Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 35
`Entered: September 6, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC., SNAP INC., FACEBOOK, INC., and WHATSAPP, INC.,
`Petitioner,
`v.
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-002211
`Patent 7,535,890 B2
`____________
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`
`BISK, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`1 Snap Inc., which filed a petition in Case IPR2017-01612, and Facebook,
`Inc. and WhatsApp, Inc., which filed a petition in Case IPR2017-01636,
`have been joined as petitioners in this case. Papers 14, 15.
`
`
`Tel: 571-272-7822
`
`Paper 35
`Entered: September 6, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC., SNAP INC., FACEBOOK, INC., and WHATSAPP, INC.,
`Petitioner,
`v.
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-002211
`Patent 7,535,890 B2
`____________
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`
`BISK, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`1 Snap Inc., which filed a petition in Case IPR2017-01612, and Facebook,
`Inc. and WhatsApp, Inc., which filed a petition in Case IPR2017-01636,
`have been joined as petitioners in this case. Papers 14, 15.
`
`
`
`IPR2017-00221
`Patent 7,535,890 B2
`
`INTRODUCTION
`Apple Inc. filed a Petition requesting inter partes review of claims 1–
`6, 14, 15, 17–20, 28, 29, 31–34, 40–43, 51–54, 62–65, and 68 (the
`“challenged claims”) of U.S. Patent No. 7,535,890 B2 (Ex. 1001, “the ’890
`patent”). Paper 2 (“Pet.”). Uniloc USA, Inc. and Uniloc Luxembourg S.A.
`(collectively, “Patent Owner”) filed a Preliminary Response. Paper 13
`(“Prelim. Resp.”). We instituted review as to all challenged claims. Paper 9
`(“Inst. Dec.”). Snap Inc., Facebook, Inc., and WhatsApp, Inc. (collectively,
`along with Apple Inc., “Petitioner”) were joined to this proceeding pursuant
`to our grant of petitions and motions for joinder filed in IPR2017-01612 and
`IPR2017-01635. See Papers 14, 15.
`Patent Owner filed a Request for Rehearing (Paper 34, “Request” or
`“Reh’g Req.”) of our Final Written Decision in which we determined that
`Petitioner had established, by a preponderance of the evidence, that the
`challenged claims are unpatentable (Paper 33 (“Final Dec.”)). Patent Owner
`contends that we misapprehended or overlooked both intrinsic and extrinsic
`evidence regarding the meaning of, and improperly construed, the claim
`terms “local network” and “external network.” Reh’g Req. 3–8. In addition,
`Patent Owner argues that based on these constructions, the Board incorrectly
`found that Malik disclosed these claim limitations. Id. at 8–10.
` “The burden of showing a decision should be modified lies with the
`party challenging the decision[,]” which party “must specifically identify all
`matters the party believes the Board misapprehended or overlooked, and the
`
`2
`
`
`
`IPR2017-00221
`Patent 7,535,890 B2
`place where each matter was previously addressed in a motion, an
`opposition, or a reply.” 37 C.F.R. § 42.71(d).
`For the reasons discussed below, Patent Owner’s Request is denied.
`
`ANALYSIS
`
`A. Background
`Petitioner requested, under 35 U.S.C. § 311, inter partes review of the
`challenged claims based on obviousness over several references, including
`Malik.2 Pet. The ’890 patent relates to “local and global instant VoIP
`[Voice over Internet Protocol] messaging over an IP network, such as the
`Internet[.]” Ex. 1001, 1:6–11.
`In the Final Written Decision, upon consideration of both parties’
`arguments and evidence, we determined that, as used by the ’890 patent, the
`terms “local network” and “external network” differ in terms of relative
`geographic scope, but do not require different architectures or levels of
`accessibility. Final Dec. 10–11.
`According to Patent Owner, in reaching this conclusion, we
`overlooked or misapprehended several pieces of evidence, including:
`(1) Figure 5 of the ’890 patent and its related discussion (Reh’g Req. 3–5);
`(2) claim differentiation based upon dependent claim 17 (id. at 5) and
`claims 14, 26, 27, 51, 60, and 61 (id.); (3) admissions of Petitioner’s expert
`(id. at 6); and (4) testimony of Patent Owner’s expert, William C. Easttom II
`(id. at 6–7). Patent Owner also argues that the Board’s construction leads to
`“further confusion as to the meaning of the claims.” Id. at 7–8. Patent
`
`
`2 U.S. Patent No. 7,123,695 B2 (filed Aug. 19, 2002) (issued Oct. 17, 2006).
`Ex. 1007.
`
`3
`
`
`
`IPR2017-00221
`Patent 7,535,890 B2
`Owner asserts that, instead, “‘local’ and ‘external’ refer to types – not
`geographic scope of networks.” Id. at 3.
`In addition, Patent Owner argues that under its proposed construction,
`Malik does not disclose these claim limitations. Id. at 8–10.
`
`B. Claim Construction
`We are not persuaded of error in our construction of the terms “local
`network” and “external network.”
`First, we do not agree that Figure 5 demonstrates that “geography
`cannot be the differentiator between ‘local’ and ‘external’ networks” as
`alleged by Patent Owner.” Reh’g Req. 3. As we explained in our Final
`Written Decision, we construed the two terms to be relative. Final Dec. 10–
`15. In other words, whether a network is “local” or “external” depends on
`the perspective of a particular device. We are not persuaded that Figure 5
`indicates otherwise. In Figure 5, two networks are labeled “local” (i.e.,
`network 204 and network 504), and one network (network 102) is labeled
`“Internet.” Ex. 1001, Fig. 5. From the perspective of IVM client 508,
`network 504 is local; however, from the perspective of IVM client 208,
`network 504 is external. This is consistent with the description of Figure 5,
`which states that IVM client 508 “may be located in a user’s residence and
`be connected to a local IP network 504,” which “can be a WiFi network or a
`local area network (i.e., LAN), which is also within the user’s residence.”
`Ex. 1001, 19:66–20:4. At the same time, the ’890 patent describes IVM
`client 508 as a “global IVM client.” Id. at 20:10–14. Therefore, we do not
`agree that our construction “yields a non-sensical understanding” of these
`terms. See Reh’g Req. 4.
`
`4
`
`
`
`IPR2017-00221
`Patent 7,535,890 B2
`Second, we do not agree that claim differentiation supports Patent
`Owner’s construction. According to Patent Owner, in reciting “wherein the
`external network is the Internet,” dependent claim 17 “provides further
`limitations on the type of an ‘external network’.” However, as discussed in
`our Final Written Decision, it is unclear what Patent Owner means when
`referring to “type” other than it means something other than just the relative
`locations of the networks. Final Dec. 11–13. It is unclear how claim 17, in
`reciting that the Internet is an external network, which both parties agree is
`true under any of the proposed constructions (see, e.g., id. at 10–11), adds
`anything to the understanding of the meaning of the term “external
`network.” Claim 17’s recitation, if anything, suggests that “external
`network” is not limited to the Internet. But it does not exclude the
`possibility that another LAN, such as network 504 shown in Figure 5, could
`be an external network relative to IVM client 208. This is consistent with
`Dr. Forys’s testimony. Ex. 1003 ¶ 69.
`Similarly, although several independent claims recite “an external
`network outside the local network,” while other independent claims merely
`recite “an external network,” we are not persuaded this difference supports
`Patent Owner’s position. To begin with, although arguing that the term
`“external network” must be broader than “outside the local network,” Patent
`Owner does not explain how, under its proposed construction, an external
`network could be within a local network. Moreover, “[i]t is not unusual that
`separate claims may define the invention using different terminology,
`especially where (as here) independent claims are involved.” Hormone
`Research Found. v. Genentech, Inc., 904 F.2d 1558, 1569 n.15 (Fed. Cir.
`1990). Notwithstanding the differences in terminology in the various
`
`5
`
`
`
`IPR2017-00221
`Patent 7,535,890 B2
`independent claims, we see no indication in the specification that the terms
`“local network” and “external network” include a “type” limitation as
`proposed by Patent Owner.
`Third, we are not persuaded that Petitioner’s expert agreed with Patent
`Owner’s proposed construction. Although Dr. Forys may have used the
`term “types” loosely to distinguish between local and external networks, we
`are not persuaded that he used that word in the same way Patent Owner is
`using it. See Reh’g Req. 6 (citing Ex. 1003 ¶ 56 (Dr. Forys stating that
`“[t]he variations among the independent claims are mostly related to
`different types of networks.”)). The word “type” is often used to distinguish
`things with different characteristics, and Patent Owner does not persuade us
`that, in the context of this case, the word references any particular
`characteristic of a network. Instead, we read Dr. Forys’s testimony as using
`the word “type” to distinguish between networks that differ solely based on
`the relative locations of the different networks. This is consistent with the
`rest of his testimony. See, e.g., Ex. 1003 ¶¶ 64–70 (Dr. Forys explaining his
`understanding of the difference between “external network” and “local
`network” to be solely based on the relative location of the networks).
`Fourth, as explained in our Final Written Decision, we give “little
`weight to” the quoted testimony of Mr. Easttom, in which he states that the
`terms are “analogous to the terms ‘private network’ and ‘public network’”
`because this testimony “is not explained or supported in any way.” Final
`Dec. 14 (quoting Ex. 2001 ¶ 24). We are not persuaded otherwise by Patent
`Owner’s quotation from the next paragraph of testimony in which Mr.
`Easttom discusses claim differentiation. Reh’g. Req. 6–7 (quoting Ex. 2001
`¶ 25 (“A POSA would understand from this explicit claim differentiation the
`
`6
`
`
`
`IPR2017-00221
`Patent 7,535,890 B2
`terms ‘local network’ and ‘external network’ invoke distinct connotations in
`the art concerning the type of network used.”).
`
`C. Obviousness
`Because, as explained above, we are not persuaded of error in our
`construction of the terms “local network” and “external network,” we do not
`further address Patent Owner’s argument that Malik fails to disclose the
`limitations under Patent Owner’s proposed construction. See Reh’g Req. 8–
`10.
`
`ORDER
`
`Accordingly, it is
`ORDERED that Patent Owner’s Request for Rehearing is denied.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`7
`
`
`
`IPR2017-00221
`Patent 7,535,890 B2
`
`
`
`PETITIONER:
`Jason D. Eisenberg
`Michael D. Specht
`Zhu He
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`jasone-PTAB@sternekessler.com
`mspecht-PTAB@sternekessler.com
`zhe-PTAB@skgf.com
`
`PATENT OWNER:
`Brett Mangrum
`Ryan Loveless
`ETHERIDGE LAW GROUP
`brett@etheridgelaw.com
`ryan@etheridgelaw.com
`
`Sean D. Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`
`
`
`
`
`8
`
`
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