Paper No. 9
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`RIOT GAMES, INC.,
`Petitioner,
`
`v.
`
`PALTALK HOLDINGS, INC.,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2018-00131
`U.S. Patent No. 6,226,686
`
`––––––––––––––––––
`
`PETITIONER’S PRELIMINARY REPLY
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`––––––––––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`––––––––––––––––––
`
`RIOT GAMES, INC.,
`Petitioner,
`
`v.
`
`PALTALK HOLDINGS, INC.,
`Patent Owner.
`
`––––––––––––––––––
`
`Case No. IPR2018-00131
`U.S. Patent No. 6,226,686
`
`––––––––––––––––––
`
`PETITIONER’S PRELIMINARY REPLY
`
`
`
`
`
`IPR2018-00131 (U.S. Patent No. 6,226,686)
`
`Petitioner’s Preliminary Reply
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
`
`ANALYSIS ...................................................................................................... 2
`
`A.
`
`B.
`
`Patent Owner’s “Transport Layer Header” Requirements Are
`Inconsistent With Its Positions in Prior and Current Litigations .......... 2
`
`Patent Owner’s “Transport Layer Header” Requirements Conflict
`With the Plain and Ordinary Meaning of the Claims ............................ 3
`
`III. CONCLUSION ................................................................................................ 5
`
`Exhibit List .................................................................................................................. i
`
`Certificate Of Service............................................................................................... iii
`
`
`
`i
`
`
`
`IPR2018-00131 (U.S. Patent No. 6,226,686)
`
`Petitioner’s Preliminary Reply
`
`I.
`
`INTRODUCTION
`
`Patent Owner’s proposed constructions for “aggregated message,” “payload
`
`portion,” and “aggregated payload” are far narrower than past litigation
`
`constructions it successfully urged various courts to adopt. Paper 6 (“POPR”), 5-
`
`13; see II.A below. Those constructions are shown below, with its newly added
`
`requirements underlined:
`
`“aggregated message” — One or more messages containing a single
`transport layer message header, destination data, and data items from an
`aggregated payload.
`
`“payload portion” — A portion of the original network message (that
`contains data item(s) conveying information) sent to the group messaging
`server remaining after the transport layer header is removed.
`
`“aggregated payload” — A collection of two or more data items that does
`not include transport layer headers.
`
`Patent Owner seeks to import these “transport layer header” requirements in
`
`an obvious attempt to sidestep Petitioner’s challenge. But Patent Owner cannot
`
`amend its expired patent through claim construction, nor can it twist its claims like
`
`“a nose of wax ... by merely referring to the specification.” White v. Dunbar, 119
`
`U.S. 47, 51 (1886). Patent Owner’s proposed “transport layer header” requirements
`
`have no support in the plain and ordinary meaning of the claims. The Board should
`
`reject Patent Owner’s constructions for these reasons and those explained below.
`
`1
`
`
`
`IPR2018-00131 (U.S. Patent No. 6,226,686)
`
`Petitioner’s Preliminary Reply
`
`II. ANALYSIS
`
`A.
`
`Patent Owner’s “Transport Layer Header” Requirements Are
`Inconsistent With Its Positions in Prior and Current Litigations
`
`Patent Owner’s “transport layer header” requirements are found nowhere in
`
`its prior constructions of these terms. For example, in PalTalk Holdings, Inc. v.
`
`Sony Computer Entertainment America Inc., No. 2:09-cv-274 (E.D. Tex.), Patent
`
`Owner agreed to a construction of “payload portion,” Ex. 1032, 2, and proposed
`
`constructions that were adopted by the court for “aggregated payload” and
`
`“aggregated message.” Id., Ex. A at 14-15, 17-18. None of these constructions
`
`contained the “transport layer header” requirements highlighted above or, indeed,
`
`any “header” requirement at all. Patent Owner also asserted these prior
`
`constructions when it initiated litigation against Petitioner. See Ex. 1016, 93
`
`(quoting “aggregated message” from Sony litigation); id., 121-122 (quoting
`
`construction of “aggregating said payload portions” without any variation of the
`
`“transport layer header” requirements). Those prior positions eviscerate Patent
`
`Owner’s claim that its new, overly narrow constructions are the “ordinary and
`
`accustomed meaning as understood by one of ordinary skill in the art.” See POPR,
`
`2. Only after it had reviewed the patentability challenge in the present Petition did
`
`Patent Owner discover this new “ordinary and accustomed meaning.”
`
`Further, Patent Owner should be judicially estopped “from deliberately
`
`changing positions according to the exigencies of the moment.” U.S. v. McCaskey,
`2
`
`
`
`IPR2018-00131 (U.S. Patent No. 6,226,686)
`
`Petitioner’s Preliminary Reply
`
`9. F.3d 368, 378 (5th Cir. 1993). By its own admission, Patent Owner has
`
`advanced clearly inconsistent positions, Ex. 1036, 10:19-11:13, and has persuaded
`
`a court to accept those positions, PalTalk Holdings, Inc. v. Sony Computer Entm't
`
`Am., Inc., No. 2:09-CV-274, 2011 WL 1326963, at *15 (E.D. Tex. Apr. 5, 2011)
`
`(adopting construction for “aggregated message”); PalTalk Holdings, Inc. v.
`
`Microsoft Corp., No. 2:06-CV-367, 2008 WL 4830571, at *8 (E.D. Tex. July 29,
`
`2008) (same for “payload portion”); id., *9-13 (adopting, in effect, construction for
`
`“aggregated payload”). Patent Owner also seeks to derive an unfair advantage: to
`
`preserve the patentability of its patent via a narrower construction than it accused
`
`defendants of infringing for decades. Such actions present a clear case for judicial
`
`estoppel. New Hampshire v. Maine, 532 U.S. 742, 750-51 (2001).
`
`B.
`
`Patent Owner’s “Transport Layer Header” Requirements
`Conflict With the Plain and Ordinary Meaning of the Claims
`
`Even putting aside Patent Owner’s inconsistent positions, it would be
`
`improper to incorporate the extra “transport layer header” limitations into these
`
`claim terms. Patent Owner proposes, in effect, that the “payload portion” exclude
`
`all “transport layer headers,” the “aggregated payload” likewise exclude them, and
`
`the “aggregated message” include at most a single “transport layer message
`
`header.” POPR, 5-13. But there is no basis for importing such limitations.
`
`Claim 1, for example, recites “messages contain[ing] a payload portion,” and
`
`the specification uses “payload” in a conventional sense. Ex. 1002, 3:64-66.
`3
`
`
`
`IPR2018-00131 (U.S. Patent No. 6,226,686)
`
`Petitioner’s Preliminary Reply
`
`Nothing in either the claim or specification suggests that a payload cannot contain
`
`a header. Indeed, the ’686 patent explains that the Internet Protocol (IP) and
`
`conventional networking use the OSI reference model for layers of network
`
`protocols. Id., 3:29-54 (citing RFC 791). Yet, OSI network layers are hierarchical:
`
`an IP packet payload may be an entire TCP packet including a TCP header and
`
`payload. E.g., Ex. 1011 (RFC 791), 1 (“[T]he [IP] module [could] take a TCP
`
`segment (including the TCP header and user data) as the data portion of an [IP]
`
`datagram.”). A “payload portion” could thus comprise a TCP header, and an
`
`“aggregated payload”/“aggregated message” could have multiple TCP headers.
`
`Moreover, Patent Owner’s Preliminary Response concedes these terms can
`
`comprise encapsulated headers. Patent Owner’s annotated Figure 9 from the
`
`patent, for example, shows an “aggregated message” (top row) and “aggregated
`
`payload” (green). The aggregated payload includes payload elements (red) that
`
`comprise the “actual data” of
`
`the payload (119 & 122) and
`
`header information (117, 118,
`
`120, 121), such as a source
`
`address and length of data in
`
`the payload. See POPR, 8; Ex. 1002, Fig. 9, 14:38-51.
`
`4
`
`
`
`IPR2018-00131 (U.S. Patent No. 6,226,686)
`
`Petitioner’s Preliminary Reply
`
`Because it cannot credibly argue, consistent with the specification, that the
`
`claimed payloads and messages exclude headers, Patent Owner proposes excluding
`
`“transport layer headers,” citing portions of the specification where “Transport
`
`Layer Protocol (TLP)” headers are removed. POPR, 5-13.1 But that is merely a
`
`naked request to read limitations in from the specification that are not reflected in
`
`the words of the claims. Indeed, claim 1 does not require the claimed
`
`“aggregating” functionality occur at any particular layer, “transport” or otherwise,
`
`cf claim 21 (said “messaging protocol is performed at a session layer”), and Patent
`
`Owner’s justification and expert testimony relate mostly to “headers” generally,
`
`see POPR, 5-6 (discussing “single message header”); Ex. 2001, ¶¶30-31, 36
`
`(same). Patent Owner cannot therefore justify excluding a specific type of header.
`
`III. CONCLUSION
`
`The Board should reject Patent Owner’s proposed “transport header layer”
`
`requirements, or at least allow the parties to explore the issues during trial.
`
`Dated: March 30, 2018
`
`Respectfully Submitted,
`
`/Joseph Micallef/
`Joseph A. Micallef
`Reg. No. 39,772
`Attorney for Petitioner
`
`
`
`1 The ’686 patent explains that a “Transport Layer Protocol (TLP)” can be IP (Ex.
`
`1002, 9:10-11), TCP/IP (id., 26:28-29), or not “based on IP” at all (id., 27:38-43).
`
`5
`
`
`
`IPR2018-00131 (U.S. Patent No. 6,226,686)
`
`Petitioner’s Preliminary Reply
`
`EXHIBIT LIST
`
`Exhibit Description
`No.
`1001 U.S. Patent No. 5,822,523
`1002 U.S. Patent No. 6,226,686
`1003 Prosecution File History (523 Patent)
`1004 Prosecution File History (686 Patent)
`1005 Reexamination File History (523 Patent)
`1006 Reexamination File History (686 Patent)
`1007 Declaration of Dr. Steve R. White
`1008 Curriculum Vitae of Dr. Steve R. White
`1009
`International Publication No. WO 94/11814 (Aldred)
`1010 Transport Multiplexing Protocol (TMux), RFC 1692 (Aug. 1994)
`1011
`Internet Protocol, RFC 791 (Sept. 1981)
`1012 U.S. Patent No. 5,466,200 (Ulrich)
`1013 U.S. Patent No. 5206,934 (Naef)
`1014 U.S. Patent No. 5,307,413 (Denzer)
`1015
`IBM Dictionary of Computing (1994)
`1016 Complaint, PalTalk Holdings, Inc. v. Riot Games, Inc., C.A. No. 1:16-
`cv-01240-SLR (Dec. 16, 2016)
`John D. Day et al., The OSI Reference Model, 71-12 Proceedings of the
`IEEE 1334 (1983)
`1018 Protocol Standard for a NetBIOS Service on a TCP/UDP Transport:
`Concepts and Methods, RFC 1001 (Mar. 1987)
`1019 Martin W. Sachs et al., LAN and I/O Convergence: A Survey of the
`Issues, IEEE Computer (1994)
`1020 Enrico Y. P. Hsu et al., Management Gaming on a Computer Mediated
`Conferencing System: A Case of Collaborative Learning through
`Computer Conference, IEEE (1991)
`1021 The Internet Standards Process – Revision 2, RFC 1602 (Mar. 1994)
`
`1017
`
`i
`
`
`
`IPR2018-00131 (U.S. Patent No. 6,226,686)
`
`Petitioner’s Preliminary Reply
`
`Exhibit Description
`No.
`Internet Official Protocol Standards, RFC 1720 (Nov. 1994)
`1022
`1023 U.S. Patent No. 5,502,726 (Fischer)
`1024 U.S. Patent No. 5,566,337 (Szymanski)
`1025
`Internet Relay Chat Protocol, RFC 1459 (May 1993)
`1026 Declaration of Dave Crocker
`1027 CV of Dave Crocker
`1028 The Internet Standards Process, RFC 1310 (Mar. 1992)
`1029 The Internet Standards Process – Revision 3, RFC 2026 (Oct. 1996)
`1030 U.S. Patent No. 5,558,339 (Perlman)
`1031 U.S. Patent No. 5,041,963 (Ebersole)
`1032 PR 4-3 Joint Claim Construction Statement, PalTalk Holdings, Inc., v.
`Sony Comp. Entertainment Am. Inc., Case No. 2:09-cv-274-DF, Dkt. No.
`209 (E.D. Tex. Oct. 25, 2010)
`1033 Claim Construction Order, PalTalk Holdings, Inc., v. Microsoft Corp.,
`Case No. 2:06-cv-367-DF (E.D. Tex.)
`1034 Song et al., A Distributed Simulation System for Team Decisionmaking,
`IEEE (1994)
`1035 Weaver et al., Networked Simulations: New Paradigms for Team
`Performance Research, 27(1), BEHAV. RES. METHODS, INSTRUMENTS, &
`COMPUTERS, 12-24 (1995)
`Transcript of Board Teleconference Regarding Petitioner’s Request for a
`Preliminary Reply (March 26, 2018)
`
`
`1036
`NEW
`
`
`
`
`
`ii
`
`
`
`IPR2018-00131 (U.S. Patent No. 6,226,686)
`
`Petitioner’s Preliminary Reply
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on this 30th day of
`
`March, 2018, I caused to be served a true and correct copy of the foregoing and
`
`any accompanying exhibits by electronic mail on the following counsel:
`
`Gregory M. Howison, ghowison@munckwilson.com
`Keith D. Harden, kharden@munckwilson.com
`Brian D. Walker, bwalker@munckwilson.com
`
`
`
`Dated: March 30, 2018
`
`Respectfully Submitted,
`
`/Joseph Micallef/
`Joseph A. Micallef
`Reg. No. 39,772
`SIDLEY AUSTIN LLP
`1501 K Street NW
`Washington, DC 20005
`jmicallef@sidley.com
`(202) 736-8492
`Attorney for Petitioner
`
`
`
`iii
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
