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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`IPR2019-01559
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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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`{00253257;v1}
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`

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`IPR2019-01559
`U.S. Patent No. 8,724,622
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`Table of Contents
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`
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`I.
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`INTRODUCTION
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`II.
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`THE ‘622 PATENT
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`Effective Filing Date of the ‘622 Patent
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`Overview of the ‘622 Patent
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`Challenged Claim 5 of the ’622 Patent Recites a System for Instant
`Voice Messaging over a Packet-Switched Network.
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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.
`
`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. THE PETITION SHOULD BE DENIED FOR FAILING TO
`JUSTIFY FILING MULTIPLE, CONCURRENT PETITIONS
`ON THE ’622 PATENT
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`VIII. 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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`IX. PETITIONER DOES NOT PROVE A REASONABLE
`LIKELIHOOD OF UNPATENTABILITY FOR THE
`CHALLENGED CLAIM
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`1
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`2
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`2
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`2
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`6
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`7
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`9
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`10
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`11
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`13
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`18
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`20
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`22
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`22
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`Claim Construction
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`
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`The Petition fails to establish that it would be likely that a person of
`ordinary skill would combine Zydney with Griffin.
`23
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`ii
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`

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`IPR2019-01559
`U.S. Patent No. 8,724,622
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`No prima facie obviousness for “wherein the predetermined set of
`permitted actions includes at least one of a connection request, a
`disconnection request, a subscription request, an unsubscription
`request, a message transmission request, and a set status request” as
`recited in challenged dependent claim 5.
`26
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`X. CONCLUSION
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`
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`30
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`iii
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`

`

`
`EXHIBITS
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`IPR2019-01559
`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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`

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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”) in
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`IPR2019-01559.
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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, (3) failing to justify the filing
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`of multiple, concurrent petitions, and (3) as failing to meet the threshold burden of
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`proving there is a reasonable likelihood that the 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 the challenged ‘622 Patent claim. As a non-limiting example described in
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`more detail below, the Petition fails the all-elements-rule in not addressing every
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`feature of the challenged claim.
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`Accordingly, Uniloc respectfully requests that the Board decline institution of
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`trial on Claim 5 of the ‘622 Patent.
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`

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`IPR2019-01559
`U.S. Patent No. 8,724,622
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`
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`II. THE ‘622 PATENT
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` 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. 13/546,673,
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`which is a Continuation of U.S. Pat. App. No. 12/398,063, filed on March 4, 2009,
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`which is a Continuation of U.S. Pat. App. No. 10/740,030, filed on Dec. 18, 2003.
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`The earliest-filed parent application issued as the ’890 Patent. During prosecution
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`of the ’890 Patent, to which the ’622 Patent claims priority, the Applicant filed an
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`affidavit testifying it had a date of conception for the claims of the ’890 patent “prior
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`to August 15, 2003.”
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`The Petition does not contest that the effective filing date of the ‘622 Patent
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`is December 18, 2003 (Petition, p. 7).
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` Overview of the ‘622 Patent
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`The
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`’622 Patent
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`describes
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`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
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`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 telephone
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`terminal to another device 20 over the [public switched telephone network or] PSTN,
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`including another
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`telephone
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`terminal. During
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`the
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`telephone call, voice
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`communication takes place over that communication path.” EX1001, 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 IP
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`2
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`IPR2019-01559
`U.S. Patent No. 8,724,622
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`telephony or Internet telephony.” EX1001, 1:35-36. Because legacy circuit-switched
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`devices were unable to communicate directly over packet-switched networks, media
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`gateways were designed to receive circuit-switched signals and packetize them for
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`transmittal over packet-switched networks, and vice versa. EX1001, 1:62-2:7. The
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`conversion effected by media gateways highlights the fact that packetized data
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`carried over packet-switched networks is different from and is incompatible with an
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`audio signal carried over a dedicated circuit-switched network. EX1001, 1:24-34.
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`The ʼ622 Patent also describes how notwithstanding the advent of instant text
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`messages, at the time of the claimed inventions there was no similarly convenient
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`analog to leaving an instant voice message over a packet-switched network.
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`EX1001, 2:8-46. Rather, “conventionally, leaving a voice message involves dialing
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`the recipient’s telephone number—without knowing whether the recipient will
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`answer—waiting for the connection to be established, speaking to an operator or
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`navigating through a menu of options, listening to a greeting message, and recording
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`the message for later pickup by the recipient. In that message, the user must typically
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`identify … herself in order for the recipient to 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 (e.g.,
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`through an Ethernet card). EX1001, 12:4-50. Client devices can be configured to
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`“listen[] to the input audio device 212,” “record[] the user’s speech into a digitized
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`audio file 210 (i.e., instant voice message) stored on the IVM client 208,” and
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`“transmit[] the digitized audio file 210” as packetized data (e.g., using TCP/IP) over
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`a packet-switched network (e.g., network 204) “to the local IVM server 202.”
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`EX1001, 7:53-8:39, Fig. 2.
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`3
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`IPR2019-01559
`U.S. Patent No. 8,724,622
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`
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`The Abstract of the 622 Patent summarizes the technical disclosure: Methods,
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`systems and programs for instant voice messaging over a packet-switched network
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`are provided. A method for instant voice messaging may comprise receiving an
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`instant voice message having
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`one or more recipients, delivering the instant voice message to the one or more
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`recipients over a packet-switched network, temporarily storing the instant voice
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`message if a recipient is unavailable; and delivering the stored instant voice message
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`to the recipient once the recipient becomes available.
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`EX1001, Abstract (emphasis added).
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` An example system is illustrated in Figure 2 (reproduced below).
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`
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`4
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`IPR2019-01559
`U.S. Patent No. 8,724,622
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`
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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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`5
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`IPR2019-01559
`U.S. Patent No. 8,724,622
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`
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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.
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`
`
` Challenged Claim 5 of the ’622 Patent Recites a System for
`Instant Voice Messaging over a Packet-Switched Network.
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`The challenged claim in the Petition is Claim 5, which depends directly from
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`Claim 4, which in turn depends from Independent Claim 3. Challenged claim 5 and
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`the claims from which it depends are reproduced below for the convenience of the
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`Board:
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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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`6
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`

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`IPR2019-01559
`U.S. Patent No. 8,724,622
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`
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`system maintaining connection information for each of the plurality of instant voice
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`message client systems indicating whether there is a current connection to each of
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`the plurality of instant voice message client systems, wherein the messaging system
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`receives an instant voice message from one of the plurality of instant voice message
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`client systems, and wherein the instant voice message includes an object field
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`including a digitized audio file.
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`4. The system according to claim 3, wherein the instant voice message
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`includes an action field identifying one of a predetermined set of permitted actions
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`requested by the user.
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`5. The system according to claim 4, wherein the predetermined set of
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`permitted actions includes at least one of a connection request, a disconnection
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`request, a subscription request, an unsubscription request, a message transmission
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`request, and a set status request.
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`
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`
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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.
`
`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-
`
`Final Office Action dated June 5, 2013, provided a non-statutory double patenting
`
`7
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`

`

`IPR2019-01559
`U.S. Patent No. 8,724,622
`
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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
`
`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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`
`
`8
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`

`

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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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`IPR2019-01559
`U.S. Patent No. 8,724,622
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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
`
`Number
`
`District
`
`Filed
`
`Facebook v. Uniloc 2017, LLC
`
`19-2159
`
`CAFC
`
`Jul. 16, 2019
`
`Apple, Inc. v. Uniloc 2017 LLC
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`19-2160
`
`CAFC
`
`Jul. 16, 2019
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`Uniloc 2017, LLC v. Facebook, LLC
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`19-2162
`
`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
`
`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
`
`19-2165
`
`CAFC
`
`Jul. 17, 2019
`
`IPR2019-01558 PTAB
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`Sep. 13, 2019
`
`IPR2019-01559
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`PTAB
`
`Sep. 13, 2019
`
`2-17-cv-00347
`
`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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`2-17-cv-0021
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`EDTX Mar. 20, 2017
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`2-16-cv-00989
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`EDTX
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`Sep. 6, 2016
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`2-16-cv-00991
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`EDTX
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`Sep. 6, 2016
`
`Uniloc USA, Inc. et al v. Motorola
`Mobility LLC
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`2-16-cv-00992
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`EDTX
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`Sep. 6, 2016
`
`9
`
`

`

`
`
`Case Caption
`
`Uniloc USA, Inc. et al v. ZTE (USA)
`Inc. et a
`
`IPR2019-01559
`U.S. Patent No. 8,724,622
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`Number
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`District
`
`Filed
`
`2-16-cv-00993
`
`EDTX
`
`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
`
`Jul. 15, 2016
`
`Uniloc USA, Inc. et al v. Facebook,
`Inc.
`
`Uniloc USA, Inc. et al v. Sony
`Interactive Entertainment LLC
`
`2-16-cv-00728
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`EDTX
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`Jul. 5, 2016
`
`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
`
`EDTX
`
`Jun. 14, 2016
`
`Uniloc USA, Inc. et al v. Samsung
`Electronics America, Inc.
`
`Uniloc USA, Inc. et al v. WhatsApp,
`Inc
`
`2-16-cv-00642
`
`EDTX
`
`Jun. 14, 2016
`
`2-16-cv-0064
`
`EDTX
`
`Jun. 14, 2016
`
`
`
`
`IV. LEVEL OF ORDINARY SKILL IN THE ART
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`
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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).
`
`
`
`Petitioner’s proposed level of ordinary skill in the art is improper because it
`
`lacks an upper bound in both the factor of educational achievement and the factor of
`
`work experience.
`
`Notwithstanding the defective nature of Petitioner’s proposed level of ordinary
`
`skill in the art, at this time, Patent Owner does not provide its own definition because,
`
`10
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`

`
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`even applying the definitions proposed in the Petition, Petitioner has not met its
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`IPR2019-01559
`U.S. Patent No. 8,724,622
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`burden.
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`V. THE PETITION IMPROPERLY CHALLENGES THE CLAIMS
`BASED ON ASSERTED ART CUMULATIVE OF PRIOR ART
`EVALUATED DURING PROSECUTION
`
`It is clear under the applicable standards of Becton, Dickinson and Co. v. B.
`
`Braun Melsungen AG, IPR2017-01586, Paper No. 8 (2017), that the Board should
`
`decline to exercise its discretion to institute Inter Partes Review based on the prior
`
`art relied upon in the Petition. The Board stated in Becton, Dickinson that:
`
`In evaluating whether to exercise our discretion when the same or
`
`substantially the same prior art or arguments previously were presented
`
`to the Office under section 325(d), we have weighed some common
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`non-exclusive factors, such as: (a) the similarities and material
`
`differences between the asserted art and the prior art involved during
`
`examination; (b) the cumulative nature of the asserted art and the prior
`
`art evaluated during examination; (c) the extent to which the asserted
`
`art was evaluated during examination, including whether the prior art
`
`was the basis for rejection; (d) the extent of the overlap between the
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`arguments made during examination and the manner in which
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`Petitioner relies on the prior art or Patent Owner distinguishes the prior
`
`art; (e) whether Petitioner has pointed out sufficiently how the
`
`Examiner erred in its evaluation of the asserted prior art; and (f) the
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`extent to which additional evidence and facts presented in the Petition
`
`warrant reconsideration of the prior art or arguments.”
`
`11
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`

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`IPR2019-01559
`U.S. Patent No. 8,724,622
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`
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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
`
`asserted in this Petition in relation to the prior art considered by the Examiner during
`
`prosecution. At best, the Petition summarily asserts that none of the references
`
`presented in the Petition were considered during prosecution, and that “substantially
`
`the same prior art or arguments” were not presented. Absent from the Petition is any
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`analysis, for example, of any alleged distinctions between Zydney and Griffin, on
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`the one hand, and any of the four references relied upon by the Examiner in
`
`presenting rejections of certain claims during prosecution. Further, the Petition
`
`provides no analysis as to why the references asserted in the Petition are not
`
`redundant as to the references considered by the Examiner during prosecution.
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`Notably, one Petition challenging claims of the ‘622 Patent has already been denied
`
`institution as relying on references including one of the same references relied on by
`
`the Examiner during 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
`
`differences between the asserted art and the prior art asserted during examination—
`
`Petitioner is completely silent as to the content of the prior art asserted during
`
`examination. In fact, the references of record are clearly pertinent to Zydney. For
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`example, the Petition touts that Zydney allegedly teaches fields that contain data
`
`identifying permitted actions, including certain requests. (Pet. 46-48). These alleged
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`teachings are clearly redundant of Dahod, which discloses, such as in a voice instant
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`messaging disclosure that includes a voice instant messaging application gateway in
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`Fig. 9, providing a voice instant message system providing “a voice command and
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`helper…that supplies, in voice menu form, much or all of the options that are
`
`12
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`

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`IPR2019-01559
`U.S. Patent No. 8,724,622
`
`
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`available to users of instant text messaging.” Ex. 2001; 10:36-39. Dahod discloses
`
`that a recipient of a voice instant message may have one or more options for handling
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`the VIM, such as saving, replying to or forwarding, which correspond to Zydney’s
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`alleged actions. Ex. 2001; 29-32. Dahod discloses voice instant messaging that
`
`permits a user to record a message, which is automatically provided to recipients Ex.
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`2001; 9:31-38.
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`Thus, as to the first factor, the similarities and asserted differences between
`
`the asserted art and the art considered during prosecution, the Petition does not
`
`identify any asserted differences between Zydney and Dahod, or any differences
`
`between Griffin and Dahod. As to the second factor, the cumulative nature of the
`
`asserted art and the art cited during examination, as pointed out above, the Petitioner
`
`provides no identification of any particular teachings of Zydney that are not
`
`cumulative of the references considered by the Examiner during prosecution.
`
`Moreover, as noted above, Zydney is cumulative of Dahod at least as disclosing a
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`voice instant messaging system providing for a menu of options for the recipient of
`
`a voice instant message. As to the third factor, the extent to which the asserted art
`
`was considered by the Examiner, as noted above, multiple references were relied on
`
`by the Examiner in asserting rejections of certain claims, other than those that issued
`
`in the ‘622 Patent. Moreover, Petitioner has provided no basis for concluding that
`
`the references asserted in the Petition are not cumulative of the art relied upon by
`
`the Examiner during prosecution. Given these numerous factors militating against
`
`institution, the Board should decline institution.
`
`
`VI. THE PETITION IS YET ANOTHER REDUNDANT PETITION,
`IMPROPERLY CHALLENGING CLAIMS BASED ON PRIOR ART
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`13
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`IPR2019-01559
`U.S. Patent No. 8,724,622
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`
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`AS TO WHICH THE BOARD HAS ALREADY DENIED
`INSTITUTION.
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`The present Petition, and simultaneously filed IPR2019-1558, are the latest in
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`a long series of Petitions challenging claims of the ‘622 Patent and of related patents.
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`Numerous of those Petitions have been denied institution as the Board exercised its
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`discretion under either 35 U.S.C. 314 or 35 U.S.C. 325(d) to deny institution of
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`redundant and overlapping petitions. Petitioner here, rather than approach this issue
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`with candor, chose to omit at least four of those Petitions, challenging claims of the
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`‘622 Patent, from its table of “prior third-party IPRs” on page 3 of the Petition,
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`thereby misleading the Board as to the sheer level of redundancy of the present
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`petition. In order to correct the record, Patent Owner will summarize four of those
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`denied Petitions.
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`IPR2017-00223, filed by Apple Inc., challenged claims 3, 4, 6–8, 10–19, 21–
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`23, and 38, based on the following references: Vuori, US 2002/0146097; Holtzberg,
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`US 6,625,261; Väänänen, US 7,218,919; and European Telecommunications
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`Standards Institute (ETSI), Technical Specification (TS) 123 040 v3.5.0 (2000-07):
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`Universal Mobile Telecommunications System (UMTS); Technical realization of the
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`Short Message Service (SMS) (“SMSS”). The Board denied institution as the
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`Petitioner failed to demonstrate a reasonable likelihood of prevailing in showing the
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`unpatentability of any challenged claims. IPR2017-00223, Paper No. 7, p. 2
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`(5/25/2017).
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`IPR2017-00224, filed by Apple Inc., also challenged claims 3, 4, 6–8, 10–19,
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`21–23, and 38, based on Hogan US 5,619,554; Logan US 5,732,216; and Dahod, US
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`2004/0022208. The Board denied institution under Section 325(d), concluding that
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`substantially the same arguments regarding the unpatentability of the claimed
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`IPR2019-01559
`U.S. Patent No. 8,724,622
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`
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`subject matter over the Dahod application were presented previously to the Office
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`with respect to the Dahod patent. IPR2017-00224, Paper No. 7, p. 7 (5/25/2017).
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`IPR2017-01804, filed by Apple Inc., challenging claims 3, 6–8, 10, 11, 13–
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`23, 27–35, 38, and 39 was denied institution under 35 U.S.C. 314 and 37 C.F.R.
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`42.108, “based on the complete identity of prior art and arguments to those presented
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`to the Office in the ’1667 IPR.” IPR 2017-01804, Paper 8, p. 5 (1/19/2018). The
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`Board warned that “[i]f we were to institute trial at this time, Patent Owner would
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`be required to participate in duplicative proceedings with different petitioners, each
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`having its own counsel.” Id. at 6.
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`In IPR2017-01805, filed by Apple Inc., challenging claims 4, 5, 12, and 24–
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`26 of the ‘622 Patent, institution was similarly denied by the Board “based on the
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`complete identity of prior art and arguments to those presented to the Office in the
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`’1668 IPR.” IPR2017-01805, Paper No. 9, p. 5 (1/19/2018).
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`It is telling that the Petition makes no mention of these four Petitions that
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`likewise challenged claims of the ‘622 Patent and yet were denied institution by the
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`Board. Petitioner’s lack of candor toward the Board alone is sufficient reason to
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`deny institution here.
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`
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` Moreover, the present Petition relies on art that has already been considered
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`by the Board in relation to the ‘622 Patent. Multiple prior petitions (including certain
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`ones Petitioner identified in its table of “prior third-party IPRs”) relied upon the
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`Zydney reference—i.e., the same principal reference asserted here. Indeed, six of the
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`prior Petitions relied on Zydney. Notably, Petitioner here challenges claim 5 based
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`on Zydney, together with a secondary reference, despite the fact that the Board
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`denied institution of a challenge to this very same claim based on Zydney in
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`IPR2017-02080.
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`IPR2019-01559
`U.S. Patent No. 8,724,622
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`
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`Petitioner attempts to justify its redundant challenge of the claims based on
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`Zydney by stating that it presents this reference “in a different light.” (Pet., 4).
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`However, Petitioner leaves the Board and Patent Owner guiessing as to what that
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`alleged “different light” might be. Petitioner, evidently conceding that its reliance
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`on an unspecified “different light” is insufficient to justify consideration of the
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`present redundant Petition, further attempts to argue that this Petition merits
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`institution on the grounds that a different secondary reference is presented in
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`combination with the previously-asserted Zydney reference as to claim 5. these
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`claims. However, the secondary reference, Griffin, describes itself in the field of a
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`novel technique of managing the display of real-time conversations on limited
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`display access. Ex. 1008; 1:9-12. Griffin repeatedly emphasizes its application for a
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`“limited display area,” Ex. 1008; 1:65-67, “small screen friendly,” and “suitable for
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`small screens. Ex. 1008; 2:1-8. The addition of a prior art reference providing
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`techniques configured for small screens, when the ‘622 Patent is not configured for
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`small screens, combined with prior art that did not previously warrant institution,
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`does not justify the burden on Patent Owner to defend yet another challenge to the
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`same claims based on the same principal reference.
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`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) (precedential)
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`provides a set of non-exclusive factors to determine whether a petitioner’s filing of
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`follow-on petitions has caused “undue equities and prejudices to Patent Owner.”
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`Slip. op at 16-17. The Board directs parties to those factors in the Consolidated
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`Office Patent Trial Practice Guide (November 2019) (“Practice Guide”) Here, those
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`factors militate in favor of the Board exercising its discretion under 35 U.S.C. 314(a)
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`and 37 C.F.R. 42.108(a) to deny institution.
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`16
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`IPR2019-01559
`U.S. Patent No. 8,724,622
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`
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`The non-exclusive factors are:
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`1. whether the same petitioner previously filed a petition directed to the same
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`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
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`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
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`the prior art asserted in the second petition and the filing of the second petition;
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`5. whether the petitioner provides adequate explanation for the time elapsed
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`between the filings of multiple petitions directed to the same claims of the same
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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 review.
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`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
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`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
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`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.
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`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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`17
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`IPR2019-01559
`U.S. Patent No. 8,724,622
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`
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`employed in at least IPR2018-00579 challenging claims of the ‘622 Patent.
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`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 Griffin’s disclosure
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`designed to solve problems associated with “limited display areas.”
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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 relates to the
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`irrelevant problem of “limited display areas,” with an analysis by a Declarant who
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`has already provided declarations as to the ‘622 Patent. This Petition is redundant,
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`and the Board is respectfully requested to exercise its discretion under 35 U.S.C.
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`314(a) and 37 C.F.R. 42.108(a) to deny institution.
`
`
`VII. THE PETITION SHOULD BE DENIED FOR FAILING TO JUSTIFY
`FILING MULTIPLE, CONCURRENT PETITIONS ON THE ’622
`PATENT
`
`An additional factor weighing in favor of denying the Petition is Petitioner’s
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`filing of two petitions on the ’622 patent at the same time, which places a substantial
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`and unnecessary burden on the Board and the Patent Owner, and raises fairness,
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`timing, and efficiency concerns. On the same day, Petitioner filed petitions on the
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`’622 patent asserting unpatentability of (1) claims 1, 2, 9, 36, and 37 in IPR2019-
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`18
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`

`
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`01558, and (2) claim 5 in IPR2019-01559. As the Board recognized in the July 2019
`
`Trial Practice Guide Update:
`
`IPR2019-01559
`U.S. Patent No. 8,724,622
`
`Based on the Board’s prior experience, one petition should be
`
`sufficient to challenge the claims of a patent in most situations. Two or
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`more petitions filed against the same patent at or about the same time
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`(e.g., before the first preliminary response by the patent owner) may
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`place a substantial and unnecessary burden on the Board and the patent
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`owner and could raise fairness, timing, and efficiency concerns. See 35
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`U.S.C. § 316(b). In addition, multiple petitions by a petitioner are not
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`necessary in the vast majority of cases. To date, a substantial majority
`
`of patents have been challenged with a single petition.
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`Trial Practice Guide Update, 26 (July 2019); Consolidated Trial Practice Guide, 59
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`(Nov. 2019).
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`This is not a “rare” case in which “more than one petition may be necessary,
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`including, for example, when the patent owner has asserted a large number of claims
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`in litigation or when there is a dispute about priority date requiring arguments under
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`multiple prior art references.”