UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LG ELECTRONICS, INC., and HUAWEI DEVICE CO., LTD.,
`Petitioners
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`v.
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`UNILOC LUXEMBOURG S.A.,
`Patent Owner
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`Case IPR2017-02088
`PATENT 8,995,433
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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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`LG ELECTRONICS, INC., and HUAWEI DEVICE CO., LTD.,
`Petitioners
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`v.
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`UNILOC LUXEMBOURG S.A.,
`Patent Owner
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`
`
`
`Case IPR2017-02088
`PATENT 8,995,433
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`IPR2017-2088
`U.S. Patent 8,995,433
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`Table of Contents
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`1
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`8
`10
`10
`10
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`12
`12
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`14
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`16
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`18
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`22
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`22
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`25
`27
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`2.
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`2.
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`INTRODUCTION
`I.
`II. HUAWEI IMPERMISSIBLY ATTEMPTS MULTIPLE BITES
`AT THE APPLE
`III. THE ’433 PATENT
`
`Effective Filing Date of the ’433 Patent
` Overview of the ’433 Patent
`IV. THERE IS NO REASONABLE LIKELIHOOD THAT EVEN
`ONE OF THE CHALLENGED CLAIMS IS UNPATENTABLE
`
`Claim Construction Issues Injected by the Petition
`1.
`Petitioners rely on an erroneous construction for
`“instant voice messaging application”
`Petitioners rely on an erroneous construction for
`“client platform system”
` No prima facie obviousness for “wherein the instant voice
`message application attaches one or more files to the instant
`voice message” (all challenged claims)
`The patentability of independent claim 1 extends to all the
`challenged dependent claims, which
`further
`recite
`patentable limitations
`1.
`No prima facie obviousness for “wherein the instant
`voice messaging application displays one or more
`controls for audibly playing the instant voice
`message” (dependent claim 11)
`No prima facie obviousness for “wherein the instant
`voice messaging application displays one or more
`controls for performing at least one of reviewing, re-
`recording or deleting the instant voice message”
`(dependent claim 16)
`CONCLUSION
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`
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`V.
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`IPR2017-2088
`U.S. Patent 8,995,433
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`Exhibit No.
`2001
`2002
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`2003
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`2004
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`List of Exhibits
`
`Description
`Declaration of Dr. Val DiEuliis
`Invalidity Contentions Submitted on March 28, 2017 in the
`underlying consolidated case of Uniloc USA, Inc. v. Samsung
`Electronic America’s, Inc., Case No. 2:16-cv-642
`Invalidity Contentions Submitted on December 16, 2016 in the
`underlying consolidated case of Uniloc USA, Inc. v. Samsung
`Electronic America’s, Inc., Case No. 2:16-cv-642
`“‘App’ voted 2010 word of the year by the American Dialect
`Society (UPDATED)", American Dialect Society (Jan. 8,
`2011), available at http ://www.americandialect.org/app-voted-
`2010-word-of-the-year-by-the-american-dialect-society-
`updated (printed Aug. 23, 20 17).
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`IPR2017-2088
`U.S. Patent 8,995,433
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`I.
`
`INTRODUCTION
`Pursuant to 35 U.S.C. §313 and 37 C.F.R. §42.107(a), Uniloc Luxembourg
`S.A. (the “Patent Owner”) submits this Preliminary Response to the Petition for Inter
`Partes Review (“Pet.” or “Petition”) of United States Patent No. 8,995,433 (“the
`’433 Patent” or “EX1101”) filed by LG Electronics, Inc. and Huawei Device Co.,
`LTD. (“Petitioner”). Petitioner moves to join the proceeding in IPR2017-1428.
`Joinder is not warranted, however, because the instant Petition is procedurally and
`substantive defective for at least the reasons set forth herein.
`The Petition should be denied as failing to provide the mandatory notices set
`forth in Rule 42.8. 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.” This of course includes the mandatory notice
`provisions of Rule 42.8. As yet another procedural defect, Petitioners not only fail
`to provide the required notice of redundant petitions, they also make no attempt to
`justify such overt redundancy. There is also sufficient evidence to conclude, even at
`this preliminary stage, that Petitioners failed to identify all real parties-in-interest.
`Even if the Board were to overlook the numerous procedural defects of the
`Petition and reach its substantive merits, the Petition should be denied in its entirety
`because it fails to meet the threshold burden of proving that there is a reasonable
`likelihood that even one challenged claim is unpatentable. Patent Owner has seized
`the opportunity, as is its right under these circumstances introduced by Petitioners,
`to expand and further explain its positions originally set forth in its preliminary
`Response in related matter IPR2017-1428. Denial is warranted here.
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`1
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`[PR2017-2088
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`US. Patent 8,995,433
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`II.
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`PETITIONERS DO NOT SATISFY TI-IE MANDATORY NOTICE
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`REQUIREMENTS
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`The ’433 patent is in a family of patents including United States Patent Nos.
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`7,535,890 (“the ’890 patent”); 8,243,723 (“the ’723 patent”); 8,199,747 (“the ’747
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`patent”); and 8,724,723 (“the ’622 patent”), as shown in the diagram below.
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`App. No.: 10:”740030
`Filed: 12-18-2003
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`Pat. No: 7.535.890
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`
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`App. No.: 125398063
`Filed: 03-04-2009
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`App. No.: 113398.076
`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.: 135546673
`Filed: 07-11-2012
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`Pat. No: 8.724.622
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`App. No.: l4.=‘224.125
`Filed: 03-25-2014
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`Pat. No: 8.995.433
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`Petitioner has filed three of the thirty-six IPRs filed against this related family
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`of patents, as highlighted below. As shown in the table below, most of the IPR
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`petitions filed against these related patents predate the present Petition-
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`Petitioner
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`IPR#
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`14-Nov-16
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`Apple
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`Apple
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`Apple
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`IPR2017-0220
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`14-Nov-16
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`IPR2017-0221
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`14—Nov—16
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`IPR2017-0222
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`US. Patent 8,995,433
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`IPR20 1 7-2088
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`Petitioner
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`IPR#
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`Date
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`Patent
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`Apple
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`Apple
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`Apple
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`4-pv-Np
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`pp—pv-ppN
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`Facebook / WhatsApp
`IPR2017-1257
`7-Apr—17
`’747
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`Facebook / WhatsApp
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`Facebook / WhatsApp
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`Facebook / WhatsApp
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`3-May-17
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`l l -May-1 7
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`11-May-17
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`’433
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`Facebook / WhatsApp
`IPR2017-1524
`2-Jun—17
`’890
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`Facebook / WhatsApp
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`22-Jun-17
`
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`Facebook / WhatsApp
`IPR2017-1635
`16-Jun-17
`’723
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`Facebook / WhatsApp
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`16-]un_17
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`Samsung Elec
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`Samsung Elec
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`Samsung Elec
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`IPR2017-1797
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`20-Jul-17
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`IPR2017—1798
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`20—Jul—17
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`IPR2017-1799
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`20-Jul-17
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`20-Jul— l 7
`IPR2017—1800
`’723
`Samsung Elec
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`Samsung Elec
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`Samsung Elec
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`Apple
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`Apple
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`IPR2017-1801
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`20-Jul-17
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`’433
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`IPR2017-1802
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`20-Jul-17
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`IPR2017—1804
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`20—Jul—17
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`IPR2017-1805
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`20-Jul-17
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`Huawei / LG Electronics
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`IPR2017-2090
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`LG Electronics
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`IPR2017-2087
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`LG Electronics / Huawei
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`IPR2017-2088
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`Google/Huawei/Motorola
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`IPR2017-2080
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`Google/Huawei/Motorola
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`IPR2017-2081
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`11-Sep-17
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`11-Sep-17
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`11-Sep-17
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`12-Sep-17
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`12-Sep-17
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`’622
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`’433
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`’433
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`’622
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`’622
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`US. Patent 8,995,433
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`IPR2017-2088
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`Petitioner
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`IPR#
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`Date
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`Patent
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`Google/Huawei/Motorola
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`IPR2017—2082
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`11-Sep-17
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`Google/Huawei/Motorola
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`IPR2017-2083
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`11-Sep-17
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`11-Sep-17
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`Google/Huawei/Motorola
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`IPR2017-2084
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`11-Sep-17
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`Google/I-Iuawei/Motorola
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`IPR2017-2067
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`12-Sep-17
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`Google/Huawei/Motorola
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`IPR2017-2085
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`A.
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`Petitioners Fail to Identify All Related Matters
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`Under 35 U-S.C. § 312(a)(4), “[a] petition filed under section 311 may be
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`considered 0_nlLi[ . .. the petition provides such other information as the Director
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`may require by regulation.” Under this statutory authority, the Director issued 37
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`C-F.R. § 42.8(b)(2), which mandates that a petition for inter partes review must
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`identify all other judicial and administrative matters that would affect, or be affected
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`by, a decision in an IPR proceeding. “Administrative matters include every
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`application and patent claiming, or which may claim, the benefit of the priority of
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`the filing date of the party’s involved patent or application as well as any ex parte
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`and inter partes reexaminations for an involved patent.” Trial Practice Guide, 77
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`Fed. Reg. 157, at 48760 (Aug. 14, 2012). This instruction is a more specific way of
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`saying a petition must identify all administrative matters concerning all patents
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`within a patent family which claim the benefit of the same effective filing date.
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`Notably, 35 U.S.C. § 312(a)(4) does not have the discretionary language of
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`§ 325(d). The Board need not and should not consider the substantive merits of a
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`petition that incurably fails to satisfy the mandatory notice provisions (Rule 42.8)
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`promulgated under the authority of § 312(a)(4). This is true regardless whether a
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`Patent Owner brings such a procedural defect to the Board’s attention in a response.
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`4
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`IPR2017-2088
`U.S. Patent 8,995,433
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`Nevertheless, Patent Owner identifies herein gross omissions in the instant Petition
`with respect to the mandatory notice provisions.
`The Petition should be denied as failing to identify all related administrative
`matters pursuant to 37 C.F.R. § 42.8(b)(2). See Pet. 1-2. On its face, the ’433 patent
`claims the benefit of the priority of the filing dates of the ’622, ’723, and ’890
`patents. Each of those interrelated patents ultimately claim the same effective filing
`date as that of the parent ’890 patent (Dec. 18, 2003). The interrelated nature of this
`patent family is further evident by the fact that the thirty-six IPR petitions filed
`against this patent family often attempt to map the same art using the same
`arguments to the same (or similar) claim language recited across multiple patents.
`Accordingly, Rule 42.8(b)(2) requires that the Petition itself expressly provide
`notice of all related administrative matters involving at least those interrelated
`patents. The Petition is deficient, therefore, for failing to provide the requisite notice
`regarding at least the following twenty-two related administrative matters: IPR2017-
`0220; IPR2017-0221; IPR2017-0222; IPR2017-0223; IPR2017-0224; IPR2017-
`1257; IPR2017-1365; IPR2017-1523; IPR2017-1524; IPR2017-1667; IPR2017-
`1612; IPR2017-1635; IPR2017-1636; IPR2017-1797; IPR2017-1798; IPR2017-
`1799; IPR2017-1800; IPR2017-1802; IPR2017-1804; IPR2017-1805; IPR2017-
`2067; and IPR2017-2090.
`The failure to provide notice regarding the petition concurrently filed in
`IPR2017-2067 by Huawei (among other named petitioners) is especially glaring.
`That related administrative matter challenges the same ’433 patent at issue in the
`instant Petition and applies substantially similar arguments based primarily on the
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`IPR2017-2088
`U.S. Patent 8,995,433
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`same Zydney reference. In addition, there is no plausible excuse for failing to provide
`notice regarding the petition filed in IPR2017-2090 on the same day as the instant
`Petition.
`Each instance of this procedural defect (multiplied twenty-two times here) is
`ground for denial of the instant Petition. 35 U.S.C. § 312(a)(4); 37 C.F.R. §
`42.8(b)(2); Apple, Inc. v. ContentGuard Holdings, Inc., IPR2015-00355, Paper 9 at
`8 (June 26, 2015) (denying petition on other grounds, but noting that “[t]he Petition’s
`failure to comply with 37 C.F.R. § 42.8(b)(2), and thus also 35 U.S.C. § 312(a)(4),
`could be ground for denial of the Petition.”) (citing Reflectix, Inc. v. Promethian
`Insulation Tech. LLC, IPR2015-00039, Paper 18 at 9 (PTAB Apr. 24, 2015)
`(denying institution because petition did not comply with parallel requirement, under
`35 U.S.C. § 312(a)(2), to identify all real parties-in-interest).).
`Any attempt by Petitioners to cure these multiple deficiencies would be futile
`at least because the Original Petition suffers from the same defects (and therefore
`cannot properly be considered for analogous reasons). At a minimum, the Original
`Petitioners (Facebook and WhatsApp) in IPR2017-1428 failed to provide the
`mandatory notice of at least the following earlier-filed and related administrative
`matters: IPR2017-0220, IPR2017-0221, IPR2017-0222, IPR2017-0223, IPR2017-
`0224, IPR2017-1257, and IPR2017-1365. These multiple omissions are especially
`glaring given that the Original Petitioners themselves previously filed the petitions
`in IPR2017-1257 and IPR2017-1365.1 Thus, both the Original Petition (IPR2017-
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`1 The Original Petitioners Facebook and Whatsapp were both served with Patent
`Owner’s complaints in the underlying litigation in July, 2016, well over one year
`6
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`IPR2017-2088
`U.S. Patent 8,995,433
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`1428) and the instant Joinder Petition (IPR2017-2088) should be dismissed for
`indisputably failing, on their faces, to satisfy the mandatory notice requirements.
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`Petitioners Fail to Identify Each Real Party-In-Interest
`Parties filing a petition for inter partes review must identify all the real
`parties-in-interest. 37 C.F.R. § 42.8(b)(1). Among other purposes, this requirement
`assists “members of the Board in identifying potential conflicts” and assures “proper
`application of the statutory estoppel provisions.” Trial Practice Guide, 77 F.R.
`48759 (Aug. 14, 2012). The latter reason “seeks to protect patent owners from
`harassment via successive petitions by the same or related parties, to prevent parties
`from having a ‘second bite at the apple,’ and to protect the integrity of both the
`USPTO and Federal Courts by assuring that all issues are promptly raised and
`vetted.” Id.
`Even at this preliminary stage, there is sufficient evidence to conclude
`Petitioners failed to name each “real parties-in-interest” or “privy.” Petitioners
`joined with their co-defendants in the submission of invalidity contentions filed on
`March 28, 2017. Those contentions 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 the coordination evident on the face
`of those joint invalidity contentions, members of this same joint defense group
`admittedly coordinated in various IPR filings. See table, supra. These filings have
`been based on references and arguments set forth in the joint invalidity contentions
`
`
`ago. The Original Petitioners are therefore both outside the statutory time window
`to refile with the appropriate notices.
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`7
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`IPR2017-2088
`U.S. Patent 8,995,433
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`and known before the original IPR was filed.
`Using the joint invalidity contentions as a playbook, the instant Petitioners
`admittedly coordinated in filing IPR petitions challenging the ’433 and ’622 patents.
`See IPR2017-2088 and IPR2017-2090. Huawei, in turn, admittedly coordinated with
`at least Google and Motorola in challenging the same ’433 and ’622 patents based
`on the same or substantially similar application of overlapping art (also applied in a
`similar manner in the joint invalidity contentions). See IPR2017-2067, IPR2017-
`2080, and IPR2017-2081. The significant, substantive overlap in those petitions, and
`the parallel arguments in the jointly-filed invalidity contentions, confirm that each
`petition should have named the same group of colluding co-defendants. The failure
`to name all real parties-in-interest provides independent ground for denial. 37 C.F.R.
`§ 42.8(b)(1) (requiring petitioners to identify each real party-in interest); Reflectix,
`Inc. v. Promethian Insulation Tech. LLC, IPR2015-00039, Paper 18 at 9 (PTAB Apr.
`24, 2015) (denying institution because petition did not identify all real parties-in-
`interest).
`
`II. HUAWEI IMPERMISSIBLY ATTEMPTS MULTIPLE BITES AT
`THE APPLE
`Petitioner Huawei has now filed multiple and distinct petitions challenging
`the same claims of the same ’433 patent based on the same or substantially similar
`arguments primarily asserting the same Zydney reference. Compare IPR2017-2088
`with IPR2017-2067; also compare IPR2017-2090 with IPR2017-2080 and
`IPR2017-2081 (asserting similarly-redundant challenges against the ’622 patent,
`also based primarily on Zydney). Compounding this error, and as explained further
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`8
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`IPR2017-2088
`U.S. Patent 8,995,433
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`above, Petitioners fail to notify the Board regarding the highly-related petition filed
`in IPR2017-2090, as required by Rule 42.8.
`Petitioners have the burden of proof, yet they do not even acknowledge the
`redundancy, let alone provide any reasoned justification. 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, e.g., Liberty Mut. Ins. Co. v. Progressive Cas. Ins. Co., No.
`CBM2012-00003, Paper 7 (P.T.A.B. Oct. 25, 2012); 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”);
`37 C.F.R. §42.1(b) (mandating a “just, speedy, and inexpensive resolution of every
`proceeding”).
`The redundancy apparent on the face of the Petition is independent ground for
`denial. Oracle Corp. v. Clouding IP, LLC, No. IPR2013-00075, Paper No. 8,
`Decision Institution of Inter Partes Review at 13-14 (PTAB May 3, 2013) (denying
`various grounds of unpatentability because they were redundant); AmkorTech., Inc.
`v. Tessera, Inc., No. IPR2013-00242, Paper No. 37, Decision Institution of Inter
`Partes Review at 32-33 (PTAB Oct. 11, 2013) (ditto).
`
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`9
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`IPR2017-2088
`U.S. Patent 8,995,433
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`III. THE ’433 PATENT
` Effective Filing Date of the ’433 Patent
`The ’433 Patent is titled “System and Method for Instant VoIP Messaging.”
`The ’433 Patent issued March 31, 2015 from United States Patent Application
`No. 14/224,125, which is a Continuation of Application No. 13/546,673, filed on
`Jul. 11, 2012, now Pat. No. 8,724,622, which is a Continuation of Application No.
`12/398,063, filed on Mar. 4, 2009, now Pat. No. 8,243,723, which is a Continuation
`of Application No. 10/740,030, filed on Dec. 18, 2003, now Pat. No. 7,535,890.
` Overview of the ’433 Patent
`The ʼ433 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 ʼ433 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, 1:30-35.
`The ʼ433 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 1:36-38. Because legacy
`circuit-switched devices were unable to communicate directly over packet-switched
`networks, media gateways were designed to receive circuit-switched signals and
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`
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`10
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`IPR2017-2088
`U.S. Patent 8,995,433
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`packetize them for transmittal over packet-switched networks, and vice versa. Id. at
`2:9-22. 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 30-35.
`The ʼ433 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
`2:35-48. Rather, “[c]onventionally, 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 2:27-
`34.
`
`In certain disclosed aspects, the ʼ433 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 Ethernet card). Id. at 12:13-16.
`Certain clients 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., using TCP/IP) over a packet-switched network (e.g., network
`204) “to the local IVM server 202.” Id. at 8:12-26, FIG. 2.
`
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`11
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`IPR2017-2088
`U.S. Patent 8,995,433
`IV. THERE IS NO REASONABLE LIKELIHOOD THAT EVEN ONE OF
`THE CHALLENGED CLAIMS IS UNPATENTABLE
`Petitioner has the burden of proof to establish it is entitled to their requested
`relief. 37 C.F.R. § 42.108(c). Because the Petition only presents theories of
`obviousness, Petitioner must demonstrate a reasonable likelihood that at least one of
`the challenged patent claims would have been obvious in view of the art cited in the
`Petition. Petitioner fails to meet this burden and the Petition should, therefore, be
`denied.2
`The Petition alleges that claims 9-12, 14-17, 25, and 26 of the ’433 Patent
`would have been obvious.3 Claim 9 is the sole claim in independent format; all other
`claims challenged in the Petition depend from claim 9 directly or indirectly. As
`Ground 1, Petitioners argue that claims 9, 12, 14, 17, 25, and 26 would have been
`obvious over Zydney alone. As Ground 2, Petitioners argue that claims 11, 15, and
`16 would have been obvious over Zydney in view of a passage from the Greenlaw
`textbook (EX1110). As Ground 3, Petitioners argue that Claim 10 would have been
`obvious over Zydney in view of a definition from the Newton dictionary (EX1106).
` Claim Construction Issues Injected by the Petition
`Petitioners rely on incorrect claim construction proposals to argue that the
`challenged claims would have been obvious. Petitioner’s proposed claim
`
`2 While certain deficiencies in the Petition are addressed here, Patent Owner reserves
`the right to address other deficiencies of the Petition in a full Response if an inter
`partes review is instituted
`3 Petitioner LGE concurrently filed a Joinder Petition in IPR2017-2087, challenging
`claims 1-8 of the ’433 Patent. Except for two and a half pages that describe the
`Greenlaw and Newton secondary references, the first approximately 31 pages of
`those two related petitions are substantially the same.
`12
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`IPR2017-2088
`U.S. Patent 8,995,433
`
`constructions for “instant voice messaging application” and “client platform system”
`(as recited in independent claim 9) are incorrect at least because Petitioner proposes
`both may exclusively cover hardware. Pet., 23, 25. Neither term requires hardware
`and neither term requires any contrived construction because a person having
`ordinary skill in the art would understand both terms and would agree that both terms
`should carry their customary and ordinary meaning.4 Declaration of Dr. DiEuliis
`(“EX2001”), ¶¶ 44-57. Under the proper construction, Zydney does not teach or
`suggest either an “instant voice messaging application” or a “client platform
`system.”
`In the absence of “persuasive evidence” that a term or word has “a specially
`defined meaning in the field of art” encompassed by the patent, “the ordinary and
`customary meaning attributed to this term by those of ordinary skill in this art at the
`time of invention ‘involves little more than the application of the widely accepted
`meaning of commonly understood words.’” Cat Tech LLC v. TubeMaster, Inc., 528
`F.3d 871, 884 (Fed. Cir. 2008) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1314
`(Fed. Cir. 2005)).5
`
`
`4 The concern that “plain and ordinary meaning” can be at times unhelpful to juries
`has no applicability to this forum. Uniloc expressly reserves its right to dispute
`Petitioner’s proposed constructions if the Board institutes trial. Patent Owner does
`not concede that Petitioner’s offered construction is correct.
`5 Under the broadest reasonable interpretation standard used by the Board, claim
`terms carry their ordinary and customary meaning, as would be understood by one
`of ordinary skill in the art in the context of the entire disclosure. See In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007); see also Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2144-46 (2016) (upholding the use in IPRs of the
`broadest reasonable interpretation).
`
`
`
`13
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`IPR2017-2088
`U.S. Patent 8,995,433
`1. Petitioners rely on an erroneous construction for “instant voice
`messaging application”
`Petitioners’ obviousness theory relies on an unreasonable expansion of the
`term “application” (as recited in “instant voice messaging application”) to
`encompass hardware alone. Pet. 23. Petitioner does not support that proposed
`construction.6 EX2001 ¶¶ 49-59.
`It is clear from the claim language itself that the instant voice messaging
`application of claim 9 does not encompass (let alone require) hardware. Id. As
`explained below, the claimed “displaying” refers to software instructions which
`control data sent to a monitor. That claim language does not however, require the
`instant voice messaging application to be a physical display. Cf. Pet. 12 (“The
`written description indicates that displaying is carried out by a hardware device . . .
`. The written description does not state that . . . any software, provide the claimed
`display capability.”). Petitioner selectively plucked snippets from the ’433 Patent
`specification to argue its unreasonable proposed constructions. EX2001 ¶¶ 55-56.
`Petitioner’s approach is impermissible. The Board must consider the specification
`as a whole. See, e.g., Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)
`(en banc) (claims must be construed as a whole consistent with the entire
`specification); Playtex Prods., Inc. v. Procter & Gamble Co., 400 F.3d 901, 906
`
`
`6 Petitioners’ argument that the ’433 Patent supposedly “does not identify any
`particular software program” (Pet. 43) goes only to written description and is
`therefore irrelevant here. Indeed, Petitioners in effect ask the Board not to look at
`the disclosure of the ’433 Patent for its description of “instant voice messaging
`application.” Pet. 9, n.1
`
`
`
`14
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`IPR2017-2088
`U.S. Patent 8,995,433
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`(Fed. Cir. 2005) (“[C]laims must be construed so as to be consistent with the
`specification, of which they are a part”) (citation omitted).
`Petitioner admits that “the term ‘application’ to a person of ordinary skill in
`the art typically refers to computer software for performing a particular function.”
`Pet. 10 (citing EX1109, Microsoft Computer Dictionary (3d. ed. 1997), at p. 27
`(defining “application” as “[a] program designed to assist in the performance of a
`specific task, such as word processing, accounting, or inventory management.”));
`see also EX2004 ¶ 16 (noting “App” voted 2010 word of the year by the American
`Dialect Society). The customary and ordinary definition is software, as Petitioner
`admits. Nonetheless, Petitioner argues that “instant voice messaging application”
`includes “hardware such as a general purpose computer and display device 216.”
`Pet. 12. Petitioner’s argument is meritless on its face.
`The ’433 Patent makes it clear that when the instant voice messaging
`application displays a list of one or more potential recipients for the instant voice
`message, that function is controlled by software that is executable by a processor to
`instruct a display device to do the displaying. The ’433 Patent describes that the
`displaying function (under the command of software) is merely carried out by a
`hardware device—display device 216 connected to IVM client 208: “The IVM
`client 206 displays a list of the one or more IVM recipients on its associated
`display.” EX1101 17:1-3. The fact that software controls a printer does not convert
`the software into hardware. EX2001 ¶ 58.
`The Board should reject Petitioners’ proposed construction, and therefore
`should reject Petitioners’ dependent corollary argument that claim 9 is somehow
`
`
`
`15
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`IPR2017-2088
`U.S. Patent 8,995,433
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`made obvious by hardware in the Zydney application. See, e.g., Pet., 23 (arguing that
`the “computing device or hardware” of Zydney discloses the claimed “instant voice
`messaging application”).
`
`2. Petitioners rely on an erroneous construction for “client
`platform system”
`Petitioners’ equally-contorted argument that the term “client platform
`system” encompasses hardware should likewise be rejected as unsupported and
`contrary to the customary and ordinary meaning of “client platform.” Cf. Pet. at 27
`(“hardware including the client device (e.g., personal computer) and the
`microphone….”). Petitioners rely upon its incorrect construction to argue that the
`claimed client platform system is disclosed by Zydney. Pet. 25-28; EX2001 ¶¶ 60-
`62.
`
`Petitioners’ claim construction should be rejected as inconsistent with at least
`the following description of the “client platform system” in the specification of the
`’433 Patent:
`
`the instant voice message client 208 comprises a client platform 302 for
`generating an instant voice message. . .. The client platform 302
`comprises a client engine 304, which controls other components,
`namely the document handler 306, file manager 308, audio file creation
`312, signal processing 314, encryption/decryption 316, and
`compression/decompression 318.
`EX1001 at 12:8-23 (underlining added). Fig. 3 of the ’433 Patent illustrates:
`
`
`
`16
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`IPR2017-2088
`U.S. Patent 8,995,433
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`
`EX1001, Fig. 3 (red box added). Thus, Fig. 3 illustrates that the instant voice
`messaging client 208 includes a client platform 302 for generating an instant voice
`message. The client platform 302 includes a client engine 304 that controls other
`components that include the document handler 306 and the file manager 308 and
`components that handle audio file creation 312, signal processing 314, encryption
`and decryption 316, and compression and decompression 318. Further, the claimed
`client platform system is included in the claimed instant voice message application,
`which does not encompass hardware, as explained above. Thus, the claimed client
`platform system refers to software (as opposed to hardware). EX2001 ¶¶ 55-57.
`Accordingly, the Board therefore should reject Petitioners’ erroneous claim
`constructions, and also reject Petitioners’ dependent corollary arguments that the
`
`
`
`17
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`IPR2017-2088
`U.S. Patent 8,995,433
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`claimed “client platform system” is somehow made obvious by hardware in Zydney.
`See, e.g., Pet. 28 (arguing that “the software agent in Zydney generates a voice
`container by controlling various other components” such as a microphone and
`processor).
`
` No prima facie obviousness for “wherein the instant voice message
`application attaches one or more files to the instant voice message”
`(all challenged claims)
`The Petition relies solely on Zydney for the limitation “wherein the instant
`voice messaging application attaches one or more files to the instant voice message”
`(recited in independent claim 9, and hence all claims challenged in the instant
`Petition). The Petition should be denied because Zydney does not disclose or suggest
`this limitation. Indeed, Petitioners admit that “Zydney does not appear to explicitly
`identify which portion of the software on the client system attaches files to voice
`containers.” Pet. at 35.7 This concession itself provides sufficient ground for denial.
`While Petitioners attempt to dismiss this conceded deficiency as “a trivial omission”
`(id.), that is tantamount to arguing that the Board may ignore the explicitly-claimed
`requirement concerning what exactly must effect the attaching—i.e., the “instant
`voice message application” that further comprises both the “client platform system
`for generating an instant voice message” and the “messaging system for transmitting
`the instant voice message over a packet-switched network.”
`
`
`7 Notably, Petitioner LGE makes the same concession in the petition concurrently
`filed in related matter IPR2017-2090 (see p. 55), which the instant Petition fails to
`identify pursuant to the mandatory notice provisions.
`18
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`IPR2017-2088
`U.S. Patent 8,995,433
`
`Contrary to
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