Trials@uspto.gov
`571-272-7822
`
`
`Paper 32
`Entered: September 6, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., FACEBOOK, INC., and WHATSAPP, INC.,1
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-00222
`Patent 8,243,723 B2
`
`____________
`
`
`
`Before, JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`DECISION
`ON PETITIONER’S REQUEST FOR REHEARING
`37 C.F.R. § 42.71(d)
`
`
`1 Facebook, Inc. and WhatsApp, Inc. filed a petition and motion for joinder
`in IPR2017-01635, which we granted, and, thus, these entities are joined, as
`Petitioner, to this proceeding. Paper 12.
`
`
`571-272-7822
`
`
`Paper 32
`Entered: September 6, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., FACEBOOK, INC., and WHATSAPP, INC.,1
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-00222
`Patent 8,243,723 B2
`
`____________
`
`
`
`Before, JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`DECISION
`ON PETITIONER’S REQUEST FOR REHEARING
`37 C.F.R. § 42.71(d)
`
`
`1 Facebook, Inc. and WhatsApp, Inc. filed a petition and motion for joinder
`in IPR2017-01635, which we granted, and, thus, these entities are joined, as
`Petitioner, to this proceeding. Paper 12.
`
`
`
`IPR2017-00222
`Patent 8,243,723 B2
`
`
`INTRODUCTION
`I.
`On May 23, 2018, the Board issued the Final Written Decision in this
`proceeding. Paper 29 (“Final Dec.”). On June 22, 2018, Petitioner filed a
`Request for Rehearing. Paper 30 (Req. Reh’g.). Petitioner makes two
`arguments: (1) that the Board misapprehended Malik in connection with the
`determination that Petitioner did not show claim 3 is unpatentable; and
`(2) that the Board misapprehended the scope of claim 3. Id.
`According to 37 C.F.R. § 42.71(d), “[t]he burden of showing a
`decision should be modified lies with the party challenging the decision,”
`and the “request must specifically identify all matters the party believes the
`Board misapprehended or overlooked.” The burden here, therefore, lies with
`Petitioner to show we misapprehended or overlooked the matters it requests
`that we review.
`II. ANALYSIS
`Petitioner’s arguments hinge on a claim construction issue pertaining
`to claim 3, which is reproduced below.
`3. The method for instant voice messaging over a
`packet switch network according to claim 1, further
`comprising the step of:
`controlling a method of generating the instant voice
`message based upon the connectivity status of
`said one or more recipient.
`
`
`Ex. 1001, 24:21−26.
`In our Final Written Decision, we determined that neither Vuori nor
`Malik teaches the controlling step recited in claim 3 as argued by Petitioner.
`Final Dec. 38−40. Petitioner disagrees with that determination. Req. Reh’g.
`2−5. Petitioner argues that Malik first detects if a recipient is not available
`
`2
`
`
`
`IPR2017-00222
`Patent 8,243,723 B2
`
`and second “controls . . . the method for how the voice message is generated
`based on that detection.” Id. at 4 (citing Ex. 1019, Fig. 4). According to
`Petitioner, pages 23−24 of the Petition include this argument that we
`allegedly misapprehended or overlooked.
`We have reviewed the Petition again in light of Petitioner’s
`arguments. And we disagree that we overlooked or misapprehended the
`argument or that we misapprehended Malik’s disclosures. The Petition cites
`the Forys Declaration (Ex. 1003) at paragraphs 157−160, and relies on
`Malik’s disclosures at paragraphs 8, 32, and 33, for the limitation at issue.
`We reviewed and specifically pointed out why none of the cited passages of
`Malik and the Forys Declaration persuade us that Malik discloses the
`limitation. Final Dec. 39−40. In short, we determined that Malik’s
`recording of the voice message (recited “generating”), described in
`paragraph 33, occurs once the sender is authorized to send a voice message.
`Id. at 39. We found no particular control of the method of Malik’s recording
`based upon connectivity status because the sender will record the voice
`message regardless of whether the recipient is available or not. Id. at 39−40
`(citing Ex. 1019 ¶¶ 8, 32−35). We are not persuaded that these findings
`were incorrect. Thus, we view Petitioner’s challenge of the Board’s decision
`as a mere disagreement with our reading of Malik, which differs from
`Petitioner’s characterization of the reference.
`Second, Petitioner focuses on the further explanation of our reasoning
`that faults Petitioner’s evidence of how Malik controls the generating of the
`voice message. Id. at 40. In short, we determined that Petitioner failed to
`show evidence that Malik’s recording in any way depends on connectivity
`status because Malik’s description of the recording is always in the same
`
`3
`
`
`
`IPR2017-00222
`Patent 8,243,723 B2
`
`mode—recording mode. Id. The only control exercised in Malik is
`determining whether the already recorded message is delivered immediately
`(if the recipient is available) or at a later time (when the recipient is detected
`to be online). Petitioner’s Request for Rehearing characterizes our
`explanation as misapprehending the claim scope of claim 3. Req. Reh’g. 5.
`We do not agree with Petitioner that we misapprehended the scope of
`claim 3. Claim 3 plainly requires “controlling a method of generating . . .
`based upon the connectivity status of . . . [the] recipient.” We found that
`Malik performs the method of generating the voice message in the same
`manner (same method) regardless of the connectivity status. Thus, our
`finding that Malik performs only the recording mode shows that there is no
`control of the recording of the voice message or the recited “generating the
`instant voice message.”
`Accordingly, we are not persuaded that we misapprehended or
`overlooked the matters Petitioner raises in the Request for Rehearing.
`III. ORDER
`Petitioner’s Request for Rehearing is denied.
`
`
`
`4
`
`
`
`IPR2017-00222
`Patent 8,243,723 B2
`
`PETITIONER:
`Apple Inc.
`Jason D. Eisenberg
`Michael D. Specht
`Trent W. Merrell
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`jasone-ptab@skgf.com
`mspecht-ptab@skgf.com
`tmerrell-PTAB@skgf.com
`
`Facebook, Inc. and WhatsApp, Inc.
`Heidi L. Keefe
`Phillip Morton
`COOLEY LLP
`hkeefe@cooley.com
`pmorton@cooley.com
`
`
`PATENT OWNER:
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`ETHERIDGE LAW GROUP
`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`
`Sean D. Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`5
`
`
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