UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION
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`Petitioner
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`v.
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`UNILOC 2017 LLC
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`Patent Owner
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`IPR2019-01558
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`U.S. PATENT NO. 8,724,622
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. § 42.107(a)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MICROSOFT CORPORATION
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`Petitioner
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`v.
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`UNILOC 2017 LLC
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`Patent Owner
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`IPR2019-01558
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`U.S. PATENT NO. 8,724,622
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
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`PURSUANT TO 37 C.F.R. § 42.107(a)
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`IPR2019-01558
`U.S. Patent No. 8,724,622
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`I.
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`INTRODUCTION
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`Table of Contents
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`II.
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`THE ’622 PATENT
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`A.
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`B.
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`C.
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`Effective Filing Date of the ’622 Patent
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`Overview of the ’622 Patent
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`The Challenged Claims of the ’622 Patent Recite a
`System for Instant Voice Messaging over a Packet-
`Switched Network.
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`D.
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`Prosecution History of the ’622 Patent
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`III. RELATED PROCEEDINGS
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`IV. LEVEL OF ORDINARY SKILL IN THE ART
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`V.
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`THE PETITION IMPROPERLY CHALLENGES THE
`CLAIMS BASED ON ASSERTED ART CUMULATIVE OF
`PRIOR ART EVALUATED DURING PROSECUTION
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`VI. THE PETITION IS YET ANOTHER REDUNDANT
`PETITION, IMPROPERLY CHALLENGING CLAIMS
`BASED ON PRIOR ART AS TO WHICH THE BOARD
`HAS ALREADY DENIED INSTITUTION.
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`VII. PETITIONER’S ARGUMENT THAT PATENT OWNER IS
`PRECLUDED FROM RAISING CERTAIN ISSUES IS
`BASED ON A MISREADING OF FEDERAL CIRCUIT
`PRECEDENT.
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`VIII. PETITIONER DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY FOR ANY
`CHALLENGED CLAIM
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`A.
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`B.
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`Claim Construction
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`“wherein the instant voice message includes an object
`field including a digitized audio file” (claim 3, and hence
`in challenged dependent claim 9).
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`1
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`1
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`1
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`2
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`6
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`8
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`10
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`11
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`12
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`14
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`20
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`22
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`23
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`25
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`ii
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`IPR2019-01558
`U.S. Patent No. 8,724,622
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`C.
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`No prima facie obviousness for “the communication
`platform system assigns an IP address to each of the
`instant voice message client systems when the
`communication platform receives a connection request
`from each of the instant voice message client systems” as
`recited in claim 9.
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`D. No prima facie obviousness for “the instant voice
`message application communicates in an intercom mode
`when a recipient of the instant voice message is currently
`available to receive the instant voice message and
`communicates in a record mode when the recipient of the
`instant voice message is currently unavailable to receive
`the instant voice message” as recited in claim 36.
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`E.
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`F.
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`No prima facie obviousness for “the instant voice
`message application uses the intercom mode as a default
`communication mode” as recited in dependent claim 37.
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`No prima facie obviousness for “a user database storing
`user records identifying users of the plurality of instant
`voice message client systems, wherein each of the user
`records includes a user name, a password and a list of
`other users selected by a user” as recited in claim 1.
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`G. No Prima Facie Obviousness for Dependent Claim 2
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`IX. CONCLUSION
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`29
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`32
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`34
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`35
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`40
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`40
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`iii
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`EXHIBITS
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`IPR2019-01558
`U.S. Patent No. 8,724,622
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`Exhibit 2001
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`U.S. Patent No. 7,372,826 (Dahod)
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`iv
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`I.
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`INTRODUCTION
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`Pursuant to 35 U.S.C. §313 and 37 C.F.R. §42.107(a), Uniloc 2017 LLC (the
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`“Patent Owner” or “Uniloc”) submits Uniloc’s Preliminary Response to the Petition
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`for Inter Partes Review (“Pet.” or “Petition”) of United States Patent No. 8,724,622
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`(“the ’622 patent” or “Ex. 1001”) filed by Microsoft Corporation (“Petitioner”).
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`In view of the reasons presented herein, the Petition should be denied in its
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`entirety, for inter alia, (1) lacking candor by failing to bring to the Board’s attention
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`multiple denied petitions for inter partes review against the ’622 patent,
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`(2) presenting challenges based on grounds substantively unchanged from grounds
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`asserted in prior petitions that were denied institution, and (3) as failing to meet the
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`threshold burden of proving there is a reasonable likelihood that at least one
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`challenged claim is unpatentable.
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`Uniloc addresses each ground and provides specific examples of how
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`Petitioner failed to establish that it is more likely than not that it would prevail with
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`respect to at least one of the challenged ’622 Patent claims. As a non-limiting
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`example described in more detail below, the Petition fails the all-elements-rule in
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`not addressing every feature of any of the challenged claims.
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`Accordingly, Uniloc respectfully requests that the Board decline institution of
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`trial on Claims 1, 2, 9, 36 and 37 of the ’622 Patent.
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`II. THE ’622 PATENT
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`A. Effective Filing Date of the ’622 Patent
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`The ’622 patent is titled “System and Method for Instant VoIP Messaging.”
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`The ’622 patent issued May 13, 2014 from U.S. Patent Application No.
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`{00252529;v1}
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`IPR2019-01558
`U.S. Patent No. 8,724,622
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`13/546,673, which is a Continuation of U.S. Pat. App. No. 12/398,063, filed on
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`March 4, 2009, which is a Continuation of U.S. Pat. App. No. 10/740,030, filed
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`on Dec. 18, 2003. The earliest-filed parent application issued as the ’890 patent.
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`During prosecution of the ’890 patent, to which the ’622 patent claims priority, the
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`Applicant filed an affidavit testifying it had a date of conception for the claims of
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`the ’890 patent “prior to August 15, 2003.”
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`The Petition does not contest that the effective filing date of the ’622 patent is
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`December 18, 2003 (Petition, p. 7).
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`B. Overview of the ’622 Patent
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`The
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`’622 patent describes how
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`conventional
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`circuit-switched
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`communications enabled traditional telephony yet had a variety of technical
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`disadvantages that limited developing other forms of communication over such
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`networks. According to the ʼ622 patent, “[c]ircuit switching provides a
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`communication path (i.e., dedicated circuit) for a telephone call from the
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`telephone terminal to another device 20 over the [public switched telephone
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`network or] PSTN, including another telephone terminal. During the telephone
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`call, voice communication takes place over that communication path.” EX1001,
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`1:32-34.
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`The ʼ622 patent expressly distinguishes circuit-switched networks from
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`packet-switched networks at least in that the latter routes packetized digital
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`information, such as “Voice over Internet Protocol (i.e., ‘VoIP’), also known as
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`IP telephony or Internet telephony.” EX1001, 1:35-36. Because legacy circuit-
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`switched devices were unable to communicate directly over packet-switched
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`networks, media gateways were designed to receive circuit-switched signals and
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`packetize them for transmittal over packet-switched networks, and vice versa.
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`EX1001, 1:62-2:7. The conversion effected by media gateways highlights the
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`fact that packetized data carried over packet-switched networks is different from
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`and is incompatible with an audio signal carried over a dedicated circuit-switched
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`network. EX1001, 1:24-34.
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`The ʼ622 patent also describes how notwithstanding the advent of instant
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`text messages, at the time of the claimed inventions there was no similarly
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`convenient analog to leaving an instant voice message over a packet-switched
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`network. EX1001, 2:8-46. Rather, “conventionally, leaving a voice message
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`involves dialing the recipient’s telephone number—without knowing whether the
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`recipient will answer—waiting for the connection to be established, speaking to
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`an operator or navigating through a menu of options, listening to a greeting
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`message, and recording the message for later pickup by the recipient. In that
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`message, the user must typically identify … herself in order for the recipient to
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`return the call.” EX1001, 2:23-33.
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`The ʼ622 patent solved this example technical problem (among others). The
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`’622 patent describes how a user- accessible client can be configured for instant
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`voice messaging using a direct communication over a packet-switched network
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`(e.g., through an Ethernet card). EX1001, 12:4-50. Client devices can be
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`configured to “listen[] to the input audio device 212,” “record[] the user’s speech
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`into a digitized audio file 210 (i.e., instant voice message) stored on the IVM client
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`208,” and “transmit[] the digitized audio file 210” as packetized data (e.g., using
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`TCP/IP) over a packet-switched network (e.g., network 204) “to the local IVM
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`server 202.” EX1001, 7:53-8:39, Fig. 2.
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`The Abstract of the ’622 patent summarizes the technical disclosure:
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`Methods, systems and programs for instant voice messaging over a packet-
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`switched network are provided. A method for instant voice messaging may
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`comprise receiving an instant voice message having one or more recipients,
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`delivering the instant voice message to the one or more recipients over a packet-
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`switched network, temporarily storing the instant voice message if a recipient is
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`unavailable; and delivering the stored instant voice message to the recipient once
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`the recipient becomes available.
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`EX1001, Abstract (emphasis added).
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`An exemplary embodiment is illustrated in Figure 2, reproduced below.
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`4
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`U.S. Patent No. 8,724,622
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`Local instant voice messaging (IVM) server 202 provides the core
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`functionality for enabling instant voice messaging with public switched telephone
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`network support. EX. 1001 6:50-55. Local IVM server 202 provides instant voice
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`messaging to IVM clients 206, 208, as well as support for instant voice messaging
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`for PSTN legacy telephone 110. EX. 1001; 6:57-61. Local packet-switched IP
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`network 204 interconnects IVM clients 206, 208, and the legacy telephone 110 to
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`the local IVM server 202, as well as connecting the local IVM server 202 to the local
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`IP network 204. EX. 1001; 6:61-7:2. The exemplary IVM client is a voice over
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`Internet Protocol (VoIP) softphone. A microphone 212 is connected to the IVM
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`client 208 an enables the recording of an instant voice message into an audio file 210
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`for transmission to the local IVM server 202 over the network 204. An input device
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`218, such as a keyboard, trackball, or mouse, is connected to the IVM client 208 to
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`select one or more recipients that are to receive the recorded instant voice message.
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`Display device 216 is connected to the IVM client 208 to display instant voice
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`messages recorded or received by a user of the IVM client 208. An audio device
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`214, such as an external speaker, is connected to the IVM client 208 to play received
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`instant voice messages. (EX. 1001; 7:3-22). Legacy telephone 110 is connected to a
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`legacy switch 112, which is further connected to a media gateway 114, which
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`converts audio signal carried over PSTN to packets for transmission over a packet
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`switched IP network, thereby interconnecting the legacy telephone 110 via the
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`network 204 to the local IVM server 202, and providing IVM services to the legacy
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`telephone 110. (EX. 1001; 7:39-52).
`C. The Challenged Claims of the ’622 Patent Recite a System for
`Instant Voice Messaging over a Packet-Switched Network.
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`The challenged claims in the Petition are independent claim 1 and its
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`dependent claim 2; claim 9, which depends from independent claim 3; and claims
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`36 and 37, which depend ultimately from independent claim 27. The challenged
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`claims and their respective base claims are reproduced below for the convenience
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`of the Board:
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`1. A system comprising: a network interface connected to a packet-switched
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`network; a messaging system communicating with a plurality of instant voice
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`message client systems via the network interface; a communication platform
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`system maintaining connection information for each of the plurality of instant
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`voice message client systems indicating whether there is a current connection to
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`each of the plurality of instant voice message client systems; and a user database
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`6
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`IPR2019-01558
`U.S. Patent No. 8,724,622
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`storing user records identifying users of the plurality of instant voice message
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`client systems, wherein each of the user records includes a user name, a password
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`and a list of other users selected by a user.
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`2. The system according to claim 1, wherein at least part of each of the user records
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`is encrypted.
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`3. A system comprising: a network interface connected to a packet-switched
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`network; a messaging system communicating with a plurality of instant voice
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`message client systems via the network interface; and a communication platform
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`system maintaining connection information for each of the plurality of instant
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`voice message client systems indicating whether there is a current connection to
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`each of the plurality of instant voice message client systems, wherein the
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`messaging system receives an instant voice message from one of the plurality of
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`instant voice message client systems, and wherein the instant voice message
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`includes an object field including a digitized audio file.
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`9. The system according to claim 3, wherein the communication platform
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`system assigns an IP address to each of the instant voice message client systems
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`when the communication platform receives a connection request from each of the
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`instant voice message client systems.
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`IPR2019-01558
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`27. A system comprising: a client device; a network interface coupled to
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`the client device and connecting the client device to a packet-switched network;
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`and an instant voice messaging application installed on the client device, wherein
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`the instant voice messaging application includes a client platform system for
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`generating an instant voice message and a messaging system for transmitting the
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`instant voice message over the packet-switched network via the network interface,
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`wherein the instant voice messaging application includes a document handler
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`system for attaching one or more files to the instant voice message.
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`
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`36. The system according to claim 27, wherein the instant voice message
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`application communicates in an intercom mode when a recipient of the instant
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`voice message is currently available to receive the instant voice message and
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`communicates in a record mode when the recipient of the instant voice message
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`is currently unavailable to receive the instant voice message.
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`
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`37. The system according to claim 36, wherein the instant voice message
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`application utilizes the intercom mode as a default communication mode.
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`D.
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`Prosecution History of the ’622 Patent
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`The ’622 patent issued on May 13, 2014, from United States Patent
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`Application No. 13/546,673, filed on July 11, 2012 (the “’673 Application”),
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`claiming continuation priority to U.S. Patent Application NO. 12/398,063, filed
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`March 4, 2009, now U.S. Patent No. 8,243,723, which is a continuation of U.S.
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`8
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`IPR2019-01558
`U.S. Patent No. 8,724,622
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`Patent Application No. 10/740,030, filed December 18, 2003, now U.S. Patent No.
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`7,535,890. The ’673 Application was filed with 1 claim. (Ex. 1002; p. 771). A Non-
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`Final Office Action dated June 5, 2013, provided a non-statutory double patenting
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`rejection over a related case, and rejected the claim under 35 U.S.C. 102(e) as being
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`anticipated by U.S. Patent No. 7,372,826 (Dahod). (Id. at 691). An Amendment filed
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`November 5, 2013, canceled the pending claim, and introduced 31 new claims,
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`including two independent claims (Id. at 660-666).
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`A Final Office Action rejected the claims based on nonstatutory double
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`patenting over claims of U.S. Patent No. 7,535,890, and again relied on Dahod for a
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`rejection under 35 U.S.C. 102(e), as well as rejecting dependent claims under 35
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`U.S.C. 103 based on combinations of Dahod with U.S. Patent Publication
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`2004/0223599 (Bear), U.S. Patent Publication No. 2005/0117591 (Hurtta), and U.S.
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`Patent Publication NO. 2013/0279681 (Weiner). Certain dependent claims were
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`identified as reciting allowable subject matter. (Id. at 645-651). In response, an
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`Amendment After Final was filed on February 28, 2014, incorporating allowable
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`subject matter into independent claims, and providing a terminal disclaimer. (Id. at
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`602-631). A Notice of Allowance was issued on March 25, 2014, with reasons for
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`allowance providing:
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`IPR2019-01558
`U.S. Patent No. 8,724,622
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`Id. at 588-593. The issue fee was paid on March 25, 2019, and he ‘622 Patent issued
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`on May 13, 2014.
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`III. RELATED PROCEEDINGS
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`The following proceedings are currently pending cases concerning U.S. Pat.
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`No. 8,724,622 (EX1001).
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`Case Caption
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`Number
`
`District
`
`Filed
`
`Facebook v. Uniloc 2017, LLC
`
`19-2159
`
`CAFC
`
`Jul. 16, 2019
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`Apple, Inc. v. Uniloc 2017 LLC
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`19-2160
`
`CAFC
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`Jul. 16, 2019
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`Uniloc 2017, LLC v. Facebook, LLC
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`19-2162
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`CAFC
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`Jul. 16, 2019
`
`Uniloc 2017 LLC v. Samsung
`Electronics America
`
`Microsoft Corporation v. Uniloc
`2017 LLC
`
`Microsoft Corporation v. Uniloc
`2017 LLC
`
`Uniloc USA, Inc. et al v. Kik
`Interactive, Inc.
`
`Uniloc USA, Inc. et al v. Google,
`LLC
`
`Uniloc USA, Inc. et al v. Google,
`LLC
`
`19-2165
`
`CAFC
`
`Jul. 17, 2019
`
`IPR2019-01558 PTAB
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`Sep. 13, 2019
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`IPR2019-01559
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`PTAB
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`Sep. 13, 2019
`
`2-17-cv-00347
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`EDTX Apr. 21, 2017
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`2-17-cv-00231 EDTX Mar. 26, 2017
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`2-17-cv-00224
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`EDTX Mar. 22, 2017
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`10
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`
`
`
`
`Case Caption
`
`Uniloc USA, Inc. et al v. Google,
`LLC
`
`Uniloc USA, Inc. et al v. HTC
`America, In
`
`Uniloc USA, Inc. et al v. HTC
`America, In
`
`Uniloc USA, Inc. et al v. Motorola
`Mobility LLC
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`Uniloc USA, Inc. et al v. ZTE (USA)
`Inc. et a
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`IPR2019-01558
`U.S. Patent No. 8,724,622
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`Number
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`District
`
`Filed
`
`2-17-cv-0021
`
`EDTX Mar. 20, 2017
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`2-16-cv-00989
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`EDTX
`
`Sep. 6, 2016
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`2-16-cv-00991
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`EDTX
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`Sep. 6, 2016
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`2-16-cv-00992
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`EDTX
`
`Sep. 6, 2016
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`2-16-cv-00993
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`EDTX
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`Sep. 6, 2016
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`Uniloc USA, Inc. et al v. Avaya Inc.
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`2-16-cv-00777
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`EDTX
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`Jul. 15, 2016
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`Uniloc USA, Inc. et al v. Facebook,
`Inc.
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`Uniloc USA, Inc. et al v. Sony
`Interactive Entertainment LLC
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`2-16-cv-00728
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`EDTX
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`Jul. 5, 2016
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`2-16-cv-00732
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`EDTX
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`Jul. 5, 2016
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`Uniloc USA, Inc. et al v. Snap Inc.
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`2-16-cv-00696
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`EDTX
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`Jun. 30, 2016
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`Uniloc USA, Inc. et al v. Apple Inc.
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`2-16-cv-00638
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`EDTX
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`Jun. 14, 2016
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`Uniloc USA, Inc. et al v. Samsung
`Electronics America, Inc.
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`Uniloc USA, Inc. et al v. WhatsApp,
`Inc
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`2-16-cv-00642
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`EDTX
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`Jun. 14, 2016
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`2-16-cv-0064
`
`EDTX
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`Jun. 14, 2016
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`IV. LEVEL OF ORDINARY SKILL IN THE ART
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`The Petition proposes a level of ordinary skill in the art of at least a bachelor’s
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`degree in computer science, computer engineering, or electrical engineering, with at
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`least two years of experience in the development and operation of network
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`communication systems. (Petition, p. 9).
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`Petitioner’s proposed level of ordinary skill in the art is improper because it
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`lacks an upper bound in both the factor of educational achievement and the factor of
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`work experience. Notwithstanding the defective nature of Petitioner’s proposed
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`level of ordinary skill in the art, at this time, Patent Owner does not provide its own
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`definition because, even applying the definitions proposed in the Petition, Petitioner
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`has not met its burden.
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`V. THE PETITION IMPROPERLY CHALLENGES THE CLAIMS
`BASED ON ASSERTED ART CUMULATIVE OF PRIOR ART
`EVALUATED DURING PROSECUTION
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`It is clear under the applicable standards of Becton, Dickinson and Co. v. B.
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`Braun Melsungen AG, IPR2017-01586, Paper No. 8 (2017), that the Board should
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`decline to exercise its discretion to institute Inter Partes Review based on the prior
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`art relied upon in the Petition. The Board stated in Becton, Dickinson that:
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`In evaluating whether to exercise our discretion when the same or
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`substantially the same prior art or arguments previously were
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`presented to the Office under section 325(d), we have weighed
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`some common non-exclusive factors, such as: (a) the similarities
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`and material differences between the asserted art and the prior art
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`involved during examination; (b) the cumulative nature of the
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`asserted art and the prior art evaluated during examination; (c) the
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`extent
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`to which
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`the asserted art was evaluated during
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`examination, including whether the prior art was the basis for
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`rejection; (d) the extent of the overlap between the arguments
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`made during examination and the manner in which Petitioner
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`relies on the prior art or Patent Owner distinguishes the prior art;
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`(e) whether Petitioner has pointed out sufficiently how the
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`Examiner erred in its evaluation of the asserted prior art; and (f)
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`the extent to which additional evidence and facts presented in the
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`Petition warrant reconsideration of the prior art or arguments.”
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`Id. at 17-18 (emphasis in original).
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`The Petition fails to sufficiently address the Becton, Dickinson, which at a
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`minimum would require comparing the art asserted in this Petition with the art
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`considered by the Examiner during prosecution. At best, the Petition summarily
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`asserts that none of the references presented in the Petition were considered during
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`prosecution, and that “substantially the same prior art or arguments” were not
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`presented. Absent from the Petition is any analysis, for example, of any alleged
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`distinctions between Zydney and Shinder, on the one hand, and any of the four
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`references relied upon by the Examiner in presenting rejections of certain claims
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`during prosecution. Further, the Petition provides no analysis as to why the
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`references asserted in the Petition are not redundant as to the references considered
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`by the Examiner during prosecution. Notably, one Petition challenging claims of
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`the ’622 Patent has already been denied institution as relying on references
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`including one of the same references relied on by the Examiner during
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`prosecution. IPR2017-00224, Paper No. 7, p. 7 (5/25/2017).
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`As to the first Becton, Dickinson factor—i.e., the similarities and material
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`differences between the asserted art and the prior art asserted during
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`examination—Petitioner is completely silent as to the content of the prior art
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`asserted during examination. In fact, the references of record are clearly pertinent
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`13
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`to Zydney. For example, the Petition touts that Zydney allegedly teaches a real
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`time intercom mode and a mode in which a voice recording is stored for delivery.
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`(Pet., pp. 53-54). These alleged teachings are clearly redundant of Dahod, which
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`discloses permitting users to “interact in walkie-talkie mode” (Ex. 2001; 8:43-46)
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`and voice instant messaging that permits a user to record a message, which is
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`automatically provided to recipients (Ex. 2001; 9:31-38).
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`Thus, as to the first factor, the similarities and asserted differences between
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`the asserted art and the art considered during prosecution, the principal asserted
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`reference, Zydney, the Petition does not identify any such differences. As to the
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`second factor, the cumulative nature of the asserted art and the art cited during
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`examination, as pointed out above, the Petitioner provides no identification of any
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`particular teachings of Zydney that are not cumulative of the references considered
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`by the Examiner during prosecution. As to the third factor, the extent to which
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`the asserted art was considered by the Examiner, as noted above, multiple
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`references were relied on by the Examiner in asserting rejections of certain claims,
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`other than those that issued in the ’622 patent. Petitioner has provided no basis for
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`concluding that the references asserted in the Petition are not cumulative of the art
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`relied upon by the Examiner during prosecution. Given these numerous factors
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`militating against institution, the Board should decline institution.
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`VI. THE PETITION IS YET ANOTHER REDUNDANT PETITION,
`IMPROPERLY CHALLENGING CLAIMS BASED ON PRIOR ART
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`14
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`AS TO WHICH THE BOARD HAS ALREADY DENIED
`INSTITUTION.
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`IPR2019-01558
`U.S. Patent No. 8,724,622
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`The present Petition, and simultaneously filed IPR2019-1559, are the latest
`
`in a long series of Petitions challenging claims of the ’622 patent and of related
`
`patents. Numerous of those Petitions have been denied institution as the Board
`
`exercised its discretion under either 35 U.S.C. 314 or 35 U.S.C. 325(d) to deny
`
`institution of redundant and overlapping petitions. Petitioner here, rather than
`
`approach this issue with candor, chose to omit at least four of those Petitions,
`
`challenging claims of the ’622 patent, from its table of “prior third-party IPRs” on
`
`page 3 of the Petition, thereby misleading the Board as to the sheer level of
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`redundancy of the present petition. In order to correct the record, Patent Owner
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`will summarize four of those denied Petitions.
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`IPR2017-00223, filed by Apple Inc., challenged claims 3, 4, 6–8, 10–19,
`
`21–23, and 38, based on the following references: Vuori, US 2002/0146097;
`
`Holtzberg, US 6,625,261; Väänänen, US 7,218,919; and European
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`Telecommunications Standards Institute (ETSI), Technical Specification (TS) 123
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`040 v3.5.0 (2000-07): Universal Mobile Telecommunications System (UMTS);
`
`Technical realization of the Short Message Service (SMS) (“SMSS”). The Board
`
`denied institution as the Petitioner failed to demonstrate a reasonable likelihood
`
`of prevailing in showing the unpatentability of any challenged claims. IPR2017-
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`00223, Paper No. 7, p. 2 (5/25/2017).
`
`IPR2017-00224, filed by Apple Inc., also challenged claims 3, 4, 6–8, 10–
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`19, 21–23, and 38, based on Hogan US 5,619,554; Logan US 5,732,216; and
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`15
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`Dahod, US 2004/0022208. The Board denied institution under Section 325(d),
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`concluding that substantially the same arguments regarding the unpatentability of
`
`the claimed subject matter over the Dahod application were presented previously
`
`to the Office with respect to the Dahod patent. IPR2017-00224, Paper No. 7, p. 7
`
`(5/25/2017).
`
`IPR2017-01804, filed by Apple Inc., challenging claims 3, 6–8, 10, 11, 13–
`
`23, 27–35, 38, and 39 was denied institution under 35 U.S.C. 314 and 37 C.F.R.
`
`42.108, “based on the complete identity of prior art and arguments to those
`
`presented to the Office in the ’1667 IPR.” IPR 2017-01804, Paper 8, p. 5
`
`(1/19/2018). The Board warned that “[i]f we were to institute trial at this time,
`
`Patent Owner would be required to participate in duplicative proceedings with
`
`different petitioners, each having its own counsel.” Id. at 6.
`
`In IPR2017-01805, filed by Apple Inc., challenging claims 4, 5, 12, and 24–
`
`26 of the ‘622 Patent, institution was similarly denied by the Board “based on the
`
`complete identity of prior art and arguments to those presented to the Office in the
`
`’1668 IPR.” IPR2017-01805, Paper No. 9, p. 5 (1/19/2018).
`
`It is telling that the Petition makes no mention of these four Petitions that
`
`likewise challenged claims of the ’622 Patent and yet were denied institution by
`
`the Board. Petitioner’s lack of candor toward the Board alone is sufficient reason
`
`to deny institution here.
`
`Moreover, the present Petition relies on art that has already been considered
`
`by the Board in relation to the ’622 patent. Multiple prior petitions (including
`
`16
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`
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`certain ones Petitioner identified in its table of “prior third-party IPRs”) relied
`
`upon the Zydney reference—i.e., the same principal reference asserted here.
`
`Indeed, six of the prior Petitions relied on Zydney. Notably, Petitioner here claims
`
`1, 2, 9, 36 and 37 based on Zydney, together with various combinations of
`
`secondary references, despite the fact that the Board denied institution of
`
`challenges to each of these very same claims based on Zydney in IPR2017-02080
`
`and IPR2017-02081.
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`Petitioner attempts to justify its redundant challenge of the claims based on
`
`Zydney by stating that it presents this reference “in a different light.” (Pet., p. 4)
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`However, Petitioner leaves the Board and Patent Owner guessing as to what that
`
`alleged “different light” might be. Petitioner, evidently conceding that its reliance
`
`on an unspecified “different light” is insufficient to justify consideration of the
`
`present redundant Petition, further attempts to argue that this Petition merits
`
`institution on the grounds that different secondary references are presented in
`
`combination with the previously-asserted Zydney reference as to these claims.
`
`However, the consistently asserted secondary reference, Shinder’s “Computer
`
`Networking Essentials,” describes itself as directed to “professionals who are
`
`beginning training in the networking industry and those who need a review of
`
`basic concepts.” (Ex. 1005, p. xxii). Such a “review of basic concepts” would not
`
`provide anything other than general background information that would be
`
`provided by an expert declarant; such general information in the nature of a
`
`“review of basic concepts,” combined with prior art that did not previously
`
`17
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`IPR2019-01558
`U.S. Patent No. 8,724,622
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`warrant institution, does not justify the burden on Patent Owner to defend yet
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`another challenge to the same claims based on the same principal reference.
`
`The Board’s precedential decision in General Plastic Co., Ltd. v. Canon
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`Kabushiki Kaisha, IPR2016-01357 (PTAB Sept. 6, 2017) (Paper 19)
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`(precedential) provides a set of non-exclusive factors to determine whether a
`
`petitioner’s filing of follow-on petitions has caused “undue equities and prejudices
`
`to Patent Owner.” Slip. op at 16-17. The Board directs parties to those factors in
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`the Consolidated Office Patent Trial Practice Guide (November 2019) (“Practice
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`Guide”) Here, those factors militate in favor of the Board exercising its discretion
`
`under 35 U.S.C. 314(a) and 37 C.F.R. 42.108(a) to deny institution.
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`The non-exclusive factors are:
`
`1. whether the same petitioner previously filed a petition directed to the
`
`same claims of the same patent;
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`2. whether at the time of filing of the first petition the petitioner knew of the
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`prior art asserted in the second petition or should have known of it;
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`3. whether at the time of filing of the second petition the petitioner already
`
`received the patent owner’s preliminary response to the first petition or received
`
`the Board’s decision on whether to institute review in the first petition;
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`4. the length of time that elapsed between the time the petitioner learned of
`
`the prior art asserted in the second petition and the filing of the second petition;
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`18
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`5. whether the petitioner provides adequate explanation for the time elapsed
`
`between the filings of multiple petitions directed to the same claims of the same
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`U.S. Patent No. 8,724,622
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`patent;
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`6. the finite resources of the Board; and
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`7. the requirement under 35 U.S.C. 316(a) (11) to issue a final determination
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`not later than 1 year after the date on which the Director notices institution of
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`review.
`
`Here, the Petitioner already had the benefit of the Patent Owner’s Preliminary
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`Responses and Institution Decisions in at least twelve different Petitions relating to
`
`the ’622 patent, as well as Final Written Decisions in at least four different Petitions.
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`Despite the benefit of these numerous analyses, Petitioner here relies on precisely
`
`the same principal reference, Zydney, that was previously relied upon in challenges
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`of precisely the same claims, in two Petitions that were denied institution.
`
`As a further indication of the redundancy of the present Petition, Petitioner
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`employed the same declarant in the present petition, Tal Lavian, as Apple Inc.
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`employed in at least IPR2018-00579 challenging claims of the ’622 patent.
`
`Petitioner not only relies on the very same prior art, Zydney, previously presented
`
`to the Board, but relies on the very same declarant.
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`Moreover, Petitioner fails to provide an explanation of why the finite resources
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`of the Board would be efficiently used in yet again considering whether Zydney
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`renders the present claims obvious in combination only with Shinder’s disclosure of
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`“a review of basic concepts.”
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`19
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`IPR2019-01558
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`In short, Petitioner seeks to rely on a reference, Zydney, that has already been
`
`determined by the Board to be insufficient to merit institution, and attempts to
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`correct for the deficiencies of Zydney using a secondary reference that provides
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`nothing more than “a review of basic concepts,” with an analysis by a declarant who
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`has alrea
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