UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`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
`
`
`
`
`IPR2017-02085
`PATENT 7,535,890
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`
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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
`
`
`
`
`
`
`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
`
`
`
`
`IPR2017-02085
`PATENT 7,535,890
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`
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. §42.107(a)
`
`
`
`
`
`
`
`I.
`II.
`
`B.
`
`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 GROUNDS OF THE INSTANT PETITION 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 ’747 patent
`A.
`Effective Filing Date of the ’747 patent
`B.
`The ’747 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
`VII. THE SUPREME COURT IS CURRENTLY REVIEWING
`THE CONSTITUTIONALITY OF INTER PARTES REVIEW
`VIII. CONCLUSION
`
`
`IPR2017-2085
`U.S. Patent 8,199,747
`
`Table of Contents
`
`1
`
`2
`
`2
`
`5
`6
`8
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`10
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`11
`14
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`16
`17
`17
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`18
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`19
`20
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`23
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`29
`29
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`ii
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`IPR2017-2085
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`US. Patent 8,199,747
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`List of Exhibits
`
`Exhibit No.
`
`
`
`2001
`
`Declaration of Dr. Val DiEliius from IPR2017-01523 (under
`
`which institution was denied reasons directly applicable to the
`
`instant Petition)
`
`2002
`
`Invalidity Contentions Submitted on March 28, 2017 in the
`
`underlying consolidated case of Uniloc USA, Inc. v. Samsung
`
`Electronic America ’s, Inc_, Case No. 2: l6-cv-642
`
`2003
`
`Invalidity Contentions Submitted on December 16, 2016 in the
`
`underlying consolidated case of Uniloc USA, Inc. v. Samsung
`
`Electronic America ’s, Inc., Case No. 2: l6-cv—642
`
`
`
`iii
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`
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`IPR2017-2085
`U.S. Patent 8,199,747
`
`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. 8,199,747, System and Method for Instant VoIP
`Messaging, (“the ’747 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 primarily 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 claims of a patent
`from the same family, U.S. Patent No. 7,535,890, in related matters IPR2017-1523
`and IPR2017-1524. Because Petitioners rely on the same Zydney reference to
`challenge claim language that is identical in the challenged claims of the ’747 patent
`as well as the ’890 patent, the Board’s reasoning in rejecting those earlier petitioners
`applies equally here.
`The Petition should also be denied due to procedural defects. 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. Under 35 U.S.C.
`
`1
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`
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`IPR2017-2085
`U.S. Patent 8,199,747
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`§ 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.”
`
`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 two IPR
`proceedings filed collectively by the same group of joint defendants. See, e.g.,
`IPR2017-1257, and IPR2017-1799.
`
`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.
`And as a result, the Board concluded “[t]hus, § 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.
`
`2
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`IPR2017-2085
`U.S. Patent 8,199,747
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`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,
`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.
`Here, the facts are strikingly similar to those in IPR017-01780: the asserted
`art, Zydney is identical to that presented in two previous IPR proceedings; and the
`Petitioners also have had the benefit of the Board’s prior decisions and Patent
`Owner’s Preliminary Responses in those previous two IPR proceedings. 1 Just as in
`IPR2017-01780, the Board should exercise its discretion and dismiss the Petition in
`its entirety.
`Notably, the Board also recently rejected a similar approach by Google in
`another matter (2017-01665) in which Google challenged another one of Uniloc’s
`patents. See Google v. Uniloc, IPR2017-01665, Decision Denying Institution of
`Inter Partes Review (PTAB Jan. 11, 2018) (Paper 10). There, the Board found
`persuasive Uniloc’s argument that “the burden of defending against a subsequent
`case based on the same art ‘would be substantial in having to twice overcome, in
`two separate trials involving separate discovery and potentially even a separate
`
`
` See, e.g., IPR2017-1257, Paper 7 (Patent Owner’s Preliminary Response), Paper 8
`(Decision Denying Institution); and IPR2017-1799, Paper 7 (Patent Owner’s
`Preliminary Response).
`
` 1
`
`3
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`IPR2017-2085
`U.S. Patent 8,199,747
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`panel, what Petitioner admits is the same arguments concerning the same
`combination of references.’” IPR2017-01665, Paper 10 at 21 (quoting Uniloc’s
`Preliminary Response, in that matter, at 6). In support of its decision to deny
`institution under §325(d), the Board also applied the precedential decision in General
`Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016- 01357
`(PTAB Sept. 6, 2017) (Paper 19). The Board explained:
`Although General Plastic discussed § 314(a) rather than §
`325(d), General Plastic’s reasoning on this factor in
`particular guides how we view “shifts in the prior art
`asserted and the related arguments in follow-on petitions”
`as it relates to the burden on a Patent Owner. Id. at 17. In
`particular,
`
`Multiple, staggered petitions challenging the same patent and same
`claims raise the potential for abuse. 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. All other factors aside, this is
`unfair to patent owners and is an inefficient use of the inter partes
`review process and other post-grant review processes.
`Id. at 17–18 (footnote omitted).
`Id. at 22. The reasoning the Board provided in support of its decision to deny
`Google’s petition in IPR2017-01665 also applies here.
`
`4
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`IPR2017-2085
`U.S. Patent 8,199,747
`
`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.2 To the
`contrary,
`Petitioners
`admit
`that
`“other
`IPR
`petitions
`rely
`on
`Zydney to challenge a certain subset of the ’747 patent’s claims”. Pet. 7. Rather than
`justify the imposition of this unnecessary burden on the Board, Petitioners argue “the
`present Petition challenges all claims of the ’747 patent.” Id. (emphasis in original).
`However, the instant Petition relies on Zydney in the same way as the previous
`petitions, and more importantly, the Board has already considered and flatly rejected
`the merits of the challenges based on Zydney presented in the instant Petition.
`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., IPR2017-1257 and IPR2017-1799. Additionally, the
`instant Petition challenges claim language that was previously challenged in
`petitions of patents in the same family, challenges that were also rejected by the
`Board. See, e.g., IPR2017-1523, IPR2017-1524, IPR2017-1697, IPR2017-1698,
`IPR2017-1804, IPR2017-1805, and IPR2017-2090. The fact that the instant Petition
`asserts Zydney in the same way that the Board has already considered and rejected
`under the merits of other petitions asserting Zydney only confirms the instant Petition
`
`
`
` 2
`
` 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).
`
`5
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`IPR2017-2085
`U.S. Patent 8,199,747
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`should be denied as unnecessarily redundant and harassing.
`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
`Fitbit, Inc., v. BodyMedia, Inc.,3 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.,4 the Board observed that the dependent claims
`
`
`
` 3
`
` IPR2016-00545, Paper 8 at 8 (PTAB Aug. 8, 2016).
`4 IPR2015-00606, Paper 14 at 8 (PTAB Nov. 9, 2015).
`
`6
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`IPR2017-2085
`U.S. Patent 8,199,747
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`then at issue were not challenged in prior proceedings. The facts are distinguishable
`here because many of 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. See, e.g., IPR2017-1257 and IPR2017-1799. And
`while Petitioners here argue that the instant Petition challenges “all” of the claims of
`the ’747 patent, the facts here are additionally distinguishable because the instant
`Petition asserts Zydney in the same way that the Board has already considered and
`rejected under the merits of other petitions asserting Zydney. See e.g., IPR2017-
`1523, IPR2017-1524, IPR2017-1697, IPR2017-1698, IPR2017-1804, IPR2017-
`1805, and IPR2017-2090.
`With respect to the other two cases Petitioners cite,5 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
`ultimately overwhelm the Board and anyone attempting to assert patent rights.
`
`
`
` 5
`
` 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)).
`
`
`7
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`IPR2017-2085
`U.S. Patent 8,199,747
`D. The Board’s Precedential Factors Support Denial
`The present facts align with example factors summarized by the Board in the
`precedential General Plastic opinion6 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-
`1257 and IPR2017-1799) and further had the benefit of the Board’s decision on
`whether to institute review in the earlier petition. 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,
`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
`
`
` 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).
`
` 6
`
`8
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`
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`IPR2017-2085
`U.S. Patent 8,199,747
`
`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 ’747 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
`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
`
`9
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`IPR2017-2085
`U.S. Patent 8,199,747
`
`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 GROUNDS OF THE INSTANT PETITION ARE 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”).
`In the instant Petition, in Ground 1, Petitioners assert that Zydney alone
`anticipates certain claims of the ’747 patent. Yet at the same time in Grounds 2 and
`3, Petitioners then hedge 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).
`
`10
`
`
`
`IPR2017-2085
`U.S. Patent 8,199,747
`
`The Board in Eizo Corp. v. Barco N.V.7 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 ’747 patent is in a family of patents including United States Patent Nos.
`8,724,622 (“the ’622 Patent”); 8,243,723 (“the ’723 Patent”); 7,535,890 (“the ’890
`Patent”); and 8,995,433 (“the ’433 Patent”).8 The diagram below how this family
`of patents is interrelated.
`
`
`
` 7
`
` IPR2014-00358, Paper 11 (P.T.A.B. July 23, 2014).
`8 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.”
`
`11
`
`
`
`IPR2017-2085
`
`US. Patent 8,199,747
`
`App. No.: 105740.030
`Filed: 12-18-1003
`
`Pat. No: 7.535.890
`
`
`
`App. No.: 11898063
`Filed: 03-04-2009
`
`App. No: 125398.076
`Filed: 03-04-2009
`
`Pat. No: 8.243.713
`
`Pat. No: 8.199.747
`
`App. No.: 135546.673
`Filed: 07-11-2012
`
`Pat. No: 8.724.622
`
`App. No.: Hill-LIE
`Filed: 03-25-2014
`
`Pat. No: 8.995.433
`
`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
`
`petitions (33 of 36) initiated against these related patents predate the present Petition.
`
`Apple
`
`Apple
`
`Apple
`
`Apple
`
`Apple
`
`Apple
`
`
`
`"m
`va—NN
`
`N—N-pvlp
`
`va—NN
`
`N
`
`12
`
`
`
`US. Patent 8,199,747
`
`IPR2017-2085
`
`Petitioner
`
`IPR#
`
`Date
`
`Patent
`
`Facebook / WhatsApp
`
`IPR2017-1427
`
`11-May-17
`
`Facebook / WhatsApp
`
`IPR2017 1428
`
`11 --May 17
`
`Facebook / WhatsApp
`
`IPR2017 1523
`
`2Jun-17
`
`
`IPR2017 1524
`2Jun 17
`Facebook / WhatsApp
`
`Facebook / WhatsApp
`
`IPR2017 1667
`
`22-Jun-17
`
`’622
`
`Snap
`
`Snap
`
`IPR2017-1611
`IPR2017-1612
`
`15-Jun-17 —
`16-Jun-17
`
`Facebook / WhatsApp
`
`IPR2017-1634
`
`16-Jun-17
`
`
`Facebook / WhatsApp
`IPR2017-1635
`16-Jun-17
`’723
`
`Facebook / WhatsApp
`
`IPR2017-1636
`
`16-Jun-17
`
`’890
`
`Samsung Elec
`
`Samsung Elec
`
`Samsung Elec
`
`IPR2017-1797
`
`20-Jul-17
`
`IPR2017-1798
`
`20—Jul-17
`
`IPR2017-1799
`
`20-Jul-17
`
`
`IPR2017-1800
`20—Jul- l 7
`’723
`Samsung Elec
`
`Samsung Elec
`
`Samsung Elec
`
`Apple
`
`Apple
`
`LG Electronics
`
`IPR2017-2087
`
`11—Sep—17
`
`
`
`13
`
`
`
`IPR2017-2085
`U.S. Patent 8,199,747
`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 ’747 patents—using at least 18
`combinations of 13 references: Abburi, Dahod, Daniell, Deshpande, Hogan,
`Holtzberg, Lerner, Logan, Malik, SMSS, Stubbs, Väänänen, Vuori.
`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.9
`
`
`
` 9
`
` IPR2017-1667 and IPR2017-1668 argued that claims of the ’622 Patent are obvious
`over Zydney and Shinder.
`
`14
`
`
`
`IPR2017-2085
`U.S. Patent 8,199,747
`
`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, ’890, and ’747 patents—using at least 10 combinations of 9
`references: Aravamudan, Clark, Griffin, Lee, Low, Malik, Väänänen, Vuori, and
`Zydney.10
`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, ’890, and ’747 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
`’747 patent at issue here. See IPR2017-1257 and IPR2017-1799. 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
`
`
`10 IPR2017-1697 and IPR2017-1698 argued that claims of the ’622 Patent are
`obvious over Zydney and Griffin.
`
`
`15
`
`
`
`IPR2017-2085
`U.S. Patent 8,199,747
`
`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 ’747 patent,
`Petitioners will eventually overwhelm the Board and Patent Owner.11 “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 17.12
`For the foregoing reasons, the Board should reject the instant Petition outright
`as facially redundant with prior petitions.
`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
`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
`
`
`11 “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.
`12 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’”).
`
`16
`
`
`
`IPR2017-2085
`U.S. Patent 8,199,747
`
`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 in IPR2017-2081, filed by the present Petitioners, 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.13
`V. OVERVIEW OF THE ’747 patent
`A. Effective Filing Date of the ’747 patent
`The ʼ747 patent is titled “SYSTEM AND METHOD FOR INSTANT VOIP
`MESSAGING.” The ʼ747 patent issued June 12, 2012, from U.S. Patent Application
`
`
`
`13 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.
`
`17
`
`
`
`IPR2017-2085
`U.S. Patent 8,199,747
`
`No. 12/398,076, which is a Continuation of Application No. 10/740,030, filed on
`Dec. 18, 2003, now Pat. No. 7,535,890.
`
`B.
`
`The ’747 patent Describes and Claims Instant Voice Messaging
`over a Packet-Switched Network
`The ’747 Patent notes that conventional circuit-switched communications
`enabled traditional telephony yet had a variety of technical disadvantages that
`limited developing other forms of communication over such networks. According to
`the ’747 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.” Ex. 1001, 1:25–30.
`The ʼ747 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.” Id. at 1:31–33. 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. Id. at
`1:62–2:17. The conversion effected by media gateways highlights the fact that
`packetized data carried over packet-switched networks are different from and are
`incompatible with an audio signal carried over a dedicated packet-switched circuit.
`Id. at 1:25–30.
`
`18
`
`
`
`IPR2017-2085
`U.S. Patent 8,199,747
`
`The ʼ747 Patent further notes 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
`2:18–49. 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 2:22–
`29.
`
`In certain aspects, the ʼ747 Patent discloses that a user-accessible client is
`configured for instant voice message (“IVM”) and for direct communication over a
`packet-switched network (e.g., through an
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