`571-272-7822
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`Paper 10
`Entered: March 29, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`UNILOC USA, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-02083
`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 Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`IPR2017-02083
`Patent 7,535,890 B2
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`I. INTRODUCTION
`Google LLC,1 filed a Petition requesting inter partes review of claims
`14–20, 23, 24, 26, 28–34, 37, 39, 51–54, 57, 58, 60, 62–65, 68, and 70 of
`U.S. Patent No 7,535,890 B2, issued on May 19, 2009 (Ex. 1001, “the ’890
`patent”), pursuant to 35 U.S.C. §§ 311–319. Paper 2 (“Pet.”). Uniloc USA,
`Inc. filed a Preliminary Response. Paper 8 (“Prelim. Resp.”). Petitioner
`filed a Reply to Patent Owner’s Preliminary Response, upon authorization of
`the Board, to address Patent Owner’s arguments concerning application of
`the Board’s institution discretion under 35 U.S.C. §§ 314(a) and 325(d).
`Paper 9.
`Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be
`instituted unless “the information presented in the petition . . . and any
`response . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” Having considered the Petition and the Preliminary Response, we
`determine that the information presented does not show that there is a
`reasonable likelihood that Petitioner would prevail in establishing the
`unpatentability of any of the challenged claims of the ’890 patent. For the
`reasons given below, we deny institution of an inter partes review.
`
`A. Related Matters
`Petitioner and Patent Owner represent that the ’890 patent is asserted
`in numerous actions before the U.S. District Court for the Eastern District of
`Texas, including actions filed against Petitioner (Case Nos. 2:17-cv-465,
`
`
`1 Subsequent to filing this Petition, Google, Inc. changed its name to Google
`LLC. Paper 5.
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`2:17-cv-466, 2:17-cv-467, 2:17-cv-231, 2:17-cv-224, 2:17-cv-214). Pet. 1–
`2; Paper 3, 2–3.
`In addition, the ’890 patent is the subject of several inter partes
`review proceedings before the Office. In IPR2017-00221, filed by Apple
`Inc., the Board instituted inter partes review of claims 1–6, 14, 15, 17–20,
`28, 29, 31–34, 40–43, 51–54, 62–65, and 68 of the ’890 patent on May 25,
`2017. Apple Inc. v. Uniloc USA, Inc., Case IPR2017-00221 (PTAB May 25,
`2017) (Paper 9). Moreover, on September 11, 2017—concurrently with this
`Petition—Petitioner filed IPR2017-02082 and IPR2017-02084, which
`challenge different subsets of claims of the ’890 patent. Google, Inc. v.
`Uniloc Luxembourg S.A., Cases IPR2017-02082, IPR2017-02084 (PTAB),
`Paper 2.
`The ’890 patent was also previously the subject of IPR2017-00220,
`IPR2017-01523, IPR2017-01524, and IPR2017-01802, in which the Board
`denied institution. See Apple Inc. v. Uniloc USA, Inc., Case IPR2017-00220
`(PTAB)2, Paper 9; Facebook, Inc. v. Uniloc USA, Inc., Case IPR2017-
`01523, IPR2017-01524 (PTAB), Paper 7; Samsung Elecs. Am., Inc. v.
`Uniloc Lux. S.A., Case IPR2017-01802 (PTAB), Paper 8.
`
`A. The ’890 Patent
`The ’890 patent explains that “[v]oice messaging” and “instant text
`messaging” in both the Voice over Internet Protocol (“VoIP”) and public
`switched telephone network environments are known. Ex. 1001, 2:11–35.
`
`2 IPR2017-01612 filed by Snap Inc. and IPR2017-01636 filed by Facebook,
`Inc and WhatsApp Inc. were joined with IPR2017-00221. See Snap Inc. v.
`Uniloc Lux. S.A., Case IPR2017-01612 (PTAB Oct. 3, 2017) (Paper 11);
`Facebook, Inc. v. Uniloc Lux. S.A., Case IPR2017-01636 (PTAB Oct. 3,
`2017) (Paper 10).
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`In prior art instant text messaging systems, a server presents a user of a
`client terminal with a “list of persons who are currently ‘online’ and ready to
`receive text messages,” the user “select[s] one or more” recipients and types
`the message, and the server immediately sends the message to the respective
`client terminals. Id. at 2:23–35. According to the ’890 patent, however,
`“there is still a need in the art for . . . a system and method for providing
`instant VoIP messaging over an IP network,” such as the Internet. Id. at
`1:6–11, 2:36–48, 6:37–39.
`In one embodiment, the ’890 patent discloses local instant voice
`messaging (“IVM”) system 200, depicted in Figure 2 below. Id. at 6:12–14.
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`As illustrated in Figure 2, local packet-switched IP network 204,
`which may be a local area network (“LAN”), “interconnects” IVM clients
`206, 208 and legacy telephone 110 to local IVM server 202. Id. at 6:40–61;
`see id. at 7:13–14, 7:51–55. Local IVM server 202 enables instant voice
`messaging functionality over network 204. Id. at 7:53–55.
`In “record mode,” IVM client 208 “displays a list of one or more IVM
`recipients,” provided and stored by local IVM server 202, and the user
`selects recipients from the list. Id. at 7:47–49, 7:55–61. IVM client 208
`then transmits the selections to IVM server 202 and “records the user’s
`speech into . . . digitized audio file 210 (i.e., an instant voice message).” Id.
`at 7:61–8:1.
`
`When the recording is complete, IVM client 208 transmits audio file
`210 to local IVM server 202, which delivers the message to the selected
`recipients via local IP network 204. Id. at 8:5−19. “[O]nly the available
`IVM recipients, currently connected to . . . IVM server 202, will receive the
`instant voice message.” Id. at 8:23−25. IVM server 202 “temporarily saves
`the instant voice message” for any IVM client that is “not currently
`connected to . . . local IVM server 202 (i.e., is unavailable)” and “delivers it
`. . . when the IVM client connects to . . . local IVM server 202 (i.e., is
`available).” Id. at 8:24–29; see id. at 9:7–11. Upon receiving the instant
`voice message, the recipients can audibly play the message. Id. at 8:19–22.
`
`B. Illustrative Claim
`Of the challenged claims, claims 14, 26, 28, 51, 60, and 62 are
`independent. Claim 14 is illustrative of the claims at issue and is reproduced
`below:
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`14. An instant voice messaging system for delivering
`instant messages over a plurality of packet-switched
`networks, the system comprising:
` a client connected to a local network, the client selecting
`one or more external recipients connected to an external
`network outside the local network, generating an instant
`voice message therefor, and transmitting the selected
`recipients and the instant voice message therefor over
`the local network and the external network; and
` a server connected to the external network, the server
`receiving the selected recipients and the instant voice
`message therefor, and delivering the instant voice
`message to the selected recipients over the external
`network, the selected recipients being enabled to
`audibly play the instant voice message, and the server
`temporarily storing the instant voice message if a
`selected recipient is unavailable and delivering the
`stored instant voice message to the selected recipient
`once the selected recipient becomes available.
`Ex. 1001, 25:21–39.
`
`C. Grounds Asserted
`Petitioner asserts the following grounds of unpatentability under
`
`35 U.S.C. § 103.3 Pet. 6.
`References
`
`Zydney4 and Aggarwal5
`
`Challenged Claims
`14–20, 23, 24, 26, 28–34, 37,
`51–54, 57, 58, 60, 62–65, and 68
`
`Basis
`§ 103
`
`
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29,
`(2011), revised 35 U.S.C. § 103, effective March 16, 2013. Because the
`application resulting in the ’890 patent was filed before the effective date of
`the relevant section of the AIA, we refer to the pre-AIA version of § 103.
`4 PCT International Application Publication No. WO 01/11824 A2
`(published Feb. 15, 2001). Ex. 1004 (“Zydney”).
`5 U.S. Patent No. 6,415,318 B1 (issued Jul. 2, 2002). Ex. 1006
`(“Aggarwal”).
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`References
`Zydney, Aggarwal, and
`Oppenheimer6
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`Basis
`§ 103
`
`Challenged Claims
`39 and 70
`
`In addition, Petitioner supports its contentions with the Declaration of Paul
`S. Min, Ph.D. Ex. 1003.
`
`II. ANALYSIS
`Claim Construction
`A.
`The Board interprets claim terms of an unexpired patent using the
`“broadest reasonable construction in light of the specification of the patent.”
`37 C.F.R. § 42.100(b). We presume a claim term carries its plain meaning,
`which is the meaning customarily used by those of skill in the relevant art at
`the time of the invention. Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062
`(Fed. Cir. 2016).
`The parties agree that, for purposes of this Decision, no claim terms of
`the ’890 patent require an express construction. Pet. 9–10; Prelim. Resp. 20.
`We agree. See Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.
`Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017); Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only claim
`terms that “are in controversy” need to be construed and “only to the extent
`necessary to resolve the controversy”).
`
`B. Obviousness
`Petitioner contends that claims 14–20, 23, 24, 26, 28–34, 37, 51–54,
`57, 58, 60, 62–65, and 68 would have been obvious over Zydney and
`
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`6 PCT International Application Publication No. WO 01/71992 A2
`(published Sept. 27, 2001). Ex. 1008 (“Oppenheimer”).
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`Aggarwal and that claims 39 and 70 would have been obvious over Zydney,
`Aggarwal, and Oppenheimer. Pet. 10–72. Patent Owner disputes
`Petitioner’s obviousness assertions. Prelim. Resp. 19–26.
` Overview of Zydney
`1.
`Zydney discloses “a system and method for voice exchange and voice
`distribution” that allows software agent 22, in conjunction with central
`server 24, to “send, receive and store messages using voice containers.”
`Ex. 1004, 1:19–20, 10:20–11:1, Fig. 1A. In the disclosed “pack and send
`mode of operation,” the sender “selects one or more intended recipients,”
`and sending software agent 22 then “acquire[s], compresse[s,] and . . .
`store[s]” a “message . . . in a voice container[].” Id. at 11:1–6, 14:18–19; see
`id. at 14:2–6, Figs. 4, 6–7. Next, sending software agent 22 transmits the
`voice container over the Internet to the one or more recipient software agents
`28, either directly or indirectly through central server 24. Id. at 11:1–6; see
`id. at 1:20–2:5, 5:3–5, 12:20–23, 15:15–21, 16:7–10, Fig. 1A. Each
`recipient software agent then “opens” or “unpack[s] the voice container and
`play[s] the message.” Id. at 13:19–22, 14:14–16.
`Zydney defines “[t]he term ‘voice container[]’” to “refer[] to a
`container object that contains no methods, but contains voice data or voice
`data and voice data properties.” Id. at 12:6–8. The “voice data properties
`components” include originator’s code 302, one or more recipient’s code
`304, originating time 306, delivery time(s) 308, number of plays 310, source
`312, reuse restrictions 314, delivery priority 322, session values 324, and
`repeating information 330. Id. at 23:1–12, Fig. 3. The voice container also
`contains “information concerning codec type, size, sample rate, and data.”
`Id. at 23:10–11.
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`Discussion
`2.
`In IPR2017-02082, Petitioner asserted that an overlapping set of
`claims (claims 1–6, 9, 10, 12, 14, 16–20, 23, 24, 26, 40–43, 46, 47, 49, 51–
`54, 57, 58, and 60) of the ’890 patent were anticipated by Zydney.
`IPR2017-02082, Paper 2. We denied institution in that case because the
`petition failed to comply with, inter alia, 35 U.S.C. § 312(a)(3) and 37
`C.F.R. §42.104(b)(4) by repeatedly relying on different structures in Zydney
`to show the claimed instant voice message. IPR2017-02082, Paper 10
`(“2082 Inst. Dec.”). In particular, the petition, at various points in its
`analysis, mapped Zydney’s voice container to the instant voice message and
`at other points mapped the voice data or message stored in Zydney’s voice
`container to the instant voice message. Id. at 8–14.
`Here, as in IPR2017-02082, each of the challenged independent
`claims (claims 14, 26, 28, 51, 60, and 62) recites an instant voice message.
`Ex. 1001, 25:21–39, 26:28–50, 27:6–28, 30:8–30, 31:18–45, 32:6–31.
`These claims recite numerous specific requirements for the claimed “instant
`voice message” regarding its generation at the client, transmission, receipt
`by the server, temporary storage, delivery from the server to selected
`recipients, and audible playback by the recipients. Id. Moreover, several of
`the challenged dependent claims feature additional requirements regarding
`the “instant voice message.” For example, claims 20 and 54 additionally
`recite that “the client records,” or the client “recording,” “the instant voice
`message in an audio file,” which is transmitted to and delivered by the
`server. Id. at 25:65–26:2, 30:43–49. In addition, claims 23 and 57 require
`that “the client is enabled to attach,” or the client “attaching,” “one or more
`files to the instant voice message.” Id. at 26:15–18, 31:3–7.
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`Also, as in IPR2017-02082, the Petition interchangeably maps—
`without explanation—the “instant voice message” of the challenged claims
`to either (1) Zydney’s voice container or (2) the voice data or message that is
`stored in Zydney’s voice container. For example, the Petition alleges that
`Zydney’s voice container qualifies as and equates to the claimed “instant
`voice message” in its analysis of “generating an instant voice message,”
`affirmatively representing that “Zydney’s ‘voice containers’ are the claimed
`‘instant voice messages.’” Id. at 23. However, in addressing the “receiving”
`limitation, the Petition expressly represents that “[w]hen the server is
`‘uploading the voice container(s),’ the server is ‘receiving the . . . the instant
`voice message’ contained in the voice container, just as claimed.” Id. at 29
`(citing Ex. 1004, 12, Fig. 8) (emphasis added). For the “audibly play”
`limitation, Petitioner explains that “Zydney explains that recipient software
`agents include functionality to ‘unpack the voice container and play the
`message.” Id. at 31–32. Dr. Min’s Declaration suffers from the same
`problem. E.g., compare Ex. 1003 ¶ 67, with id. ¶¶ 76, 80–81.
`The addition of Aggarwal and Oppenheimer to Zydney does not cure
`this deficiency in the Petition. Petitioner relies on Aggarwal only to the
`extent that “the Board finds that Zydney does not disclose or suggest the
`‘local network’ recited in the independent claims of the ’890 patent (or the
`other characteristics of the ‘local network’ recited in the dependent claims).”
`Pet. 13. Because Aggarwal is not relied upon for teaching or suggesting any
`aspect of the claimed instant message, it does not affect our analysis. See
`Pet. 13–19. Similarly, the Petition relies on Oppenheimer only for the “load-
`balancing” feature of claims 39 and 70. Id. at 67–72.
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`Thus, Petitioner’s obviousness assertions in this case are deficient for
`the same reasons as in IPR2017-02082. See 2082 Inst. Dec. 8–14. And we
`deny institution of inter partes review on Petitioner’s obviousness ground
`for the same reasons. Namely, because (1) Petitioner inconsistently maps
`the recited “instant voice message” to different elements of Zydney without
`sufficient explanation for this incongruity, thus, not establishing a reasonable
`likelihood of demonstrating that the challenged claims would have been
`obvious, and (2) the Petition’s arguments and supporting evidence regarding
`the recited “instant voice message” violate the statutory and regulatory
`requirements for a petition. See 35 U.S.C. § 312(a)(3); 37 C.F.R.
`§§ 42.104(b)(4), 42.22(a)(2).
`Accordingly, we deny institution of inter partes review of claims 14–
`20, 23, 24, 26, 28–34, 37, 39, 51–54, 57, 58, 60, 62–65, 68, and 70 of the
`’890 patent.
`
`III. ADDITIONAL PATENT OWNER ARGUMENTS
`Patent Owner has advanced a variety of additional arguments
`concerning an alleged failure on the part of Petitioner to name all real
`parties-in-interest, 35 U.S.C. § 325(d), and the constitutionality of inter
`partes review proceedings. Prelim. Resp. 2–16, 26. We have considered
`those arguments, but in view of our determination not to institute trial on the
`basis of Petitioner’s substantive grounds, we do not address those arguments
`further herein.
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`IV. CONCLUSION
`As explained in our analysis above, we determine that the information
`presented in the Petition does not establish a reasonable likelihood that
`Petitioner would prevail in showing that any of the challenged claims of the
`’890 patent—claims 14–20, 23, 24, 26, 28–34, 37, 39, 51–54, 57, 58, 60,
`62–65, 68, and 70—are unpatentable. Moreover, the Petition fails to comply
`with the requirements set forth in 35 U.S.C. § 312(a)(3), 37 C.F.R.
`§ 42.22(a)(2), and 37 C.F.R. § 42.104(b)(4). Therefore, we do not institute
`an inter partes review of any of the challenged claims on any of the asserted
`grounds.
`
`V. ORDER
`
`Accordingly, it is:
`ORDERED that pursuant to 35 U.S.C. § 314(a), the Petition is denied,
`and no trial is instituted as to any claim of U.S. Patent No. 7,535,890 B2.
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`PETITIONER:
`Jeffrey Miller
`jmillerptab@apks.com
`
`Michael Hawkins
`Kim Leung
`Patrick Bisenius
`Kenneth Darby
`Nicholas Stephens
`Fish & Richardson P.C.
`hawkins@fr.com
`leung@fr.com
`bisenius@fr.com
`kdarby@fr.com
`nstephens@fr.com
`
`
`PATENT OWNER:
`
`Brett Mangrum
`Sean Burdick
`Uniloc USA, Inc.
`Brett.mangrum@unilocusa.com
`Sean.burdick@unilocusa.com
`
`Ryan Loveless
`Etheridge Law Group
`ryan@etheridgelaw.com
`
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