UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`HUAWEI DEVICE CO., LTD AND LG ELECTRONICS, INC.,
`Petitioners
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`v.
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`UNILOC LUXEMBOURG S.A.,
`Patent Owner
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`
`
`
`IPR2017-02090
`PATENT 8,724,622
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`

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`I.
`II.
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`
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`
`
`INTRODUCTION
`PETITIONERS DO NOT SATISFY THE MANDATORY NOTICE
`REQUIREMENTS
`Petitioners Fail to Identify All Related Matters
`
`Petitioners Fail to Identify Each Real Party-In-Interest
`
`III. HUAWEI HAS IMPERMISSIBLY FILED MULTIPLE
`PETITIONS AGAINST THE SAME CLAIMS OF THE SAME
`’622 PATENT BASED ON THE SAME ART
`IV. THE BOARD’S PRECEDENTIAL FACTORS SUPPORT DENIAL
`V. OVERVIEW OF THE ’622 PATENT
`Effective Filing Date of the ’622 Patent
`
`The ’622 Patent Describes and Claims Instant Voice
`Messaging over a Packet-Switched Network
`VI. PERSON OF ORDINARY SKILL IN THE ART
`VII. PETITIONER RELIES ON INCORRECT CLAIM
`CONSTRUCTIONS
`“instant voice messaging application”
`
`“client platform system”
`“communication platform system”
`
`VIII. NO REASONABLE LIKELIHOOD THAT AT LEAST ONE OF
`THE CHALLENGED CLAIMS IS UNPATENTABLE
`Zydney does not render obvious “wherein the instant voice
`
`message includes an object field including a digitized audio
`file” (independent claim 3)
`1.
`Zydney differentiates its voice container from a voice
`message
`Zydney’s voice container does not include an “object
`field including a digitized audio file”
`Zydney does not enable or disclose a packet-switched
`“object field” as claimed
`
`IPR2017-02090
`U.S. Patent 8,724,622
`
`Tables of Contents
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`1
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`1
`3
`5
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`6
`8
`10
`10
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`11
`13
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`14
`14
`19
`21
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`23
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`24
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`25
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`26
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`29
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`2.
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`3.
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`ii
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`4.
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`2.
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`3.
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`31
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`32
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`34
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`35
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`38
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`40
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`42
`48
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`IPR2017-02090
`U.S. Patent 8,724,622
`Petitioners fail to specifically address the requirement
`that the claimed “object field” must include “a digitized
`audio file”
`Zydney does not render obvious “wherein the instant voice
`messaging application includes a document handler system
`for attaching one or more files to the instant voice message”
`(independent claim 27)
`No prima facie obviousness for “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” (dependent claims 14-17 and 28-31)
`1.
`Zydney and Clark both lack a database record in a
`message database, where that database record includes
`both a unique identifier and an instant voice message
`There could not have been any motivation to combine
`Zydney with Clark to devise a database record that
`included a unique identifier
`No prima facie obviousness because Petitioner’s
`proposed combination of Zydney with Clark results in
`messages being deleted once they are sent to the server
` No prima facie obviousness for “a display [at the client
`device] displaying a list of one or more potential recipients”
`(claims 38-39)
`IX. PETITIONERS’ CONDITIONS FOR JOINDER
`X.
`THE SUPREME COURT IS CURRENTLY REVIEWING THE
`CONSTITUTIONALITY OF INTER PARTES REVIEW
`XI. CONCLUSION
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`49
`49
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`iii
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`IPR2017-02090
`
`US. Patent 8,724,622
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`List of Exhibits
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`Exhibit No.
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`2001
`
`2002
`
`Declaration of William C. Easttom II
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`Invalidity Contentions Submitted on March 28, 2017 in the
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`underlying consolidated case of Uniloc USA, Inc. v. Samsung
`
`Electronic America ’s, Inc., Case No. 2: l6-cv—642
`
`2003
`
`Invalidity Contentions Submitted on December 16, 2016 in the
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`underlying consolidated case of Uniloc USA, Inc. v. Samsung
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`Electronic America ’s, Inc., Case No. 2: l6-cv—642
`
`2004
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`Microsoft TechNet, Using HTTP Compression
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`
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`iv
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`IPR2017-02090
`U.S. Patent 8,724,622
`
`I.
`
`INTRODUCTION
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107(a), Uniloc Luxembourg
`S.A. (“Patent Owner”) submits this Preliminary Response to the Petition for Inter
`Partes Review (“the Petition”) of U.S. Patent No. 8,724,622 (“the ’622 patent”) filed
`by Huawei and LG Electronics (“LGE”) (collectively, “Petitioners”). Petitioners
`move to join the proceeding in IPR2017-1667. The Board has not yet rendered a
`decision on whether the original petition filed in IPR2017-1667 meets the procedural
`and substantive requirements. It does not. Given the instant Petition is purportedly a
`carbon copy, it suffers from the same fatal defects.
`
`PETITIONERS DO NOT SATISFY THE MANDATORY NOTICE
`REQUIREMENTS
`The ’622 patent is in a family of patents including United States Patent Nos.
`7,535,890 (“the ’890 patent”); 8,243,723 (“the ’723 patent”); 8,199,747 (“the ’747
`patent”); and 8,995,433 (“the ’433 patent”), as shown in the diagram below.
`
`
`II.
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`1
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`

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`IPR2017-02090
`
`US. Patent 8,724,622
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`Petitioners collectively have initiated ten of the thirty-six IPRs filed against
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`these five patents, as highlighted below. As shown in the table below, most of those
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`thirty-six IPR petitions (26 of 36) filed against these related patents predate the
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`present Petition.
`
`Petitioner
`
`1m “—
`
`
`
`Apple
`
`Apple
`
`Apple
`
`Apple
`
`Apple
`
`Apple
`
`IPR2017—0220
`
`l4—Nov-l6
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`IPR20 1 7-022 1
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`14-Nov- 1 6
`
`IPR2017-0222
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`14-Nov- 1 6
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`IPR2017—0223
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`l4—Nov—l6
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`IPR2017-0224
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`l4-Nov- 1 6
`
`IPR2017—0225
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`l4—Nov-l6
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`Facebook / WhatsApp
`
`IPR2017 1257
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`7-Apr-17
`
`Facebook / WhatsApp
`
`IPR2017 1365
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`3May-17
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`Facebook / WhatsApp
`
`IPR2017—1427
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`Facebook / WhatsApp
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`IPR2017- 1428
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`1 1—May—l7
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`1 1-May-17
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`Facebook / WhatsApp
`
`Facebook / WhatsApp
`
`Facebook / WhatsApp
`
`Snap
`
`Snap
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`Facebook / WhatsApp
`
`Facebook / WhatsApp
`
`Facebook / WhatsApp
`
`Samsung Elec
`
`Samsung Elec
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`Samsung Elec
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`Samsung Elec
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`Samsung Elec
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`

`

`US. Patent 8,724,622
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`IPR2017-02090
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`Petitioner
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`Date
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`Patent
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`————
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`
`
`A.
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`Petitioners Fail to Identify All Related Matters
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`In accordance with 37 C .F.R. § 42.8(b)(2), a petition for inter partes review
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`must identify all other judicial and administrative matters that would affect, or be
`
`affected 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). The Petition does not meet this mandatory
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`notice requirement.
`
`As shown in the table above, to date, Petitioners and their co-defendants have
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`collectively filed thirty-six IPR petitions against this family of patents, including at
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`least seven IPR petitions against the ’433 patent. See petitions filed in Case Nos.
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`

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`IPR2017-02090
`U.S. Patent 8,724,622
`
`IPR2017-0225, IPR2017-1427, IPR2017-1428, IPR2017-1611, IPR2017-1634, and
`IPR2017-1801, and IPR2017-2087. As shown in the patent-family diagram above,
`the ’433 patent claims the benefit of the priority of at least the actual filing date of
`the ’622 patent challenged in the instant Petition; and the entire patent family is
`linked in a chain that claims the benefit of the filing date of the ’890 patent.
`The Petition fails to identify all related administrative matters pursuant to 37
`C.F.R. § 42.8(b)(2). See Pet. 1-2. At a minimum, the Petition makes no mention of
`any of the related IPR matters challenging the validity of the child ’433 patent (let
`alone the petitions filed against the remainder of this patent family). See petitions
`filed in Case Nos. IPR2017-0225, IPR2017-1427, IPR2017-1428, IPR2017-1611,
`IPR2017-1634, and IPR2017-1801, and IPR2017-2087. This omission is especially
`glaring given that LGE itself filed one of those petitions against the ’433 patent—on
`the same day as the instant Petition. See IPR2017-2087. Concurrent with the filing
`of the instant Petition, Huawei filed its own redundant petition against the ’433
`patent in IPR2017-2067. Petitioners’ failure to meet the mandatory notice
`requirement of related administrative matters concerning this patent family provides
`an independent basis to deny the Petition in its entirety.1
`
`
`1 Notably, the Original Petition filed in IPR2017-1667 failed to meet the mandatory
`notice requirement for analogous reasons. At a minimum, the Original Petitioners
`(Facebook and WhatsApp) in IPR2017-01667 failed to provide notice of the earlier-
`filed petitions challenging this same patent family, including, for example, the
`petitions filed in IPR2017-0225 and IPR2017-1428, which both challenge the child
`’433 patent. That omission is especially glaring given that the Original Petitioners
`filed the petition in IPR2017-1428. Thus, both the Original Petition and the instant
`Joinder Petition should be denied for indisputably failing, on their faces, to satisfy
`the mandatory notice requirements.
`
`4
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`IPR2017-02090
`U.S. Patent 8,724,622
`
`
`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 or risk outright denial. 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 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 the coordination evident on the face
`of those joint invalidity contentions, members of this same joint defense group
`admittedly coordinated in various IPR filings. These filings have been based on
`references named in the joint invalidity contentions and known before the original
`IPR was filed.
`Huawei filed nine IPRs on September 11-12, 2017. In doing so, Huawei
`admittedly coordinated its efforts with at least LGE in filing the petitions in
`IPR2017-2090 (the instant Petition) and IPR2017-2088. Huawei also admittedly
`coordinated its efforts with at least Google and Motorola in filings the petitions in
`
`5
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`

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`IPR2017-02090
`U.S. Patent 8,724,622
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`IPR2017-2080 and IPR2017-2081. The currently-filed petitions in IPR2017-2080
`and PR2017-2081 challenges the same ’622 Patent at issue here based on
`substantially similar (and at times identical) arguments. Given the overlapping
`arguments of these concurrently filed petitions, and the admitted collusion between
`the joint defendants named in those filings, it was error not to name all the colluding
`defendants on each of those petitions. See 37 C.F.R. § 42.8(b)(1) (requiring
`petitioners to identify each real party-in interest). The failure to name all real parties-
`in-interest provides an independent basis to deny the Petition. 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).
`
`III. HUAWEI HAS IMPERMISSIBLY FILED MULTIPLE PETITIONS
`AGAINST THE SAME CLAIMS OF THE SAME ’622 PATENT
`BASED ON THE SAME ART
`Under 35 U.S.C. § 325(d), the Board has the discretion to deny a follow-on
`IPR petition where multiple petitions are filed against the same patent. In the
`petitions filed in 2017-2080, 2017-2081, and 2017-2090, Huawei redundantly
`challenges the same claims of the ’622 patent based primarily on the same Zydney
`reference and the same arguments asserting that reference. In doing so, Huawei fails
`to even acknowledge the overt redundancy, let alone provide any reasoned
`explanation to justify needlessly burdening the Board and the Patent Owner with this
`double-jeopardy approach.
`The petitions concurrently filed by Huawei (and other named petitioners) in
`
`6
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`

`

`IPR2017-02090
`U.S. Patent 8,724,622
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`2017-2080 and 2017-2081 collectively challenge claims 1-24 and 39 of the ’622
`patent. Every single one of those challenges presents arguments based primarily on
`Zydney. The instant Petition (IPR2017-2090) largely overlaps with the petitions also
`filed by Huawei in 2017-2080 and 2017-2081, in terms of the claims challenged and
`the Zydney-based arguments. To date, the members of Petitioners’ joint defense
`group have collectively filed seven IPR petitions challenging the same claims of the
`same ’622 patent based on multiple redundant grounds asserting the same Zydney
`reference. See, e.g., IPR2017-1667, IPR2017-1668, IPR2017-1697, IPR2017-1698,
`IPR2017-1804, IPR2017-1805, and IPR2017-2090.
`Petitioners and their co-defendants clearly are gaming the system. The inter
`partes review system is not a piñata party in which each member of a joint defense
`group can take a turn swinging at Patent Owner’s patents with the Zydney stick.
`Huawei’s abuse is even more egregious because, by its multiple and redundant
`filings, it has attempted to take several turns whacking at the same claims of the ’622
`patent with the same Zydney stick.
`This joint defense group appears to be playing the odds: if they work together
`to keep filing IPR petitions against the ’622 Patent—using their admittedly “joint”
`invalidity contentions filed in litigation as a playbook—they will eventually
`overwhelm the Board and Patent Owner.2 “The absence of any restrictions on
`follow-on petitions would allow petitioners the opportunity to strategically stage
`
`2 “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.
`
`7
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`

`IPR2017-02090
`U.S. Patent 8,724,622
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`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 17.3
`Huawei could have chosen to either move to join the earlier-filed Petitions
`asserting Zydney against the ’622 patent, or, instead, to independently develop its
`own challenges asserting Zydney. Attempting both approaches is abusive and
`needlessly redundant. Huawei should not be permitted to game the system with its
`double-jeopardy approach.
`
`IV. THE BOARD’S PRECEDENTIAL FACTORS SUPPORT DENIAL
`The present facts align with example factors summarized by the Board in the
`precedential General Plastic opinion4 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-
`0223 and IPR2017-00224) and further had the benefit of the Board’s decision on
`whether to institute review in those earlier petitions. Id. at 9 (factor 3, citations
`omitted).
`
`
`3 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’”).
`4 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).
`
`8
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`IPR2017-02090
`U.S. Patent 8,724,622
`
`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 their 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
`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 ’622 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). Moreover, as explained above, Huawei has filed
`multiple petitions challenging the same claims of the same patent. Id.
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`9
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`IPR2017-02090
`U.S. Patent 8,724,622
`
`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 the above factors set forth in the precedential General Plastic each
`independently confirm denial
`is appropriate here,
`their collective weight
`overwhelmingly invokes the discretion of § 325(d). And while Petitioners have the
`obligation to address § 325(d) within the Petition itself, Petitioners make no mention
`of these factors, much less explain why they do not apply here.
`
`V. OVERVIEW OF THE ’622 PATENT
` Effective Filing Date of the ’622 Patent
`The ’622 Patent issued May 13, 2014 from U. S. Pat. App. No. 13/546,673,
`which is a Continuation of U.S. Pat. App. No. 12/398,063, filed on March 4, 2009,
`which is a Continuation of U.S. Pat. App. No. 10/740,030, filed on Dec. 18, 2003.
`The earliest-filed parent application issued as the ’890 Patent. During prosecution of
`the ’890 Patent, to which the ’622 Patent claims priority, the Applicant filed an
`
`10
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`IPR2017-02090
`U.S. Patent 8,724,622
`
`affidavit testifying it had a date of conception for the claims of the ’890 patent “prior
`to August 15, 2003.”
`
`The ’622 Patent Describes and Claims Instant Voice Messaging
`over a Packet-Switched Network
`The ’622 patent describes how 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 ʼ622 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, 1:32–34.
`The ʼ622 patent expressly distinguishes circuit-switched networks from
`packet-switched networks 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.” EX1001, 1:35–36. 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.
`EX1001, 1:62–2:7. The conversion effected by media gateways highlights the fact
`that packetized data carried over packet-switched networks is different from and is
`incompatible with an audio signal carried over a dedicated circuit-switched network.
`EX1001, 1:24–34.
`
`11
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`

`IPR2017-02090
`U.S. Patent 8,724,622
`
`The ʼ622 Patent solved the problem. The ’622 Patent describes how a user-
`accessible client can be configured for instant voice messaging using a direct
`communication over a packet-switched network (e.g., through an Ethernet card).
`EX1001, 12:4–50. Client devices can be 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.” EX1001, 7:53–8:39, Fig. 2.
`The Abstract of the 622 Patent summarizes the technical disclosure:
`Methods, systems and programs for instant voice messaging over a
`packet-switched network are provided. A method for instant voice
`messaging may comprise receiving an instant voice message having
`one or more recipients, delivering the instant voice message to the one
`or more recipients over a packet-switched network, temporarily
`storing the instant voice message if a recipient is unavailable; and
`delivering the stored instant voice message to the recipient once the
`recipient becomes available.
`EX1001, Abstract (emphasis added).
`The Petition challenges three independent (claims 3, 27, and 38) and
`seventeen dependent claims (6-8, 10, 11, 13, 14-23, 28-35, and 39). For the
`convenience of the Board, independent claim 3 is reproduced below:
`
`3. A system comprising:
`a network interface connected to a packet-switched
`network;
`
`12
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`

`IPR2017-02090
`U.S. Patent 8,724,622
`a messaging system communicating with a plurality of
`instant voice message client systems via the network
`interface; and
`a communication platform system maintaining connection
`information for each of the plurality of instant voice
`message client systems indicating whether there is a
`current connection to each of the plurality of instant
`voice message client systems,
`wherein the messaging system receives an instant voice
`message from one of the plurality of instant voice
`message client systems, and
`wherein the instant voice message includes an object field
`including a digitized audio file.
`
`VI. PERSON OF ORDINARY SKILL IN THE ART
`Petitioner alleges through its declarant, Dr. Lavian, that “a person of ordinary
`skill in the art for purposes of the ’622 patent would have possessed at least a
`bachelor’s degree in computer science, computer engineering, or electrical
`engineering with at least two years of experience in development and programming
`relating to network communication systems (or equivalent degree or experience).”
`Pet. 6 (citing EX1002 ¶¶13-15).
`Mr. Easttom opines that a POSITA is someone who would have possessed on
`the priority date a bachelor’s degree in electrical engineering or computer science
`(or equivalent degree/experience) with at least two years of experience in computer
`programming and software development, including the development of software for
`communication with other computers over a network. EX2001 ¶21. Mr Easttom
`believes Dr. Lavian’s opinions concerning a POSITA are essentially the same as his,
`and any differences are inconsequential to the dispute before the Board. Id.
`
`13
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`IPR2017-02090
`U.S. Patent 8,724,622
`
`VII. PETITIONER RELIES ON INCORRECT CLAIM CONSTRUCTIONS
`Petitioners seek to construe three terms: (1) “instant voice messaging
`application”; (2) “client platform system”; and (3) “communication platform
`system.” Petitioners’ proposed definitions should be rejected as violating
`fundamental canons of claim construction equally applicable in this forum when
`applying the broadest reasonable interpretation. Petitioners’ reliance on incorrect
`claim constructions taints the entire Petition and provides an independent basis for
`denial at the preliminary stage.
`
`“instant voice messaging application”
`A POSITA would have understood the term “application” in the context of the
`’622 patent to mean a software program that performs a particular task or function(s).
`EX2001 ¶23. Thus, a POSITA would have understood that whole phrase “instant
`voice messaging application” means “a software program that performs instant voice
`messaging tasks or functions. EX2001 ¶23, 32.
`The Petitioners and their expert, Dr. Lavian, acknowledge that a POSITA
`would understand the term “application” means “computer software for performing
`a particular function.” Pet. at 7 (citing EX1002 at ¶ 53 [citing EX1012, the Microsoft
`Computer Dictionary defining “application as “[a] program designed to assist in the
`performance of a specific task, such as word processing, accounting, or inventory
`management.”]). EX2001 ¶24. However, the Petitioners and Dr. Lavian then assert
`that, based on the written description of the ’622 patent, the term “instant voice
`messaging application” should not be limited to software. Pet. at 7-8; see also
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`EX1002 at ¶ 54. Petitioners’ sole motivation for taking such an expansive view is to
`argue that the Zydney reference discloses certain claim features.
`As explained by Mr. Easttom, a POSITA reading the’622 patent would NOT
`deviate from the Petitioners’ acknowledged and understood meaning. EX2001 ¶23-
`32.
`
`The Petitioners assert that the ’622 patent discloses that functions associated
`with instant voice messaging are performed by the IVM client 208, which is a
`“general-purpose programmable computer.” Pet. at 7 (citing EX1001 at 12:11-14).
`EX2001 ¶26. The Petitioners also point to FIG. 3, reproduced below, which is “an
`exemplary illustration of the architecture in the IVM client 208 for enabling instant
`voice messaging according to the present invention.” EX1001 at 12:4-6. A POSITA
`would have understood that “architecture” in the context of FIG. 3, means the
`structure and functions of the software in the client computer. EX2001 ¶26.
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`FIG. 3 in the ’622 Patent: Client Architecture
`Referring to FIG. 3, the IVM client 208, which is a device that includes
`software running on a processor, “comprises a client platform 302 for generating an
`instant voice message and a messaging system 320 for messaging between the IVM
`client 208 and the IVM server 202 for enabling instant voice messaging.” EX1001
`at 12:7-10 (emphasis added). EX2001 ¶27. The Petitioners appear to contend that
`because the “written description does not identify any particular software program
`capable of performing all of the functions associated with the ‘instant voice
`messaging application’ recited in the claims,” and because the “client” is a computer
`system that the “application” may be hardware. Pet. at 7. This argument is incorrect.
`EX2001 ¶¶27-32.
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`A patent need not include every detail of an invention if the descriptions are
`adequate for a POSITA to understand it. FIG. 3 is such a case because it does not
`explicitly show a labeled box for the “application” that comprises a “client platform
`302” and a “messaging system 320,” but a POSITA would have understood that,
`despite the lack of an explicit application label in FIG. 3, the application as claimed
`is an implied box around client platform 302 and messaging system 320. EX2001
`¶28. Furthermore, the application is software (and not hardware) because it is
`comprised of two software blocks, the client platform 302 and the messaging system
`320. EX2001 ¶28.
`First, the ’622 patent teaches that “[the] messaging system and the client
`engine 304 communicate via standard inter-process communication.” EX1001 at
`12:21-23. A POSITA would have understood the term “inter-process 10
`communication” as a term of art that refers to different parts of a software
`application, known as “processes,” often executing simultaneously and
`communicating information with each other. Thus, the messaging system and the
`client platform must be software. EX2001 ¶29.
`Second, referring to FIG. 3, the term CLIENT ENGINE 304 informs a
`POSITA that CLIENT ENGINE is software because the term “engine” is a well-
`known term of art to describe software. EX2001 ¶30. Each of the blocks in client
`platform 302—Document Handler 306, Audio File 210, Audio File Creation 312,
`File Manager 308, and Msg Database 310—inform a POSITA that they are software
`because their functions are clearly implemented in software in view of the written
`description. The document handler 306 “oversees the retrieving, sending, receiving
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`and storing of one or more documents (or files) attached to instant voice messages
`...” EX1001 at 12:26-28. EX2001 ¶30. The file manager and database “accesses a
`message database,” and “services requests from the user to record, delete, or retrieve
`messages to/from the message database 310.” EX1001 at 12:34-35 and 12:38-40.
`“Audio file creation 312 creates an instant voice message as audio file 210, and is
`responsible for ... storing the input speech into audio file 210.” Id. at 12:40-44. The
`’622 patent
`includes
`similar descriptions
`for
`the
`signal processing,
`encryption/decryption, and compression/decompression functions of the client
`engine 304. Id. at 12:44-50. EX2001 ¶30.
`Third, the Petitioners do not point to any support in the ’622 patent that
`discloses hardware that performs any function of the messaging system or the client
`platform. EX2001 ¶31.
`Overall, for at least the reasons presented in the section above and in the
`totality of the ’622 patent, the term “instant voice message application” means “a
`software program that performs instant voice messaging tasks and functions.”
`EX2001 ¶32.
`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)).
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`“client platform system”
`Petitioners also incorrectly propose to construe “client platform system” as
`“hardware and/or software on a client for generating an instant voice message.” Pet.
`at 9. Again, Petitioners rely upon its incorrect construction to argue that the claimed
`client platform system is disclosed by Zydney. However, a POSITA would have
`realized that this construction cannot be correct. EX2001 ¶33.
`First, just as the Petitioners unreasonably include “hardware” in the
`construction of “application,” they unreasonably include “hardware” in their
`proposed construction of “client platform system.” As explained above concerning
`the construction of “application,” the “client platform” is described in FIG. 3 and is
`understood to be software. For the same reasons that an “app