Trials@uspto.gov
`571-272-7822
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` Paper 9
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`
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` Entered: March 6, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-02087
`Patent 8,995,433 B2
`____________
`
`
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108,
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 9
`
`
`
` Entered: March 6, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-02087
`Patent 8,995,433 B2
`____________
`
`
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108,
`37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`
`IPR2017-02087
`Patent 8,995,433 B2
`
`
`I.
`
`INTRODUCTION
`
`LG Electronics, Inc. (“Petitioner”) filed a Petition requesting inter
`
`partes review of claims 18 of U.S. Patent No. 8,995,433 B2 (“the ’433
`
`patent”). Paper 2 (“Pet.”). Petitioner also filed a Motion for Joinder seeking
`
`joinder as petitioner with Facebook, Inc. and WhatsApp Inc. (collectively,
`
`“Facebook 1427 Petitioner”) in Facebook, Inc., v. Uniloc Luxembourg S.A.,
`
`Case No. IPR2017-01427 (the “Facebook IPR”). Paper 3 (“Joinder
`
`Motion”). Uniloc Luxembourg S.A. (“Patent Owner”) filed a Preliminary
`
`Response. Paper 7 (“Prelim. Resp.”). Patent Owner did not file an
`
`opposition to the Motion for Joinder.
`
`We have authority under 35 U.S.C. § 314. Upon considering the
`
`information presented in the parties’ papers, for reasons discussed below, we
`
`institute inter partes review of claims 18 of the ’433 patent and grant
`
`Petitioner’s Motion for Joinder.
`
`A. Related Matters
`
`The parties indicate that the ’433 patent is involved in Uniloc USA,
`
`Inc. v. LG Electronics U.S.A., Inc., Case No. 2-16-cv-00991-JRG (E.D.
`
`Tex.). Pet. 13. The ’433 patent also is the subject of Case IPR2017-00225
`
`(filed by Apple Inc.), in which we instituted inter partes review on May 25,
`
`2017, and Cases IPR2017-01427 and IPR2017-01428 (filed by Facebook,
`
`Inc., and WhatsApp Inc.), in which we instituted inter partes review on
`
`December 4, 2017. See Paper 5. In addition, Petitioner has filed another
`
`petition and motion for joinder in IPR2017-02088 (together with Huawei
`
`2
`
`
`
`IPR2017-02087
`Patent 8,995,433 B2
`
`Device Co., Ltd.), where joinder is sought in connection with IPR2017-
`
`01428.
`
`B. The ’433 Patent
`
`The ’433 patent relates to Internet telephony, and more particularly, to
`
`instant voice over IP (“VoIP”) messaging over an IP network, such as the
`
`Internet. Ex. 1001, 1:1923. The ’433 patent acknowledges that “instant
`
`text messaging is . . . known” in the VoIP and public switched telephone
`
`network (“PSTN”) environments, with a server presenting the user a “list of
`
`persons who are currently ‘online’ and ready to receive text messages on
`
`their own client terminals.” Id. at 2:3542. In one embodiment, such as
`
`depicted in Figure 2 (reproduced below), the system of the ’433 patent
`
`involves an instant voice message (“IVM”) server and IVM clients. Id. at
`
`7:2122.
`
`3
`
`
`
`IPR2017-02087
`Patent 8,995,433 B2
`
`
`
`
`Figure 2 illustrates IVM client 206 interconnected via network 204 to
`
`local IVM server 202, where IVM client 206 is a VoIP telephone, and where
`
`legacy telephone 110 is connected to legacy switch 112 and further to media
`
`gateway 114. Id. at 7:2749. The media gateway converts the PSTN audio
`
`signal to packets for transmission over a packet-switched IP network, such
`
`as local network 204. Id. at 7:4953. In one embodiment, when in “record
`
`mode,” the user of an IVM client selects one or more IVM recipients from a
`
`list. Id. at 8:25. The IVM client listens to the input audio device and
`
`records the user’s speech into a digitized audio file at the IVM client. Id. at
`
`8:1215. “Once the recording of the user’s speech is finalized, IVM
`
`client 208 generates a send signal indicating that the digitized audio file 210
`
`4
`
`
`
`IPR2017-02087
`Patent 8,995,433 B2
`
`(instant voice message) is ready to be sent to the selected recipients.” Id. at
`
`8:1922. The IVM client transmits the digitized audio file to the local IVM
`
`server, which, thereafter, delivers that transmitted instant voice message to
`
`the selected recipients via the local IP network. Id. at 8:2526. Only the
`
`available IVM recipients, i.e., those recipients who are currently connected
`
`to the IVM server, will receive the instant voice message. Id. at 8:3638. If
`
`a recipient “is not currently connected to the local IVM server 202,” the
`
`IVM server temporarily saves the instant voice message and delivers it to the
`
`IVM client when the IVM client connects to the local IVM server (i.e., is
`
`available). Id. at 8:3843.
`
`The ’433 patent also describes an “intercom mode” of voice
`
`messaging. Id. at 11:3437. The specification states that the “intercom
`
`mode” represents real-time instant voice messaging. Id. at 11:3738. In this
`
`mode, instead of creating an audio file, one or more buffers of a
`
`predetermined size are generated in the IVM clients or local IVM servers.
`
`Id. at 11:3841. Successive portions of the instant voice message are
`
`written to the one or more buffers, which, as they fill, automatically transmit
`
`their content to the IVM server for transmission to the one or more IVM
`
`recipients. Id. at 11:4146. Buffering is repeated until the entire instant
`
`voice message has been transmitted to the IVM server. Id. at 11:4659.
`
`5
`
`
`
`IPR2017-02087
`Patent 8,995,433 B2
`
`
`C. Independent Claims
`
`Of the challenged claims, claim 1 and 6 are independent and are
`
`reproduced below. Each of claims 25, 7, and 8 depends directly or
`
`indirectly from claim 1.
`
`1. A system comprising:
`
`an instant voice messaging application including a client
`platform system for generating an instant voice message and a
`messaging system for transmitting the instant voice message
`over a packet-switched network via a network interface;
`
`wherein the instant voice messaging application displays
`a list of one or more potential recipients for the instant voice
`message;
`
`wherein the instant voice messaging application includes
`a message database storing the instant voice message, wherein
`the instant voice message is represented by a database record
`including a unique identifier; and
`
`wherein the instant voice messaging application includes
`a file manager system performing at least one of storing, deleting
`and retrieving the instant voice messages from the message
`database in response to a user request.
`
`6. A system comprising:
`
`an instant voice messaging application including a client
`platform system for generating an instant voice message and a
`messaging system for transmitting the instant voice message
`over a packet-switched network via a network interface;
`
`wherein the instant voice messaging application displays
`a list of one or more potential recipients for the instant voice
`message;
`
`wherein the instant voice messaging application includes
`a file manager system performing at least one of storing, deleting
`
`6
`
`
`
`IPR2017-02087
`Patent 8,995,433 B2
`
`
`and retrieving the instant voice messages from a message
`database in response to a user request; and
`
`wherein the instant voice messaging application includes
`a compression/decompression system for compressing the
`instant voice messages
`to be
`transmitted over
`the
`packet-switched network and decompressing the instant voice
`messages received over the packet-switched network.
`
`Ex. 1001, 23:65−24:15, 24:33−51.
`
`II.
`
`INSTITUTION OF INTER PARTES REVIEW
`
`On December 4, 2017, we instituted inter partes review in
`
`IPR2017-01427 based on the following prior art and grounds of
`
`unpatentability (Facebook IPR, slip op. at 29 (PTAB Dec. 4, 2017) (Paper
`
`8)):
`
`a) Zydney: PCT App. Pub. No. WO 01/11824 A2, published Feb. 15,
`
`2001, filed in this record as Exhibit 1003 (with line numbers added
`
`by Petitioner);
`
`b) Appelman: U.S. Patent No. 6,750,881 B1, issued June 15, 2004,
`
`filed in this record as Exhibit 1004; and
`
`c) Clark: U.S. Patent No. 6,725,228 B1, issued Apr. 20, 2004, filed in
`
`this record as Exhibit 1008.
`
`Challenged Claim(s)
`
`Basis
`
`References
`
`16, 8
`
`7
`
`§ 103(a)
`
`Zydney and Clark
`
`§ 103(a)
`
`Zydney, Clark, and
`Appelman
`
`7
`
`
`
`IPR2017-02087
`Patent 8,995,433 B2
`
`
`The Petition in this proceeding asserts the same grounds as those we
`
`instituted in the Facebook IPR. Pet. 1; see also Joinder Motion 1. Petitioner
`
`relies also on a Declaration of Tal Lavian, Ph.D., filed as Exhibit 1002
`
`(“Lavian Declaration”). Petitioner asserts that the Lavian Declaration is
`
`identical to the Lavian Declaration filed in the Facebook IPR. Joinder
`
`Motion 1.
`
`Patent Owner’s Preliminary Response presents two arguments not
`
`presented in the Facebook IPR. We address those arguments here. First,
`
`Patent Owner argues that we should deny the instant Petition because
`
`Petitioner’s Mandatory Notices (Pet. 1–3) omits some related administrative
`
`matters. Prelim. Resp. 25. Specifically, Patent Owner points out that the
`
`Petition does not give the Board notice of 22 inter partes review proceedings
`
`concerning the patent-at-issue and other interrelated patents. Id. The
`
`omission, according to Patent Owner, violates the Board’s rule regarding
`
`mandatory notices (37 C.F.R. § 42.8(b)(2)) and the relevant statutory
`
`requirement in 35 U.S.C. § 312(a)(4). Prelim. Resp. 67.
`
`Regarding the second argument, Patent Owner alleges that Petitioner
`
`failed to name all real parties-in-interest under 37 C.F.R. § 42.8(b)(1).
`
`Prelim. Resp. 79. In particular, Patent Owner alleges that the unnamed real
`
`parties-in-interest pertain to the collection of co-defendants that, together
`
`with Petitioner, filed joint invalidity contentions in the district court
`
`litigation. Id. (referring to Exhibits 2002 and 2003).
`
`We do not agree with any of Patent Owner’s arguments. Under the
`
`circumstances of this case, the alleged failure to identify either related
`
`8
`
`
`
`IPR2017-02087
`Patent 8,995,433 B2
`
`matters or real parties-in-interest, alone,1 does not compel denial of the
`
`Petition. First, mandatory notices are updateable on an ongoing basis.
`
`37 C.F.R. § 42.8(a)(3). Second, identification of real parties-in-interest is
`
`not a jurisdictional issue and may be corrected. See Lumentum Holdings,
`
`Inc., v. Capella Photonics, Inc., Case IPR2015-00739, slip op. at 5 (PTAB
`
`Mar. 4, 2016) (Paper 38) (precedential). Finally, an allegation that
`
`defendants in district court filed joint invalidity contentions is not sufficient
`
`to show that all co-defendants are real parties-in-interest. See, e.g., Azure
`
`Gaming Mac., Ltd., v. MGT Gaming, Inc., Case IPR2014-01288, slip op. at
`
`1112 (PTAB Feb. 20, 2015) (Paper 13) (describing that the real party-in-
`
`interest is the relationship between a party and a proceeding, not the
`
`relationship between parties). Accordingly, we decline Patent Owner’s
`
`request to deny the Petition based on the alleged deficiencies.
`
`We have reviewed the Preliminary Response and find that the
`
`remaining arguments were presented and that we considered them in
`
`connection with the Facebook IPR. In view of the identicalness of the issues
`
`in the instant Petition and the Facebook IPR and the already-considered
`
`arguments from Patent Owner proffered in the Facebook IPR, we institute
`
`inter partes review in this proceeding on the grounds presented in the
`
`Petition for the same reasons stated in our Decision on Institution in the
`
`Facebook IPR.
`
`
`
`1 For example, Patent Owner does not allege any prejudice sufficient to
`consider the alleged deficiencies worthy of redress via denial of the Petition.
`9
`
`
`
`IPR2017-02087
`Patent 8,995,433 B2
`
`
`III. GRANT OF MOTION FOR JOINDER
`
`
`
`Joinder in inter partes review is subject to the provisions of 35 U.S.C.
`
`§ 315(c):
`
`(c) JOINDER.—If the Director institutes an inter partes review,
`the Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition under
`section 311 that the Director, after receiving a preliminary
`response under section 313 or the expiration of the time for filing
`such a response, determines warrants the institution of an inter
`parties review under section 314.
`
`
`
`As the moving party, Petitioner bears the burden of proving that it is
`
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
`
`should: (1) set forth the reasons joinder is appropriate; (2) identify any new
`
`grounds of unpatentability asserted in the petition; and (3) explain what
`
`impact (if any) joinder would have on the trial schedule for the existing
`
`review. See Frequently Asked Question H5, https://www.uspto.gov/patents-
`
`application-process/appealing-patent-decisions/trials/patent-review-
`
`processing-system-prps-0.
`
`
`
`Petitioner asserts it has grounds for standing because, in accordance
`
`with 35 U.S.C. § 315(c), Petitioner filed a motion for joinder concurrently
`
`with the Petition and not later than one month after institution of the
`
`Facebook IPR. Joinder Motion 1. Patent Owner did not file an opposition
`
`to the Motion. We find that the Motion is timely. We also find that
`
`Petitioner has met its burden of showing that joinder is appropriate. For the
`
`challenged claims, the Petition here is substantively identical to the petition
`
`in the Facebook IPR. Id. at 57. The evidence also is identical, including
`
`reliance on the same Lavian Declaration. Id.
`
`10
`
`
`
`IPR2017-02087
`Patent 8,995,433 B2
`
`
`Petitioner further has shown that the trial schedule will not be affected
`
`by joinder. Id. at 78. No changes in the schedule are anticipated or
`
`necessary, and the limited participation, if at all, of Petitioner will not impact
`
`the timeline of the ongoing trial.
`
`Petitioner shall adhere to the existing schedule of IPR2017-01427 and
`
`the “second-chair” role it has agreed to assume. Joint Motion 6. More
`
`specifically, so long as any Facebook 1427 Petitioner entity is a party to
`
`IPR2017-01427, all filings of Petitioner in IPR2017-01427 shall be
`
`consolidated with the filings of the Facebook 1427 Petitioner. The page
`
`limits set forth in 37 C.F.R. § 42.24 will apply to all consolidated filings.
`
`Petitioner is bound by any discovery agreements between Patent
`
`Owner and the Facebook 1427 Petitioner in IPR2017-01427, and shall not
`
`seek any additional discovery. Patent Owner shall not be required to provide
`
`any additional discovery or deposition time as a result of joinder. In
`
`addition, if an oral hearing is requested and scheduled, Petitioners in
`
`IPR2017-01427 shall collectively designate attorneys to present at the oral
`
`hearing in a consolidated argument.
`
`The Board expects Petitioner to attempt to resolve any disputes among
`
`the entities involved and to contact the Board only if such matters cannot be
`
`resolved. This arrangement promotes the just and efficient administration of
`
`the ongoing trial and the interests of Petitioner and Patent Owner.
`
`11
`
`
`
`IPR2017-02087
`Patent 8,995,433 B2
`
`
`
`
`In view of the foregoing, it is
`
`IV. ORDER
`
`
`
`ORDERED that IPR2017-02087 is hereby instituted on the
`
`following grounds:
`
`Challenged Claim(s)
`
`Basis
`
`References
`
`16, 8
`
`7
`
`§ 103(a)
`
`Zydney and Clark
`
`§ 103(a)
`
`Zydney, Clark, and
`Appelman
`
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`
`IPR2017-01427 is granted, and LG Electronics, Inc. is hereby joined as a
`
`petitioner in IPR2017-01427;
`
`
`
`FURTHER ORDERED that the Scheduling Order entered in
`
`IPR2017-01427 and schedule changes agreed to by the parties in
`
`IPR2017-01427 (pursuant to the Scheduling Order) shall govern the
`
`schedule ofIPR2017-01427;
`
`
`
`FURTHER ORDERED that all filings by the Petitioner entities in
`
`IPR2017-01427 will be consolidated and no filing by Petitioner alone will be
`
`allowed without prior authorization by the Board;
`
`FURTHER ORDERED that Petitioner is bound by any discovery
`
`agreements between Patent Owner and the Petitioner in IPR2017-01427, and
`
`that Petitioner shall not seek any additional discovery;
`
`FURTHER ORDERED that the Petitioner entities in IPR2017-01427
`
`shall collectively designate attorneys to present at the oral hearing in a
`
`consolidated argument;
`
`12
`
`
`
`IPR2017-02087
`Patent 8,995,433 B2
`
`
`FURTHER ORDERED that a copy of this Decision be entered into
`
`the record of IPR2017-01427;
`
`
`
`FURTHER ORDERED that IPR2017-02087 is terminated under
`
`37 C.F.R. § 42.72 and all further filings are to be made in IPR2017-01427;
`
`and
`
`FURTHER ORDERED that the case caption in IPR2017-01427, from
`
`now on, shall reflect joinder with this proceeding in accordance with the
`
`attached example.
`
`
`
`
`
`13
`
`
`
`IPR2017-02087
`Patent 8,995,433 B2
`
`For PETITIONER:
`
`Anand Sharma
`Minjae Kang
`Joshua Goldberg
`Bradford Shulz
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P
`Anand.sharma@finnegan.com
`Minjae.kang@finnegan.com
`Joshua.goldbert@finnegan.com
`Bradford.shulz@finnegan.com
`
`
`
`For PATENT OWNER:
`
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`Ryan Loveless
`ETHERIDGE LAW GROUP
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`ryan@etheridgelaw.com
`
`
`
`Sean D. Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`
`
`14
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC., WHATSAPP INC., and LG ELECTRONICS, INC.,2
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01427
`Patent 8,995,433 B2
`____________
`
`
`
`
`
`
`
`
`2 LG Electronics filed a motion for joinder and a petition in IPR2017-02087,
`which were granted, and, therefore, has been joined to this proceeding.
`
`
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