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`which institution was denied reasons directly applicable to the
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`instant Petition)
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`2002
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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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`
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`iii
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`IPR2017-2084
`U.S. Patent 7,535,890
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`I.
`
`INTRODUCTION
`Uniloc Luxembourg S.A. (the “Patent Owner”) submits this Preliminary
`Response to Petition IPR2017-2084 for Inter Partes Review (“Pet.” or “Petition”)
`of United States Patent No. 7,535,890, System and Method for Instant VoIP
`Messaging, (“the ’890 patent” or “EX1001”) filed by Google Inc., Motorola
`Mobility LLC, Huawei Device Co., Ltd., Huawei Device USA, Inc., Huawei
`Investment & Holding Co., Ltd., Huawei Technologies Co., Ltd., and Huawei
`Device (Dongguan) Co., Ltd. (“Petitioners”). The instant Petition is procedurally
`and substantive defective for at least the reasons set forth herein.
`The Petition should be denied under of § 325(d) because the Board has already
`considered and flatly rejected the merits of the challenges presented in the instant
`Petition, which are based exclusively on the same Zydney reference (International
`Publication No. WO 01/11824 or “EX1004”). More specifically, Petitioners’ co-
`defendants already previously attempted—and failed—to assert Zydney as a primary
`reference (in combination with other references) in challenging the same claims of
`the same ’890 patent in related matters IPR2017-1523 and IPR2017-1524. The
`Board’s reasoning in rejecting those earlier petitioners applies equally here.
`The Board need not even consider the merits of the Petition, however, due to
`procedural defects. There is sufficient evidence to conclude, based at least on public
`filings, that Petitioners failed to identify all real parties-in-interest. Under 35 U.S.C.
`§ 312(a)(4), “[a] petition filed under section 311 may be considered only if … the
`petition provides such other information as the Director may require by regulation.”
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`1
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`IPR2017-2084
`U.S. Patent 7,535,890
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`II. 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
`identical) arguments that is already before the Board in no less than six IPR
`proceedings filed collectively by the same group of joint defendants. See, e.g.,
`IPR2017-0220, IPR2017-0221, IPR2017-1523, IPR2017-1524, IPR2017-1612,
`IPR2017-1636, and IPR2017-1802.
`
`A. The Board Has Recently Confirmed Denial is Appropriate Under
`These Facts
`In IPR2017-01780, the Board recently held that:
`
`“On its face, § 325(d) does not contain any recitation
`regarding the identity of the party that previously
`presented the prior art; instead, the language of § 325(d)
`focuses solely on whether or not a petition relies on “the
`same or substantially the same prior art or argument
`previously . . . presented to the Office.” 35 U.S.C. §
`325(d). This stands in contrast to the estoppel provisions,
`for example, which only apply when the same petitioner
`brings a second petition for inter partes review.”
`
`IPR2017-01780, Paper 8 at 8. Accordingly, the Board concluded that Ҥ 325(d) is
`not limited to instances where the petitioner is the party who previously brought
`the prior art to the Office’s attention.” Id.
`There, the Board found it was appropriate to dismiss the petition under §
`325(d), where: the asserted art was identical to that presented in previous petitions,
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`2
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`IPR2017-2084
`U.S. Patent 7,535,890
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`and it was the third petition challenging the patentability of the claims of the patent-
`at-issue as obvious based on the same prior art reference; and based on the timing of
`the filing of that petition, the petitioner had the benefit of the Board’s prior decisions
`on institution, as well as patent owner’s preliminary responses in those prior
`proceedings. Id. at 8-9.
`The present facts present even more compelling reasons to invoke § 325(d).
`The Board has already considered and flatly rejected the merits of the challenges
`presented in the instant Petition. More specifically, Petitioners’ co-defendants
`already previously attempted—and failed—to assert the same Zydney reference in
`challenging the same claims of the same ’890 patent in related matters IPR2017-
`1523 and IPR2017-1524. As explained further below, the Board’s reasoning in
`denying the petitions filed in those highly-related matters applies here.1 Applying
`virtually the same arguments the Board has since rejected, the instant Petitioners rely
`exclusively on Zydney in challenging certain limitations of the same claims of the
`same ’890 patent. Another significant factor warranting denial under § 325(d) is that
`
`
` See, e.g., IPR2017-0220, Paper 6 (Patent Owner’s Preliminary Response) and Paper
`9 (Board Decision on Institution); IPR2017-0221, Paper 6 (Patent Owner’s
`Preliminary Response), Paper 9 (Board Decision on Institution), and Paper 13
`(Patent Owner Response); IPR2017-1523, Paper 6 (Patent Owner’s Preliminary
`Response) and Paper 7 (Board Decision Denying Institution); IPR2017-1524, Paper
`6 (Patent Owner’s Preliminary Response) and Paper 7 (Board Decision Denying
`Institution); IPR2017-1612, Paper 9 (Patent Owner’s Preliminary Response) and
`Paper 11 (Board Decision on Institution); IPR2017-1636, Paper 8 (Patent Owner’s
`Preliminary Response) and Paper 10 (Board Decision on Institution); and IPR2017-
`1802, Paper 6 (Patent Owner’s Preliminary Response).
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` 1
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`3
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`U.S. Patent 7,535,890
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`the instant Petitioners had at least the benefit of Patent Owner’s Preliminary
`Responses in those related proceedings (among other related proceedings).2 Just as
`in IPR2017-01780, the Board should exercise its discretion and dismiss the Petition
`in its entirety.
`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.3 To the
`contrary, Petitioners admit that “Zydney is also asserted as a primary reference in
`four other IPR Petitions against the ’890 patent, two of which [IPR2017-2083 and
`IPR2017-2084] are 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.
`The instant Petition challenges claims previously challenged in petitions
`already rejected by the Board, which also had asserted Zydney as an allegedly
`invalidating reference. See, e.g., IPR2017-1523, IPR2017-1524, IPR2017-1697,
`IPR2017-1698, IPR2017-1804, IPR2017-1805, and IPR2017-2090. The fact that
`
`
` See note 1, supra.
`3 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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` 2
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`4
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`U.S. Patent 7,535,890
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`other petitions asserting Zydney also challenge additional claims of the ’890 patent
`(i.e., in addition to presently challenged claims) only confirms the instant Petition
`should be denied as unnecessarily redundant and harassing.4
`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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`5
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`U.S. Patent 7,535,890
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`Fitbit, Inc., v. BodyMedia, Inc.,5 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.,6 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.,
`IPR2017-0220, IPR2017-0221, IPR2017-1523, IPR2017-1524, IPR2017-1612,
`IPR2017-1636, and IPR2017-1802.
`With respect to the other two cases Petitioners cite,7 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).
`6 IPR2015-00606, Paper 14 at 8 (PTAB Nov. 9, 2015).
`7 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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` 5
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`6
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`U.S. Patent 7,535,890
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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 opinion8 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-
`0220 and IPR2017-00221) 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,
`
`
`
` 8
`
` 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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`7
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`U.S. Patent 7,535,890
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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 ’890 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).
`Fourth, Petitioners application of Zydney in the instant Petition demonstrably
`relies on “the same or substantially the same prior art or arguments previously were
`presented to the Office” in at least the earlier-filed Petitions. General Plastic,
`IPR2016-01357, Paper 19, at 19 (confirming that a factor to consider under § 325(d)
`is whether “the same or substantially the same prior art or arguments previously were
`presented to the Office”).
`Fifth, “the finite resources of the Board” confirm denial is appropriate here.
`Id. at 9 (factor 6).
`Sixth, “the requirement under 35 U.S.C. § 316(a)(11) to issue a final
`determination not later than one year after the date on which the Director notices
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`8
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`IPR2017-2084
`U.S. Patent 7,535,890
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`institution of review” weighs in favor of denial here. Id. at 9 (factor 7).
`While each one of the above factors set forth in the precedential General
`Plastic Order independently confirms denial is appropriate here, their collective
`weight overwhelmingly invokes the discretion of § 325(d). And while Petitioners
`have the obligation to address § 325(d) within the Petition itself, Petitioners make
`no mention of these factors, much less explain why they do not apply here.
`
`III. THE CONCURRENTLY-FILED PETITIONS ARE REDUNDANT
`The Petition should also be denied under § 325(d) as presenting internally
`redundant grounds with respect to the related petitions concurrently-filed by the
`same named Petitioners. See IPR2017-2083 and IPR2017-2084. 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”).
`In the instant Petition, Petitioners assert that Zydney alone anticipates certain
`claims of the ’890 patent. In the concurrently-filed petitions, Petitioners then hedge
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`9
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`IPR2017-2084
`U.S. Patent 7,535,890
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`their bets by presenting redundant challenges of 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.9 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.
`
`IV. PETITIONERS FAIL TO NAME ALL REAL PARTIES-IN-INTEREST
`The ’890 patent is in a family of patents including United States Patent Nos.
`8,724,622 (“the ’622 Patent”); 8,243,723 (“the ’723 Patent”); 8,199,747 (“the ’747
`
`
`
` 9
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`
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` IPR2014-00358, Paper 11 (P.T.A.B. July 23, 2014).
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`10
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`US. Patent 7,535,890
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`Patent”); and 8,995,433 (“the ’433 Patent”).1° The diagram below how this family
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`of patents is interrelated.
`
`App. No.: 105740.030
`Filed: 12-18-2003
`
`Pat. No: 7.535.890
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`
`
`App. No.: 12.53.98.063
`Filed: 03-04-2009
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`App. No.: 123398.076
`Filed: 03-04-2009
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`Pat. No: 8.243.723
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`Pat. No: 8.199.747
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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.: 145224.125
`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
`
`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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`Apple
`
`1m “—
`IPR2017—0220
`14—Nov-16
`
`five related patents derive fi'om United States Patent Application
`‘0 All
`No. 10/740,030 and are referred to collectively as members of the ’622 Patent’s
`“family.”
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`11
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`IPR2017-2084
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`US. Patent 7,535,890
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`’723
`
`’723
`
`’622
`
`14-Nov-16
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`14—Nov—16
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`14-Nov-16
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`7-Apr—17
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`11-May-17
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`2-Jun- 1 7
`
`2-Jun-17
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`20-Jul- 1 7
`
`20-Jul-1 7
`
`20-Jul-1 7
`
`————————
`
`new
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`IPR2017-0221
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`IPR2017—0222
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`IPR2017-0223
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`IPR2017-0224
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`IPR2017-0225
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`IPR2017-1257
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`IPR2017—1365
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`Apple
`
`Apple
`
`Apple
`
`Apple
`
`Apple
`
`Facebook / WhatsApp
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`Facebook / WhatsApp
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`Facebook / WhatsApp
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`Facebook / WhatsApp
`
`Facebook / WhatsApp
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`Facebook / WhatsApp
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`Snap
`
`Facebook / WhatsApp
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`Samsungmec
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`Samsung Elec
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`Samsung Elec
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`Samsungmec
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`Samsungmec
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`Samsung Elec
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` Apple
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`
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`LG Electronics
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`
`
`
`
`
`
`IPR2017-1805
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`20-Jul-17
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`IPR2017-2087
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`11-Sep-17
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`12
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`IPR2017-2084
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`US. Patent 7,535,890
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`mm m.—
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`
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`A.
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`Evidence of a Coordinated Multi—Petition Strategy
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`The same joint defendants who coordinated in preparing joint invalidity
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`contentions in related litigation used those contentions as a playbook in collectively
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`filing thirty-six IPR petitions. Each petition only names a subset of the defendants
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`as avatars for respective challenges that can be traced back to joint invalidity
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`contentions filed with the district court. An overview of the IPR petitions reveals a
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`significant overlap and pattern in the arguments presented. This coordinated
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`onslaught of petitions could be the poster children for abuse of the IPR process.
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`Over a year ago, on November 14, 2016, Apple concurrently filed 6 IPR
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`petitions (IPRs 2017-0220 through 0225), challenging at least 71 patent claims in 4
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`of the 5 related patents—the ’433, ’622, ’723, and ’890 patents—using at least 18
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`combinations of 13 references: Abburi, Dahod, Daniel], Deshpande, Hogan,
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`Holtzberg, Lerner, Logan, Malik, SMSS, Stubbs, Vc‘ic'im’inen, Vuori.
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`In April and June 2017, Facebook filed 9 IPR petitions (IPR2017-1257, 1365,
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`1427, 1428, 1523, 1524, 1634, 1667, and 1668) challenging 96 claims of the same 5
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`related patents—using at least 18 combinations of 16 references (references retread
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`l3
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`U.S. Patent 7,535,890
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`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.11
`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.12
`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.
`Of the thirty-six IPRs that have been filed against the patents in this family, at
`least twenty-five IPRs—including the instant Petition—rely primarily on the same
`Zydney reference. Two of those petitions relied on Zydney in challenging the same
`
`
`11 IPR2017-1667 and IPR2017-1668 argued that claims of the ’622 Patent are
`obvious over Zydney and Shinder.
`12 IPR2017-1697 and IPR2017-1698 argued that claims of the ’622 Patent are
`obvious over Zydney and Griffin.
`
`14
`
`
`
`IPR2017-2084
`U.S. Patent 7,535,890
`
`’890 patent at issue here. See IPR2017-1523 and IPR2017-1524. The instant Petition
`offers redundant anticipation challenges based (yet again) on Zydney.
`Petitioners clearly are gaming the system. The inter partes review system is
`not a piñata party in which each member of a joint defense group can take a turn
`swinging at Patent Owner’s patents with the Zydney stick. Petitioners appear to be
`playing the odds: if Petitioners keep filing IPR Petitions against the ’890 patent,
`Petitioners will eventually overwhelm the Board and Patent Owner.13 “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 17.14
`B. Additional Evidence of Failure to Name Real Parties-In-Interest
`Even at this preliminary stage, there is sufficient evidence to conclude
`Petitioners failed to name all real parties-in-interest. Petitioners jointly submitted
`
`
`
`13 “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.
`14 See also LG Elecs. Inc. v. Core Wireless Licensing S.A.R.L., Case IPR2016-00986
`(P.T.A.B. Aug. 22, 2016) (Paper 12) (“The Board’s resources would be more fairly
`expended on first petitions rather than on a follow-on petition like the Petition in this
`case”); Butamax Advanced Biofuels LLC v. Gevo, Case IPR2014-00581, slip op. at
`12–13 (P.T.A.B. Oct. 14, 2014) (Paper 8) (“[T]he four obviousness grounds are
`‘second bites at the apple’”).
`
`15
`
`
`
`IPR2017-2084
`U.S. Patent 7,535,890
`
`invalidity contentions on March 28, 2017 that are largely duplicative of the invalidity
`contentions filed on December 16, 2016 by other members of the same joint-defense
`group. See EX2002 and EX2003. In addition to that apparent coordination in joint
`invalidity contentions, members of this same joint defense group admittedly
`coordinated in various IPR filings. These filings have been based on references
`named in the joint invalidity contentions and known before the original IPR was
`filed.
`
`The present Petitioners collectively filed nine IPRs over the space of two days
`(September 11-12, 2017) and, not coincidentally, at the same time LG Electronics
`filed a tenth IPR challenge (IPR2017-2087). LG Electronics and Huawei admittedly
`coordinated their efforts at least in filing the petitions in IPR2017-2090 and
`IPR2017-2088. The currently-filed petition in IPR2017-2090 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.15
`
`
`
`15 Notably, Google is the only named Petitioner to claim it is “not a real party-in-
`interest to any of” the admittedly related IPR proceedings identified in the Petition.
`Pet. 4. Not only is this unexplained claim by Google questionable, the other named
`Petitioners are conspicuously silent as to whether they claim to not be a real party-
`in-interest in the related matters.
`
`16
`
`
`
`IPR2017-2084
`U.S. Patent 7,535,890
`
`
`V. OVERVIEW OF THE ’890 PATENT
`A. Effective Filing Date of the ’890 Patent
`The ʼ890 Patent is titled “SYSTEM AND METHOD FOR INSTANT VOIP
`MESSAGING.” The ʼ890 Patent issued from U.S. Patent Application No.
`10/740,030, filed December 18, 2003. The ʼ890 Patent issued May 19, 2009. During
`prosecution of the ’890 patent 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 ’890 Patent Describes and Claims Instant Voice Messaging
`over a Packet-Switched Network
`circuit-switched
`conventional
`ʼ890 Patent
`recognizes
`that
`The
`communications enabled traditional telephony yet had a variety of technical
`disadvantages that limited development of other forms of communication over such
`networks. According
`to
`the ʼ890 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, 1:18–23.
`The ʼ890 Patent expressly distinguishes circuit-switched networks from
`packet-switched networks (e.g., the Internet) at least in that the latter routes
`packetized digital information, such as “Voice over Internet Protocol (i.e., “VoIP”),
`also known as IP telephony or Internet telephony.” 1:24–26. Because legacy circuit-
`switched devices were unable to communicate directly over packet-switched
`networks, media gateways (114) were designed to receive circuit-switched signals
`
`17
`
`
`
`IPR2017-2084
`U.S. Patent 7,535,890
`
`and packetize them for transmittal over packet-switched networks, and vice versa.
`Id. at 1:54–2:10. The conversion effected by media gateways (e.g., 114 and 118)
`highlights the fact that packetized data carried over packet-switched networks (e.g.,
`IP network 102) are different from and are incompatible with an audio signal carried
`over a dedicated packet-switched circuit. Id. at 1:18–23.
`The ʼ890 Patent further recognizes that, notwithstanding the advent of instant
`text messages, at the time of the claimed invention there was no similarly convenient
`analog to leaving an instant voice message over a packet-switched network. Id. at
`2:11–43. Rather, “conventionally, leaving a voice message involves dialing the
`recipient’s telephone number (often without knowing whether the recipient will
`answer), waiting for the connection to be established, speaking to an operator or
`navigating through a menu of options, listening to a greeting message, and recording
`the message for later pickup by the recipient. In that message, the user must typically
`identify himself or herself in order for the recipient to return the call.” Id. at 2:15–
`22.
`
`In certain disclosed aspects the ʼ890 Patent describes a user-accessible client
`(208) that is specially configured for instant voice message (IVM) and for direct
`communication over a packet-switched network (e.g., through an Ethernet card) Id.
`at 12:4–5. More specifically, the ʼ890 Patent teaches that certain clients (208) are
`specially 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.,
`
`18
`
`
`
`IPR2017-2084
`U.S. Patent 7,535,890
`
`using TCP/IP) over a packet-switched network (e.g., network 204) “to the local IVM
`server 202.” Id. at 7:65–8:1.
`
`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 the
`’890 patent. Rather, each one of the several earlier-filed petitions citing Zydney
`recognized that the Zydney reference
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