Trials@uspto.gov
`571-272-7822
`
`
`Paper 10
`Entered: March 29, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`UNILOC USA, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-02084
`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
`
`
`
`
`571-272-7822
`
`
`Paper 10
`Entered: March 29, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE LLC,
`Petitioner,
`
`v.
`
`UNILOC USA, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-02084
`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
`
`
`
`
`
`IPR2017-02084
`Patent 7,535,890 B2
`
`
`I. INTRODUCTION
`Google LLC,1 filed a Petition requesting inter partes review of claims
`7, 8, 11, 13, 21, 22, 25, 27, 35, 36, 38, 44, 45, 48, 50, 55, 56, 59, 61, 66, 67,
`and 69 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.
`
`
`
`2
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`IPR2017-02084
`Patent 7,535,890 B2
`
`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 IPR2017-02083, which
`challenge different subsets of claims of the ’890 patent. Google, Inc. v.
`Uniloc Luxembourg S.A., Cases IPR2017-02082, IPR2017-02083 (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).
`
`
`
`3
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`IPR2017-02084
`Patent 7,535,890 B2
`
`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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`4
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`IPR2017-02084
`Patent 7,535,890 B2
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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 13, 27, 50, and 61 are independent.
`None of these claims have any dependent claims. The remaining challenged
`claims are dependent from claims challenged in IPR2017-02082 and
`IPR2017-02083. The challenged claims that depend from claims challenged
`5
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`
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`IPR2017-02084
`Patent 7,535,890 B2
`
`in IPR2017-02082 include: (1) claims 7, 8, and 11, which are dependent
`from claim 1; and (2) claims 44, 45, and 48, which depend from claim 40.
`The challenged claims that depend from claims challenged in IPR2017-
`02083 include: (1) claims 35, 36, and 38, which depend from claim 28; and
`(2) claims 66, 67, and 69, which depend from claim 62. The remaining
`challenged claims depend from claims that are challenged in both IPR2017-
`02082 and IPR2017-02083, these include: (1) claims 21, 22, and 25, which
`depend from claim 14; and (2) claims 55, 56, and 59, which depend from
`claim 51.
`Claim 13 is illustrative of the claims at issue and is reproduced below:
`13. An instant voice messaging system for delivering
`instant messages over a packet-switched network, the system
`comprising:
` a voice-over-internet-protocol (VoIP) telephone connected
`to the network for providing input audio;
` a client connected to the network, the client selecting one
`or more recipients, generating an instant voice message
`therefor using the input audio provided by the VoIP
`telephone, and transmitting the selected recipients and
`the instant voice message therefor over the network;
` a server connected to the 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 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, 25:1–20.
`
`
`
`6
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`IPR2017-02084
`Patent 7,535,890 B2
`
`
`Basis
`§ 103
`
`§ 103
`
`§ 103
`
`C. Grounds Asserted
`Petitioner asserts the following grounds of unpatentability under
`
`35 U.S.C. § 103.3 Pet. 6.
`References
`
`Zydney4 and Gralla5
`Zydney, Gralla, and
`Bartholomew6
`Zydney, Aggarwal7, and Gralla § 103
`Zydney, Aggarwal, Gralla, and
`Bartholomew
`
`Challenged Claims
`8, 11, 13, 45, 48, and 50
`
`7 and 44
`22, 25, 27, 36, 38, 56, 59, 61,
`67, and 69
`21, 35, 55, and 66
`
`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.”
`
`
`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 PRESTON GRALLA, HOW THE INTERNET WORKS (6th ed. 2002). Ex. 1005
`(“Gralla”).
`6 U.S. Patent No. 7,069,310 B1 (issued Jun. 27, 2006). Ex. 1031
`(“Bartholomew”).
`7 U.S. Patent No. 6,415,318 B1 (issued Jul. 2, 2002). Ex. 1006
`(“Aggarwal”).
`
`
`
`7
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`IPR2017-02084
`Patent 7,535,890 B2
`
`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. 8–9; 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 8, 11, 13, 45, 48, and 50 would have
`been obvious over Zydney and Gralla, claims 7 and 44 would have been
`obvious over Zydney, Gralla, and Bartholomew, claims 22, 25, 27, 36, 38,
`56, 59, 61, 67, and 69 would have been obvious over Zydney, Aggarwal, and
`Gralla, and claims 21, 35, 55, and 66 would have been obvious over Zydney,
`Aggarwal, Gralla, and Bartholomew. 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
`
`
`
`8
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`IPR2017-02084
`Patent 7,535,890 B2
`
`“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.
`
`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
`
`
`
`9
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`IPR2017-02084
`Patent 7,535,890 B2
`
`at other points mapped the voice data or message stored in Zydney’s voice
`container to the instant voice message. Id. at 8–14.
`In IPR2017-02083, Petitioner asserted that an overlapping set of
`claims (claims 14–20, 23, 24, 26, 28–34, 37, 39, 51–54, 57, 58, 60, 62–65,
`68, and 70) of the ’890 patent would have been obvious over Zydney
`combined with Aggarwal and Oppenheimer. IPR2017-02083, Paper 2
`(“2083 Pet.”). We denied institution in that case for the same reasons as in
`IPR2017-02082. IPR2017-02083, Paper 10 (“2083 Inst. Dec.”).
`Here, as in both IPR2017-02082 and IPR2017-02083, each of the
`challenged independent claims (claims 13, 27, 50, and 61) recites an instant
`voice message. Ex. 1001, 25:1–20, 26:51–27:5, 29:52–30:7, 31:46–32:5.
`Petitioner cites to its analysis of claim 1 to show the unpatentability of
`claims 13, 27, 50, and 61. Pet. 25–26, 30–32, 51–53, and 64–65. This
`Petition’s analysis of claim 1 suffers from the same deficiencies as that in
`IPR2017-02082. Specifically, 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 14. 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 instant voice message’
`contained in the voice container, just as claimed.” Id. at 17 (citing Ex. 1004,
`
`
`
`10
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`IPR2017-02084
`Patent 7,535,890 B2
`
`12) (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 19. Dr. Min’s
`Declaration suffers from the same problem. E.g., compare Ex. 1003 ¶ 49,
`with id. ¶¶ 56, 59.
`The addition of Gralla, Aggarwal, and Bartholomew 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
`recited ‘local network,’ such ‘local network features were conventional
`options implemented in similar prior art systems, an example of which is
`Aggarwal.” Pet. 40. 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. 40–45. Similarly, the Petition relies on Gralla for the
`disclosure of buffering as recited in claims 8, 22, 36, 45, 56, and 67, (id. at
`20–23, 29, 50–51, 61, 63, 68) and VoIP telephones as recited in claims 11,
`13, 25, 27, 38, 48, 50, 59, 61, and 69 (id. at 23–27, 29–32, 51–53, 61, 64–65,
`68). Id. at 67–72. Finally, the Petition relies on Bartholomew for disclosing
`signal processing as required by claims 7, 21, 35, 44, 55, and 66. Id. at 33–
`40, 69–72.
`Thus, Petitioner’s obviousness assertions in this case are deficient for
`the same reasons as in IPR2017-02082 and IPR2017-02083. See 2082 Inst.
`Dec. 8–14; 2083 Inst. Dec. 9–11 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
`
`
`
`11
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`IPR2017-02084
`Patent 7,535,890 B2
`
`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 7, 8,
`11, 13, 21, 22, 25, 27, 35, 36, 38, 44, 45, 48, 50, 55, 56, 59, 61, 66, 67, and
`69 of the ’890 patent.
`
`III. 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 7, 8, 11, 13, 21, 22, 25, 27, 35, 36, 38, 44, 45, 48, 50,
`55, 56, 59, 61, 66, 67, and 69—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)–(5). Therefore, we do
`not institute an inter partes review of any of the challenged claims on any of
`the asserted grounds.
`
` ADDITIONAL PATENT OWNER ARGUMENTS
`IV.
`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
`
`
`
`12
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`IPR2017-02084
`Patent 7,535,890 B2
`
`basis of Petitioner’s substantive grounds, we do not address those arguments
`further herein.
`
`IV. 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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`13
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`IPR2017-02084
`Patent 7,535,890 B2
`
`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:
`Ryan Loveless
`James Etheridge
`Etheridge Law Group
`ryan@etheridgelaw.com
`jim@etheridgelaw.com
`
`Sean Burdick
`Brett Mangrum
`Uniloc USA, Inc.
`Sean.burdick@unilocusa.com
`Brett.mangrum@unilocusa.com
`
`Jeffrey Huang
`Huang2009@lawnet.ucla.edu
`
`
`
`
`
`
`
`
`14
`
`
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