petition for inter partes review of u.s. patent no. … for inter partes review of u.s. patent no....
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Petition for Inter Partes Review of U.S. Patent No. 8,995,433
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
FACEBOOK, INC., WHATSAPP INC., Petitioners
v.
UNILOC USA, INC., UNILOC LUXEMBOURG, S.A., Patent Owners
U.S. Patent No. 8,995,433
TITLE: SYSTEM AND METHOD FOR INSTANT VOIP MESSAGING
PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,995,433
(PETITION 2 OF 2 – CLAIMS 9-12, 14-17, 25, 26)
Table of Contents
Page
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I. Mandatory Notices Under 37 C.F.R. § 42.8(A)(1) ........................................ 1
A. Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1) ............................ 1
B. Related Matters under 37 C.F.R. § 42.8(b)(2) ..................................... 1
C. Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3) .................. 3
D. Service Information .............................................................................. 4
E. Power of Attorney ................................................................................ 4
II. Fee Payment - 37 C.F.R. § 42.103 ................................................................. 4
III. Requirements for Inter Partes Review under 37 C.F.R. §§ 42.104 and 42.108 ............................................................................................................. 5
A. Grounds for Standing under 37 C.F.R. § 42.104(a) ............................. 5
B. Identification of Challenge under 37 C.F.R. § 42.104(b) and Statement of Precise Relief Requested ................................................ 5
IV. Technology Background Relevant to a Person of Ordinary Skill in the Art ................................................................................................................... 6
V. The ’433 Patent ............................................................................................... 7
VI. Claim Construction Under 37 C.F.R. § 42.104(B)(3) .................................... 9
A. “instant voice messaging application” ................................................. 9
B. “client platform system” ..................................................................... 13
VII. Claims 9-12, 14-17, 25, and 26 Are Unpatentable ....................................... 15
A. Brief Summary and Date Qualification of the Prior Art .................... 15
Overview of Zydney (Ex. 1103) .............................................. 15
Overview of Greenlaw (Ex. 1110) ........................................... 20
Overview of Newton (Ex. 1106) .............................................. 22
B. Ground 1: Claims 9, 12, 14, 17, 25-26 Are Obvious Over Zydney ................................................................................................ 23
Claim 9 (Independent) ............................................................. 23
(a) “A system, comprising:” (Preamble, Claim 9) .............. 23
Table of Contents (continued)
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(b) “an instant voice messaging application comprising:” (Claim 9[a]) ............................................. 23
(i) “a client platform system for generating an instant voice message;” (Claim 9[a1])” .............. 25
(ii) “a messaging system for transmitting the voice instant message over a packet-switched network; and” (Claim 9[a2]) ................ 28
(c) “wherein the instant voice message application attaches one or more files to the instant voice message.” (Claim 9[b]) .................................................. 32
Claim 12 (Dependent): “The system according to claim 9, wherein the instant voice messaging application encrypts the instant voice message.” ....................................... 36
Claim 14 (Dependent): “The system according to claim 9, wherein the instant voice messaging application invokes a document handler to create a link between the instant voice message and the one or more files.” ................... 38
Claim 17 (Dependent): “The system according to claim 9, further comprising an instant voice messaging server receiving the instant voice message and an indication of one or more intended recipients of the instant voice message.” ................................................................................. 43
(a) “an instant voice messaging server receiving the instant voice message…” ............................................... 43
(b) “an instant voice messaging server receiving … an indication of one or more intended recipients of the instant voice message.” .................................................. 45
Claim 25 (Dependent): “The system of claim 17 wherein the instant voice messaging server determines availability of the one or more intended recipients for receipt of the instant voice message.” ............................................................ 46
Table of Contents (continued)
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Claim 26 (Dependent): “The system of claim 25, wherein the instant voice messaging server: delivers the instant voice message to the one or more intended recipients who are determined to be currently available; stores the instant voice message for the one or more intended recipients who are not currently available; and delivers the instant voice message to the one or more intended recipients who are not currently available when the instant voice messaging server determines that the not currently available one or more intended recipients become available.” ................................................................... 47
(a) “the instant voice messaging server: delivers the instant voice message to the one or more intended recipients who are determined to be currently available;” ...................................................................... 48
(b) “the instant voice messaging server… stores the instant voice message for the one or more intended recipients who are not currently available;” .................. 48
(c) “the instant voice messaging server… delivers the instant voice message to the one or more intended recipients who are not currently available when the instant voice messaging server determines that the not currently available one or more intended recipients become available.” ........................................ 49
C. Ground 2: Claims 11, 15, 16 Are Obvious Over Zydney + Greenlaw ............................................................................................ 50
Claim 11 (Dependent): “The system according to claim 9, wherein the instant voice messaging application displays one or more controls for audibly playing the instant voice message.” ............................................................ 50
Claim 15 (Dependent): “The system according to claim 9, wherein the instant voice messaging application displays the attachment.” ......................................................... 57
Table of Contents (continued)
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Claim 16 (Dependent): “The system according to claim 9, wherein the instant voice messaging application displays one or more controls for performing at least one of reviewing, re-recording or deleting the instant voice message.” ................................................................................. 58
D. Ground 3: Claim 10 Is Obvious Over Zydney + Newton .................. 59
Claim 10 (Dependent): “The system according to claim 9, wherein the packet-switched network comprises a WiFi network.” ......................................................................... 59
VIII. Conclusion .................................................................................................... 63
Petition for Inter Partes Review of U.S. Patent No. 8,995,433
List of Exhibits
-v-
Ex. No. Description of Document
1101 U.S. Patent No. 8,995,433 to Michael J. Rojas
1102 Declaration of Tal Lavian, Ph.D.
1103 PCT Patent Application No. PCT/US00/21555 to Herbert Zydney et al. (filed August 7, 2000, published February 15, 2001 as WO 01/11824 A2) (“Zydney”) (with added line numbers)
1104 U.S. Patent No. 6,750,881 to Barry Appelman (filed February 24, 1997, issued June 15, 2004)
1105 Excerpts from Margaret Levine Young, Internet: The Complete Reference (2d ed. 2002)
1106 Excerpts from Harry Newton, Newton’s Telecom Dictionary (2002) (“Newton”) (dated library copy)
1107 U.S. Patent No. 6,757,365 B1 to Travis A. Bogard (filed October 16, 2000, issued June 29, 2004)
1108 U.S. Patent No. 6,725,228 to David Morley Clark et al. (filed Oct. 31, 2000, issued April 20, 2004)
1109 Excerpts from Microsoft Computer Dictionary (3d ed. 1997)
1110 Excerpts from Raymond Greenlaw et al., Introduction to the Internet for Engineers (1999) (“Greenlaw”)
1111 Excerpts of Joint Claim Construction and Prehearing Statement filed on March 10, 2017 in Case No. 16-cv-00642 (E.D. Tex.), including Exhibit A
1112 PCT Patent Application No. PCT/US00/21555 to Herbert Zydney et al. (filed August 7, 2000, published February 15, 2001 as WO 01/11824 A2) (as-published version without added line numbers)
1113 Library and date-stamped copy of excerpts from Raymond Greenlaw et al., Introduction to the Internet for Engineers (1999)
Petition for Inter Partes Review of U.S. Patent No. 8,995,433
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This is a petition for Inter Partes Review of claims 9-12, 14-17, 25, and 26 of
U.S. Patent No. 8,995,433 (Ex. 1101) (“’433 patent”).
I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
A. Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1)
Facebook, Inc. and WhatsApp Inc. (“Petitioners”) are the real parties-in-
interest to this inter partes review petition.
B. Related Matters under 37 C.F.R. § 42.8(b)(2)
The ’433 patent is the subject of a pending request for inter partes review
(IPR2017-00225) filed by Apple Inc., on November 14, 2016. The Petitioners herein
are not parties to IPR2017-00225 and were not involved in the preparation of that
petition. An institution decision is expected for IPR2017-00225 by June 5, 2017.
Concurrent with the filing of this Petition, the Petitioners are filing a second
petition for inter partes review, to address claims not covered by the present Petition.
More specifically, the present Petition addresses claims 9-12, 14-17, 25, and 26, and
the other concurrently-filed petition addresses claims 1-8. The Petitioners filed their
challenges against these claims in two separate petitions to allow each petition to
provide a more complete and thorough treatment of each claim.
The ’433 patent is also the subject of two pending litigations involving the
Petitioners: Uniloc USA, Inc. et al. v. Facebook, Inc., Case No. 2:16-cv-00728-JRG
(E.D. Tex. Filed July 5, 2016) and Uniloc USA, Inc. et al. v. WhatsApp, Inc., Case
Petition for Inter Partes Review of U.S. Patent No. 8,995,433
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No. 2:16-cv-00645-JRG (E.D. Tex. Filed June 14, 2016), which have been
consolidated for pretrial purposes with Uniloc USA, Inc. et al. v. Samsung
Electronics America, Inc., Case No. 2:16-cv-00642-JRG (E.D. Tex.).
The Petitioners are also aware of the following additional pending litigations
involving the ’433 patent: Uniloc USA, Inc. et al. v. Tencent America LLC et al.,
Case No. 2:16-cv-00694-JRG (E.D. Tex.); Uniloc USA, Inc. et al. v. Apple Inc., Case
No. 2:16-cv-00638-JRG (E.D. Tex.); Uniloc USA, Inc. et al. v. Blackberry
Corporation et al., Case No. 2:16-cv-00639-JRG (E.D. Tex.); Uniloc USA, Inc. et
al. v. Snap Inc., Case No. 2:16-cv-00696-JRG (E.D. Tex.); Uniloc USA, Inc. et al.
v. AOL Inc., Case No. 2:16-cv-00722-JRG (E.D. Tex.); Uniloc USA, Inc. et al. v.
BeeTalk Private Ltd., Case No. 2:16-cv-00725-JRG (E.D. Tex.); Uniloc USA, Inc.
et al. v. Green Tomato Limited, Case No. 2:16-cv-00731-JRG (E.D. Tex.); Uniloc
USA, Inc. et al. v. Sony Interactive Entertainment LLC., Case No. 2:16-cv-00732-
JRG (E.D. Tex.); Uniloc USA, Inc. et al. v. Avaya Inc., Case No. 2:16-cv-00777-
JRG (E.D. Tex.); Uniloc USA, Inc. et al. v. Telegram Messenger, LLP, Case No.
2:16-cv-00892-JRG (E.D. Tex.); Uniloc USA, Inc. et al. v. HTC America, Inc., Case
No. 2:16-cv-00989-JRG (E.D. Tex.); Uniloc USA, Inc. et al. v. Kyocera America,
Inc. et al., Case No. 2:16-cv-00990-JRG (E.D. Tex.); Uniloc USA, Inc. et al. v. LG
Electronics U.S.A., Inc., Case No. 2:16-cv-00991-JRG (E.D. Tex.); Uniloc USA, Inc.
et al. v. Motorola Mobility LLC, Case No. 2:16-cv-00992-JRG (E.D. Tex.); Uniloc
Petition for Inter Partes Review of U.S. Patent No. 8,995,433
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USA, Inc. et al. v. ZTE (USA), Inc. et al., Case No. 2:16-cv-00993-JRG (E.D. Tex.);
Uniloc USA, Inc. et al. v. Huawei Device USA, Inc. et al., Case No. 2:16-cv-00994-
JRG (E.D. Tex.); Uniloc USA, Inc. et al. v. Google, Inc., Case No. 2:17-cv-00214-
JRG (E.D. Tex.); Uniloc USA, Inc. et al. v. Google, Inc., Case No. 2:17-cv-00224-
JRG (E.D. Tex.); Uniloc USA, Inc. et al. v. Google, Inc., Case No. 2:17-cv-00231-
JRG (E.D. Tex.); Uniloc USA, Inc. et al. v. KIK Interactive, Inc., Case No. 2:17-cv-
00347-JRG (E.D. Tex.); Uniloc USA, Inc. et al. v. Hike Ltd., Case No. 2:17-cv-
00349-JRG (E.D. Tex.); and Uniloc USA, Inc. et al. v. Tencent America LLC et al.,
Case No. 2:16-cv-00577-JRG (E.D. Tex.). Although the Petitioners are not parties
to these other litigations, because they involve allegations of infringement of the
’433 patent, they may be impacted by a decision by the Board in this IPR proceeding.
C. Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3)
Petitioners provide the following designation of counsel.
LEAD COUNSEL BACK-UP COUNSEL
Heidi L. Keefe (Reg. No. 40,673) [email protected] [email protected]
COOLEY LLP ATTN: Patent Group 1299 Pennsylvania Avenue NW Suite 700 Washington, DC 20004 Tel: (650) 843-5001 Fax: (650) 849-7400
Phillip E. Morton (Reg. No. 57,835) [email protected] [email protected]
COOLEY LLP ATTN: Patent Group 1299 Pennsylvania Avenue NW Suite 700 Washington D.C. 20004 Tel: (703) 456-8668 Fax: (703) 456-8100
Petition for Inter Partes Review of U.S. Patent No. 8,995,433
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LEAD COUNSEL BACK-UP COUNSEL
Mark R. Weinstein (Admission pro hac vice pending) [email protected] Tel: (650) 843-5007 Fax: (650) 849-7400
D. Service Information
This Petition is being served to the current correspondence address for the
’433 patent, UNILOC USA INC., Legacy Town Center, 7160 Dallas Parkway, Suite
380, Plano TX 75024. The Petitioners consent to electronic service at the addresses
provided above for lead and back-up counsel.
E. Power of Attorney
Filed concurrently in accordance with 37 C.F.R. § 42.10(b).
II. FEE PAYMENT - 37 C.F.R. § 42.103
This Petition requests review of ten (10) claims. A payment of $23,000 is
submitted herewith, based on a $9,000 request fee (for up to 20 claims), and a post-
institution fee of $14,000 (for up to 15 claims). This Petition meets the fee
requirements of 35 U.S.C. § 312(a)(1).
Petition for Inter Partes Review of U.S. Patent No. 8,995,433
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III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R. §§ 42.104 AND 42.108
A. Grounds for Standing under 37 C.F.R. § 42.104(a)
The Petitioners certify that the ’433 patent is available for inter partes review
and that the Petitioners are not barred or otherwise estopped from requesting inter
partes review on the grounds identified herein.
B. Identification of Challenge under 37 C.F.R. § 42.104(b) and Statement of Precise Relief Requested
The Petitioners respectfully request that the Board initiate inter partes review
of claims 9-12, 14-17, 25, and 26 on the following grounds:
Ground Claims Basis for Challenge
1 9, 12, 14, 17, 25, 26
Unpatentable over Zydney (Ex. 1103), under § 103(a)
2 11, 15, 16 Unpatentable over Zydney (Ex. 1103) in view of Greenlaw (Ex. 1010), under § 103(a)
3 10 Unpatentable over Zydney (Ex. 1103) in view of Newton (Ex. 1106), under § 103(a)
Part VII below explains why the challenged claims are unpatentable based
on the grounds identified above. These references were not cited during the original
prosecution of the ’433 patent, and were not cited in the separate IPR petition filed
by Apple Inc. (IPR2017-00225). Submitted with the Petition is the Declaration of
Tal Lavian, Ph.D. (Exhibit 1102) (“Lavian”), a technical expert with decades of
relevant technical experience. (Lavian, ¶¶ 1-10, Ex. A.)
Petition for Inter Partes Review of U.S. Patent No. 8,995,433
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IV. TECHNOLOGY BACKGROUND RELEVANT TO A PERSON OF ORDINARY SKILL IN THE ART
As explained by Dr. Lavian, a person of ordinary skill in the art for purposes
of the ’433 patent would have possessed at least a bachelor’s degree in computer
science, computer engineering, or electrical engineering with at least two years of
experience in development and programming relating to network communication
systems (or equivalent degree or experience). (Lavian, ¶¶ 13-15.)
As discussed in more detail below, the ’433 patent relates generally to instant
messaging systems. The term “instant messaging” or “IM” generally refers to a
technology that allows two or more people to exchange information with other users,
including text, voice data, and/or files. (Id., ¶ 30.)
Instant messaging technologies date back to at least the 1960s with the MIT
“Interconsole Messages” system, which allowed users to exchange textual messages
over a network. (Id., ¶ 32.) Through the 1980s and 1990s, companies such as
CompuServe, Commodore, and America Online (AOL), among others, released
instant messaging solutions to the public, some of which became immensely
popular. (Id., ¶¶ 33-36.) For example, by 2002, AOL Instant Messenger (AIM), the
instant messaging service offered by AOL, had more than 100 million registered
users. (Id., ¶ 37.)
The ’433 patent also acknowledges that instant messaging solutions were
known in the art. The Background section of the patent explains that known instant
Petition for Inter Partes Review of U.S. Patent No. 8,995,433
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messaging (“IM”) systems generally included client devices, IM software installed
on those client devices, and IM servers. (’433, 2:35-39.) IM systems communicated
over a packet-switched network, such as the Internet. (Id., 1:38-39, 2:35-39.) The
IM server maintained a list of users that were currently “online” and able to receive
messages and presented this list to the users via the instant messaging software. (Id.,
2:39-42; Lavian, ¶ 40.) A user could select one or more recipients and send them a
message. (’433, 2:43-45; Lavian, ¶¶ 30, 41, 42.) The IM server would transmit the
message to the recipients and the message would be displayed to the recipients by
the IM software. (’433, 2:45-47.)
Instant messaging services typically required that the user have software (an
IM client) that provides a user interface allowing a user to send messages to one or
more recipients. The messages would typically be communicated to a server, which
would either deliver the message to the recipients or store them at the server if the
recipient was not currently available. (Lavian, ¶¶ 30, 41, 42.) IM clients typically
varied in terms of what types of information they could transmit, how they indicate
availability of other users, whether and how they secure the communications, and
other details. (Id., ¶ 31.)
V. THE ’433 PATENT
The ’433 patent purports to describe a system and method for delivering
instant voice messages over a packet-switched network. (’433, Abstract.) The
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disclosed system includes a client such as a VoIP telephone or PC computer
“enabled for IP telephony” that is connected to a server and instant voice message
(“IVM”) recipients through a network(s). (Id., 1:44-51, 2:61-3:5, 7:8-26.)
In one embodiment, when a user chooses to send an IVM, the IVM client
displays a “list of one or more IVM recipients.” (Id., 8:2-5.) This recipient list is
provided and stored by an IVM server. (Id.) Once recipients are selected, the user
records a message, such as by using a microphone to record a digitized audio file.
(Id., 8:11-15.) The patent states that one or more files may be attached to the instant
voice message, such as by using a conventional “drag-and-drop” technique. (Id.,
12:28-43, 13:35-40.)
Once the voice message is generated, the client transmits the voice message
to the server for delivery to one or more recipients. (Id., 8:22-30.) After receiving
the IVM, the server transmits the voice message to the one or more recipients. (Id.,
8:30-33.) If the recipient is “available” (currently connected to the IVM server), it
will receive the instant voice message. (Id., 8:36-38.) If a recipient is unavailable
(offline), the server temporarily saves the voice message and transmits it once the
recipient becomes available. (Id., 8:38-43.) The recipient is notified of the new
voice message and can play the audio file. (Id., 8:33-36.) If the message had
attachments, the recipient can also access the attached files. (Id., 13:5-12.)
Petition for Inter Partes Review of U.S. Patent No. 8,995,433
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This Petition addresses claims 9-12, 14-17, 25, and 26. Claim 9 is the sole
challenged independent claim. Claims 11, 12, and 14-17 depend from claim 9.
Claim 25 depends from claim 17, and claim 26 depends from claim 25.
VI. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3)
The constructions below provide the broadest reasonable interpretation in
light of the specification to a person of ordinary skill in the art.
A. “instant voice messaging application”
The broadest reasonable interpretation of an “instant voice messaging
application” in the context of the claims of the ’433 patent is “hardware and/or
software used for instant voice messaging.” (Lavian, ¶¶ 48-56.)1
The written description of the ’433 patent does not use the word “application”
in any way relevant to the alleged invention. In fact, all instances of the word
“application” in the written description involve irrelevant (for purposes of this
Petition) cross-references to related patent applications. (’433, 1:4-14.)
1 The Petitioners do not contend that “instant voice messaging application,” under
its broadest reasonable construction, is a “means-plus-function” claim limitation
subject to 35 U.S.C. § 112, ¶ 6 (pre-AIA). The Petitioners reserve their right to argue
that this term is indefinite under the narrower claim construction standards
applicable in litigation.
Petition for Inter Partes Review of U.S. Patent No. 8,995,433
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Nevertheless, the term “application” to a person of ordinary skill in the art
typically refers to computer software for performing a particular function. (Lavian,
¶ 52 (citing Ex. 1109, Microsoft Computer Dictionary (3d ed. 1997), at 27 (defining
“application” as “[a] program designed to assist in the performance of a specific task,
such as word processing, accounting, or inventory management.”)).) The written
description of the ’433 patent, however, indicates that the term “instant voice
messaging application” should not be limited to just software under its broadest
reasonable construction.
The written description does not identify any particular software program
capable of performing all of the functions associated with the “instant voice
messaging application” recited in the claims. (Lavian, ¶ 53.) To the contrary, it
describes these functions as being performed by an instant voice messaging client,
IVM client 208, which is a “general-purpose programmable computer.” (’433,
12:13-15.) The IVM client 208 contains various boxes labeled with functions
including client platform 302, which contains boxes labeled client engine 304,
document handler 306, file manager 308, audio file creation 312, signal processing
314, encryption/decryption 316, and compression/decompression 316. (Id., 12:19-
23.) The IVM client 208 also contains a box labeled messaging system 320. (Id.,
12:8-13.) Figure 3, an excerpt of which is reproduced below, shows these various
boxes inside IVM client 208.
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(Id., Fig. 3.)
The Petitioners note that independent claims 1, 6, and 9 recite that the “instant
voice message application” includes a “client platform system” and a “messaging
system.” But Figure 3 above shows both client platform 302 and messaging system
320 sitting within IVM client 208, and the written description does not identify a
specific software program that contains those two components. Accordingly, the
term “instant voice messaging application” under its broadest reasonable
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construction should not be limited to a software program, but should be interpreted
more broadly to encompass a combination of multiple different software programs
and/or hardware components. (Lavian, ¶ 54.)
This conclusion is buttressed by the fact that independent claims 1 and 6recite
that the claimed instant voice messaging application “displays a list of one or more
potential recipients for the instant voice message.” The written description indicates
that displaying is carried out by a hardware device – display device 216 connected
to IVM client 208. (Id., Fig. 2; 8:2-3 (“The IVM client 208 displays a list of one or
more IVM recipients on its display 216… .”).)2 The written description does not
state that any of the boxes inside IVM client 208, or any software, provide the
claimed display capability.
Therefore, a person of ordinary skill in the art would have understood that,
under its broadest reasonable construction, “instant voice messaging application” is
not limited to software and could include hardware such as a general purpose
computer and display device 216. (Lavian, ¶ 56.) Accordingly, a person of ordinary
skill in the art would have understood that the broadest reasonable interpretation of
“instant voice messaging application” in the context of the claims of the ’433
patent is “hardware and/or software used for instant voice messaging.”
2 All emphasis in quoted text in this Petition has been added, unless otherwise noted.
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B. “client platform system”
One of the components of the claimed “instant voice messaging application”
is a “client platform system.” In particular, claims 1 and 9 state that the “instant
voice messaging application” includes “a client platform system for generating an
instant voice message.” As shown below, the broadest reasonable construction of
“client platform system” is “hardware and/or software on a client for
generating an instant voice message.”3
The written description does not use the term “client platform system” but
does describe a “client platform 302” whose purpose is “generating an instant voice
message” (’433, 12:9-10). The written description further states that the client
platform 302 “comprises a client engine 304, which controls other components” such
as the document handler, file manager, and encryption/decryption. (Id., 12:19-23.)
The written description does not identify what “client engine 304” actually is, e.g.,
whether it is hardware and/or software. The written description instead provides a
functional description of client engine 304 as performing at least two functions: (1)
3 The Petitioners do not contend that “client platform system,” under its broadest
reasonable construction, is a “means-plus-function” claim limitation subject to 35
U.S.C. § 112, ¶ 6 (pre-AIA). The Petitioners reserve their right to argue that this
term is indefinite under the claim construction standards applicable in litigation.
Petition for Inter Partes Review of U.S. Patent No. 8,995,433
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communicating with the server, and (2) performing operations required to generate
an instant voice message. (Id., 12:26-27, 13:17-30.) Figure 3 similarly shows client
engine 304 as a nondescript box within client platform 302. (Id., Fig. 3.)
Nevertheless, as explained above, the claimed “instant voice messaging
application” is composed of hardware and/or software under its broadest reasonable
construction. Because the claimed “client platform system” is part of the “instant
messaging application” in the challenged claims, the “client platform system” under
its broadest reasonable construction should similarly be defined as hardware and/or
software. Accordingly, the term “client platform system” should be defined under
its broadest reasonable construction as “hardware and/or software on a client for
generating an instant voice message.”
In the co-pending litigation involving the Petitioners, the Patent Owner has
proposed to construe “a client platform system” to mean “the system of the client
engine which controls other components used to generate an instant voice message.”
(Ex. 1111, Ex. A, pp.16-17 (Term 24).) This definition has various flaws and is
inconsistent with the broadest reasonable interpretation. (Lavian, ¶ 61.) To begin
with, this definition incorrectly reverses the relationship between the “client engine”
and the “client platform” by reciting that the “client platform system” is a part of the
“client engine.” But the written description makes clear that the opposite is true –
client engine 304 is part of the client platform 302, not the other way around. (’433,
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Fig. 3, 12:19-20 (“The client platform 302 comprises a client engine 304, which
controls other components…”).) Second, the claims themselves do not recite a
“client engine,” and the recitation of a “client engine” does not appear to add
anything meaningful to the Patent Owner’s proposed construction. (Lavian, ¶ 61.)
Nevertheless, as explained in the analysis below, the prior art discloses the claimed
“client platform system” even under the Patent Owner’s proposed construction.
VII. CLAIMS 9-12, 14-17, 25, AND 26 ARE UNPATENTABLE
The challenged claims are unpatentable based on the following grounds:
Ground Claims Basis for Challenge
1 9, 12, 14, 17, 25, 26
Unpatentable over Zydney (Ex. 1103), under § 103(a)
2 11, 15, 16 Unpatentable over Zydney (Ex. 1103) in view of Greenlaw (Ex. 1110), under § 103(a)
3 10 Unpatentable over Zydney (Ex. 1103) in view of Newton (Ex. 1106), under § 103(a)
This Petition will first provide an overview of each prior art reference.
A. Brief Summary and Date Qualification of the Prior Art
Overview of Zydney (Ex. 1103)
Zydney is a published PCT application that describes a system for voice
communication that enables a user to send instant voice messages, which Zydney
calls “voice containers.” (Zydney, Ex. 1103, 2:2-3.) The system transmits the voice
containers “instantaneously or stored for later delivery,” depending on whether or
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not the recipient is currently online. (Id., 1:19-22, 15:8-21.) Zydney qualifies as
prior art vis-à-vis the ’433 patent under 35 U.S.C. § 102(b) (pre-AIA) because
Zydney was published on February 15, 2001, more than one year before the earliest
patent application filing date for the ’433 patent.
The Petitioners also note that the Zydney reference contains page numbers but
does not contain line numbers. Accordingly, for convenience of the Board and ease
of reference, Exhibit 1103 to this Petition contains a copy of Zydney in which line
numbers have been added to the left of each page (beginning on page 1) to facilitate
precise citation to the passages of the reference cited in this Petition. Any citations
to line numbers of Zydney in this Petition and in the Lavian Declaration, therefore,
refer to these added line numbers as shown in Exhibit 1103. A copy of the original
Zydney reference without line numbers is submitted as Exhibit 1112.
The system of Zydney is generally shown in Figure 1A, reproduced below.
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(Zydney, Fig. 1A.)4
Three key components of the system include the “SENDER PC SOFTWARE
AGENT” shown on the left (22), the “RECIPIENT PC SOFTWARE AGENT”
shown on the right (28), and the “CENTRAL SERVER” shown in the middle (24)
of Figure 1A. (Id., 10:19-11:1.) Zydney explains that the sender and recipient
4 All highlighting in reproduced figures has been added, unless otherwise noted.
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software agents may work on any suitable client device such as “a personal
computer, wireless handheld computer such a personal data assistant (PDA), digital
telephone, or beeper.” (Id., 11:14-20.) Central server (24) facilitates instant voice
messaging between the sender and the recipient. (Id., 10:20-11:1.) The sender,
recipient, and central server communicate with each other using a communications
network, as shown with the bottom cloud labeled “INTERNET” in Figure 1A. (Id.,
Fig. 1A; see also id., 5:4-5, 5:15-18, 10:11-14, 14:2-5.)5
Sending a voice instant message from a sender to a recipient in Zydney is
straightforward. A message sender (originator) “selects one or more intended
recipients from a list of names that have been previously entered into the software
agent.” (Id., 14:17-19.) The sender also “digitally records messages for one or more
recipients using a microphone-equipped device and the software agent. The
software agent compresses the voice and stores the file temporarily on the PC if the
voice will be delivered as an entire message.” (Id., 16:1-4; see also id., 20:11-14,
21:11-16 (describing “the recording of one or more voice packet messages on a
5 Figure 1A also depicts an alternative embodiment in which a sender and recipient
can communicate using phones (32, 34) connected over the Public Switched
Telephone Network (PSTN). This Petition will focus on the Internet-connected
embodiment described in the text.
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personal computer” as “voice files [that] can be played and recorded using voice
container enabled devices.”).) The voice message is placed into a “voice
container,” which can be transmitted to the destination. (Id., 10:20-11:3.)
Zydney describes at least two modes in which voice messages can be
transmitted: a “pack and send” mode and an “intercom” mode. This Petition will
focus primarily on the “pack and send” mode as it is more pertinent to the challenged
claims of the ’433 patent.
Zydney explains that “[a] pack and send mode of operation is one in which
the message is first acquired, compressed and then stored in a voice container 26
which is then sent to its destination(s).” (Id., 11:1-3; see also id., Fig. 4.) The
software agent compresses and stores the voice message file, which Zydney refers
to as a “voice container,” on the client device. (Id., 16:3-4, 12:1-8, 10:20-11:3.) The
sender can also include “multimedia attachments” with the voice message, such as
graphics. (Id., 19:2-8, 22:17-20, Fig. 6.) The software agent then transmits the voice
container (and any attachments) to either the central server for delivery or,
alternatively, directly to the recipient. (Id., 12:1, 12:20-23, 16:7-10.)
If the recipient is online, it receives the voice container immediately. (Id.,
1:21-22 (“routed to the appropriate recipients instantaneously.”).) If the recipient is
offline, the server stores the voice container until the recipient is available, as shown
in Figure 4. (Id., 13:12-15, 14:9-11, Fig. 4 (“if recipient is not online, client sends
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voice container to server file”).) The central server can later forward the stored voice
container to the recipient once it logs in. (Id., claim 1, 14:14-16, Fig. 4 (“recipient
logs on to internet or intranet,” “server recognizes recipient, downloads voice
container”), 16:10-12 (“If the intended recipient has a compatible active software
agent on line after log on, the central server downloads the voice recording almost
immediately to the recipient.”).)
Once the recipient’s software agent receives the voice container, it unpacks
the voice container and any attachments, and presents them to the recipient. (Id.,
Fig. 18, 35:20-22.) The software agent can then audibly play the voice message to
the recipient through the speakers or headset attached to the device. (Id., 13:19-22,
14:14-16, 16:10-14.)
Overview of Greenlaw (Ex. 1110)
Greenlaw, entitled “Introduction to the Internet for Engineers” (1999), is a
textbook that provides introductory information about various Internet technologies,
including email. Greenlaw qualifies as prior art to the ’433 patent under at least 35
U.S.C. § 102(b) (pre-AIA) because it was published more than one year before the
earliest patent application filing date for the ’433 patent. (Ex. 1113)
This Petition cites Greenlaw in connection with dependent claims 11, 15, and
16, which depend from claim 9. These claims recite additional features of the instant
voice messaging application of claim 9, including “display[ing] one or more controls
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for audibly playing the instant voice message” (claim 11), “display[ing] the
attachment” (claim 15), and “display[ing] one or more controls for performing at
least one of reviewing, re-recording or deleting the instant voice message” (claim
16). These are the types of features that one might expect to be associated with the
system receiving the instant voice message, and as explained in Ground 2 below, the
receiving software agent in Zydney discloses them.
But as fully explained in the discussion of Ground 2 below, these claims could
be read as requiring the sending system to provide those features. The claims
expressly recite that the claimed features are provided by “the instant voice
messaging application,” a reference to the instant voice messaging application of
claim 9 that is used to send the instant voice message. This Petition accordingly
cites Greenlaw in the event claims 11, 15, and 16 are narrowly construed to require
performance of their functions on the sending system.
Greenlaw addresses this issue in a straightforward way by confirming what
users of messaging systems have long known – that a sending user, when selecting
recipients for the message, can also “copy” itself (for example by filling in the “cc:”
or “bcc:” addresses) on the message, and thereby receive a copy. (Greenlaw at 19,
§1.5.19 (“You will be given the option of sending copies of the message to others
when the mailer prompts you with Cc and perhaps with Bcc. Simply enter the other
e-mail addresses or aliases, as desired. For important correspondence that you want
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to maintain a record of, it is a good idea either to Cc or Bcc yourself, unless your
mailer automatically keeps sent messages.”); id. at 21, §1.5.3 (“After composing
your message using the text editor and signing it, you are ready to send. Again, for
important correspondence or correspondence you would like to keep a record of, it
is a good idea to Cc yourself on the message.”).)
By allowing the sender to copy itself, as taught in Greenlaw, the sending
software agent in Zydney becomes another recipient of the instant voice message.
Greenlaw thus bridges any potential gap between Zydney and the narrower
construction of claims 11, 15, and 16 by making the recipient facing features in
Zydney (which satisfy claims 11, 15, and 16) accessible to the sender.
Overview of Newton (Ex. 1106)
Newton, entitled “Newton’s Telecom Dictionary” (2002) is a reference
describing various telecommunications, networking, and Internet technologies. This
Petition cites Newton in connection with dependent claim 10, which recites that the
“packet-switched network [of claim 9] comprises a WiFi network.” WiFi refers
to a wildly popular wireless networking technology that was described in the 1990s
by the Institute of Electrical and Electronics Engineers (IEEE). (Lavian, ¶ 177.)
This Petition cites Newton for the proposition that the addition of a “WiFi
network” as recited in claim 10 does not present any non-obvious distinction over
Zydney. Newton explains that WiFi was “the most common” wireless local network
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and describes the growing prevalence of WiFi-enabled computers, including for
Internet connectivity through WiFi. (Newton at 18.)
B. Ground 1: Claims 9, 12, 14, 17, 25-26 Are Obvious Over Zydney
Claim 9 (Independent)
(a) “A system, comprising:” (Preamble, Claim 9)
The preamble of claim 9 merely recites “a system,” and thus, appears to be
non-limiting. Nevertheless, as explained in great detail below, Zydney discloses a
voice instant message system with the features recited in the claim limitations below.
(b) “an instant voice messaging application comprising:” (Claim 9[a])
As explained in Part VI.A above, the broadest reasonable construction of
“instant voice messaging application” is “hardware and/or software used for instant
voice messaging.” The “instant voice messaging application” in Zydney takes the
form of software (including a software agent) that runs on a computing device or
hardware (such as a personal computer) of the sender (originator) of an instant voice
message. This is reflected in Step 1.1.1 in Figure 7, which discloses a first step in
which the sender (originator) launches a software agent on a personal computer:
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(Zydney, Fig. 7 (partial figure shown).) Zydney further explains that the software
agent can run on different kinds of hardware beyond a personal computer:
[T]he present invention is designed to adapt to the voice and data
compression capabilities of the user’s existing hardware and software
platform. More specifically, the agent of the present invention may be
adapted to work on a personal computer, wireless handheld computer
such a personal data assistant (PDA), digital telephone, or beeper. In
each case different voice and compression applications and data
formats may be available as dictated by the hardware platform and
software residing thereon.
(Id., 11:14-20.) Zydney therefore discloses an instant voice messaging application
that includes software (including the software agent) that operates on hardware (e.g.
personal computer or other device).
The instant voice messaging application in Zydney, moreover, is “used for
instant voice messaging,” as required by the broadest reasonable construction
proposed herein. Zydney explains that the software agent on the client device can
generate and transmit instant voice messages in the form of “voice containers.” (Id.,
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2:1-3, 10:20-11:3.) These voice containers “can be stored, transcoded and routed to
the appropriate recipients instantaneously or stored for later delivery.” (Id., 1:21-
22.) A recipient of the voice message “can reply in a complementary way, allowing
for near real-time communication.” (Id., 16:14-15.) Zydney describes this exchange
of voice containers as “a voice instant messaging session,” as an alternative to the
“intercom” mode noted previously in the summary of Zydney. (Id., 15:8-13, 10:19-
11:3, 16:1-12.) The instant voice messaging application in Zydney is therefore used
“for instant voice messaging.”
Having addressed the “instant voice messaging application” of claim 9, this
Petition will next turn to the two additional elements the application must comprise:
(i) a “client platform system” and (ii) a “messaging system.”
(i) “a client platform system for generating an instant voice message;” (Claim 9[a1])”
As noted, the claims and the written description make clear that the “client
platform system” is part of the claimed “instant voice messaging application,” and
as noted in Part VI.B above, the broadest reasonable construction of “client platform
system” is “hardware and/or software on a client for generating an instant voice
message.” The client platform system in Zydney is disclosed by the portions of the
software agent on the client of the sending (originating) user responsible for creating
the instant voice message, a process described below. As noted previously, the
“instant voice message” in Zydney takes the form of a voice container.
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Zydney confirms that the software agent on the client system generates the
instant voice message: “To create a message, the software agent will address, pack
and send the message in a voice container.” (Zydney, 14:2-5.) The voice container
is an object that contains voice data and may also contain properties of the voice
data: “The term ‘voice containers’ as used throughout this application refers to a
container object that contains no methods, but contains voice data or voice data and
voice data properties.” (Id., 12:6-8.)
More specifically, in order to generate a voice container, the software agent
records the voice of the sender (originator) and packages it into a file:
Once the delivery mode has been selected, the originator digitally
records messages for one or more recipients using a microphone-
equipped device and the software agent. The software agent
compresses the voice and stores the file temporarily on the PC if the
voice will be delivered as an entire message.
(Id., 16:1-4; see also id., 20:11-14, 25:10-13, 33:4-6, claims 1, 8.) Additionally:
A Software Agent utilized by the sender of the voice container provides
the following functionality: log on to a central server 46; authenticate
to the central server 48; address the recipient(s) and pack message into
a voice container or multiple voice containers 50; and, enable transport
52 of the voice container to the recipient or the central server.
(Id., 13:1-6.)
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The figures in Zydney further show that the software agent generates an
instant voice message. Figure 2 of Zydney shows the Software Agent with its
various components, including the compression data encryption/protocols and
transcoding process components (items 50). (Id., Fig. 2.) Figures 4, 6, and 16 depict
the client as building the voice container. (Id., Fig. 4 (“client builds voice container
with message”) (third box under), Fig. 6 (“client builds voice container with voice
message”), Fig. 16, Step 5.1.2 (“recording a voice in voice container”).)
Accordingly, the “client platform system” of claim 9 is disclosed by the
portions of the software agent in Zydney responsible for capturing the recorded voice
and processing it into a voice container file, which can include compression and/or
encryption as noted. (Id., Fig. 2 (item 50), 13:1-6 (“A Software Agent utilized by
the sender of the voice container provides the following functionality… pack
message into a voice container or multiple voice containers 50….”).) The software
agent’s functionality is also supported by hardware including the client device (e.g.,
personal computer) and the microphone (which is used to record the sending
(originating) user’s voice). (Id., 16:1-4, Figs. 4, 6, 7.)
As noted in the claim construction section in Part VI.B above, the Patent
Owner in the co-pending litigation has argued that “client platform system” means
the “system of the client engine which controls other components used to generate
an instant voice message.” Although this construction lacks merit for the reasons
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provided in Part VI.B above, Zydney discloses the claimed “client platform system”
even under that definition. This is because, as explained above, the software agent
in Zydney generates a voice container by controlling various other components. A
person of ordinary skill in the art would have understood that these components
include, for example, a microphone (for capturing the sender’s voice), processor
(used to pack the recorded voice into a file), and various software components
including the compression/encryption protocols 50 (Fig. 2) that are used in creation
of the voice container. (Lavian, ¶¶ 95, 96; Zydney, Fig. 2 (item 50), 13:1-6 (“A
Software Agent utilized by the sender of the voice container provides the following
functionality… pack message into a voice container or multiple voice containers
50….”), 16:1-4, Figs. 4, 6, 7, 16.) The instant voice messaging application in
Zydney thus includes a “client platform system for generating an instant voice
message.”
(ii) “a messaging system for transmitting the voice instant message over a packet-switched network; and” (Claim 9[a2])
The second component of the claimed “instant voice messaging application”
of claim 9 is the “messaging system.” The “messaging system” in Zydney takes the
form of the portions of the software agent on the client of the sending (originating)
user responsible for transmitting the voice container. These portions are shown as
“transport processes” 52 in Figure 2. (Zydney, Fig. 2 (“Transport Processes” 52).)
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As explained in Zydney: “A Software Agent utilized by the sender of the voice
container provides the following functionality: log on to a central server 46;
authenticate to the central server 48; address the recipient(s) and pack message into
a voice container or multiple voice containers 50; and, enable transport 52 of the
voice container to the recipient or the central server.” (Id., 13:1-6.) The
functionality on the client system for transmitting the voice container, and
particularly the transport processes component of the software agent, discloses the
claimed messaging system for transmitting the instant voice message. (Id., 12:1-
8, 10:20-11:3.)
Zydney also discloses that the instant voice message is transmitted “over a
packet-switched network,” as claimed. Zydney discloses instant voice messaging
over a packet-based network such as the Internet. (Id., 5:3-4 (the system “is
particularly well suited for use in connecting Internet users and shall be so
described”), 10:14-16, (the system is “distributed over the Internet”), 1:4-5 (the
system “relates to the field of packet communications, and more particularly to voice
packet communication systems.”), 2:6-10 (the system enables “forwarding the
message to another Internet or voice container enabled device”).) More specifically,
the voice containers (instant voice messages) are transmitted over the Internet in data
packets using the well-known TCP/IP protocol. (Id., Fig. 1A (showing sender
software agent 22 communicating voice container 26 to recipient software agent 28
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through the “INTERNET”), 23:11-12 (“[t]he voice container will be sent using
standard TCP/IP transport”), Fig. 2 (identifying “Transport Processes (TCP/IP,
UDP, PSTN, Others)”).)
The term “packet-switched network,” as recited in the claim, generally
refers to a type of communications network in which information is transferred
through a series of data units called “packets.” (Lavian, ¶ 100.) Zydney does not
explicitly use the term “packed-switched network,” but such a network is either
disclosed by or obvious in view of Zydney. (Id., ¶¶ 100-02.)
For example, a person of ordinary skill in the art would have known that
communication using packets over the Internet, as described in Zydney, necessarily
discloses communication “over a packet-switched network,” as recited in the
claim. (Id., ¶ 101.) The written description of the ’433 patent itself expressly
confirms that the “Internet” is a packet-switched network. (’433, 1:38-44 (“a VoIP
terminal device is connected to a packet-switched network (e.g., Internet)”), 1:52-
53 (“FIG. 1 is an illustrative example of a prior art IP telephony system 100 [which]
comprises a packet-switched IP network 102, such as the Internet”).)
It would also have been obvious to a person of ordinary skill in the art that the
Internet as disclosed in Zydney would have been a packet-switched network, as
claimed. (Lavian, ¶ 102.) The Internet was the most well-known and most widely
used packet-switched network as of December 2003, the earliest possible priority
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date of the ’433 patent. (Id.) Zydney itself explains that its system “relates to the
field of packet communications, and more particularly to voice packet
communication systems.” (Zydney, 1:4-5.) As Zydney explains, “Transaction
Control Protocol/Internet Protocol (TCP/IP) is the communications standard
between hosts on the Internet. TCP/IP defines the basic format of the digital data
packets on the Internet allowing programs to exchange information with other hosts
on the Internet.” (Id., 5:15-18.)
TCP/IP would have been familiar to a person of ordinary skill in the art as a
reliable end-to-end transport protocol for packet-switched networks that use the
Internet protocol suite, including the Internet. (Lavian, ¶ 102.) Accordingly,
deploying the system of Zydney using the Internet would have predictably resulted
in a method for instant voice messaging over a packet-switched network, as recited
in claim 9. (Id.)
Accordingly, Zydney discloses or renders obvious a “messaging system for
transmitting the voice instant message over a packet-switched network,” as recited.
Having addressed both of the components of the claimed “instant voice messaging
application” (i.e., the “client platform system” and the “messaging system”), this
Petition will now address the final limitation in claim 9.
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(c) “wherein the instant voice message application attaches one or more files to the instant voice message.” (Claim 9[b])
Finally, the instant voice messaging application in Zydney attaches one or
more files to the voice container (the “instant voice message”), such as a “digitized
greeting card” or “other data types” to each instant voice message (voice container)
to be “transported to the recipient”:
Example: Multimedia Attachments
Another important application of the present invention system and
method for voice exchange and voice distribution is attaching other
media to the voice containers to provide a richer communications
environment. For example, voice containers may have digitized
greeting cards appended to them to present a personalized greeting.
The voice container has the ability to have other data types attached to
it and thus be transported to the recipient.
(Zydney, 19:1-7.) Controls may also be implemented to specify “the number and
type of attachments that can accompany a voice container message.” (Id., 22:19-
20.)
Figure 6, reproduced below, depicts a process for generating an instant voice
message that includes attaching a multimedia “file” to the voice container audio file.
The user clicks “talk” to record a voice message in a voice container and then can
specify a “file” to attach to the voice container.
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(Id., Fig. 6.)
Figures 16-18 similarly provide a three-part description of the generation and
transmission of a “voice container with multimedia attachments.” (Id., 35:15-17,
Figs. 16-18.) As shown in Figure 16, reproduced below, the “originator” can obtain
a “multimedia file,” record a voice container, and “associate” (attach) the
multimedia file to the voice container.
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(Id., Fig. 16.) Figure 17 continues the description from Figure 16 (“5.1 Originator”),
showing “5.2 Central Server” including a step of “receiving the voice container and
associated media file.” (Id., Fig. 17.) These figures therefore confirm that the
multimedia file is attached to the voice container on the originator’s client system
before the voice container and attachment are transmitted to the central server.
Zydney also describes attaching files to voice containers using the industry-
standard Multipurpose Internet Mail Extension (MIME) format, which allows
attachments including “binary, audio, and video” files to be specified in message
headers. (Id., 19:6-12.) MIME refers to a well-known standard originally developed
in the context of sending email messages containing file attachments. (Lavian, ¶
107.) MIME specifies a technique for encoding a message into multiple parts, with
each part capable of containing different types of data. (Id.)
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Zydney does not appear to explicitly identify which portion of the software
on the client system attaches files to voice containers, but this is a trivial omission.
(Id., ¶ 108.) The client system operated by the user operates to generate and transmit
the voice container (which discloses the claimed “instant voice messaging
application”) performs the attachment, as explained previously. (Zydney, 19:1-7,
22:19-20, Figs. 16-17.) A person of ordinary skill in the art would have understood
that the software agent that generates and transmits the voice container would likely
also be responsible for the attachment of files to the voice container, given that the
software agent performs the various other functions for generating and transmitting
voice containers as shown in Figure 2. (Lavian, ¶ 108.) Zydney does not identify
any other software on the client that performs this function.
In any event, it would have been obvious to implement the system of Zydney
in which the software agent on the client performs the function of attaching files to
the voice container prior to transmission. (Id., ¶ 109.) As explained in Zydney, “[t]o
create a message, the software agent will address, pack and send the message in a
voice container.” (Id., 14:4-5; see also id., 13:2-5 (“A Software Agent utilized by
the sender of the voice container provides the following functionality… pack
message into a voice container or multiple voice containers 50…”).) A person of
ordinary skill in the art would have found it plainly obvious that attaching files to a
voice container could have been included as part of the overall process of
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“pack[ing]” the message into a voice container, a process that Zydney confirms is
performed by the software agent on the sending client device. (Lavian, ¶ 109.)
Zydney therefore discloses that “the instant voice message application
attaches one or more files to the instant voice message.” Claim 9 is obvious.
Claim 12 (Dependent): “The system according to claim 9, wherein the instant voice messaging application encrypts the instant voice message.”
Figure 2 in Zydney depicts a set of “encryption protocols” in the software
agent (which is part of the claimed instant voice messaging application) that encrypt
the instant voice message.
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(Zydney, Fig. 2.)
Zydney explains that the software agent includes a “standard codec” used for
carrying out the encryption process: “Each software agent that has been loaded and
registered with the system will in addition to the standard codec used for the
encryption and decryption of the voice containers detail the other codecs that the
software agent may have access to on the system.” (Id., 27:1-6.) Zydney thus
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discloses that the “instant voice messaging application encrypts the instant voice
message,” rendering claim 12 obvious.
Claim 14 (Dependent): “The system according to claim 9, wherein the instant voice messaging application invokes a document handler to create a link between the instant voice message and the one or more files.”
As explained previously with respect to claim 9[b], Zydney discloses that
client system can attach files and also has functionality for “unpacking and
presenting” the graphical and sound components of a received voice container with
an attached file. (Zydney, 19:1-12, 22:19-20, 35:15-22, Figs. 6, 16-18.) Zydney
further explains that the attachment of files creates an association between a voice
container (the instant voice message) and the attached file, which discloses creating
a link between the instant voice message and the file. For example, in Figure 6,
reproduced below, Zydney discloses that the “user is asked what multimedia file to
associate [with] this voice container” and subsequently “enters [the] name of
individual or code of file or web page to associate.” (Id., Fig. 6.) The created
“association” discloses the claimed “link.”
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(Id., Fig. 6.) Similarly, Figure 16 reproduced below shows that the sender
(“originator”) can use the client system to obtain a “multimedia file,” record a voice
container, and “associat[e]” (attach) the multimedia file to the voice container.
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(Id., Fig. 16.) Figures 17-18 depict this message with its associated multimedia files
being sent to a central server and then to the recipient software agent, which
“unpack[s] and present[s]” the “associated” (attached) multimedia file (i.e., the
“graphical” component of the message). (Id., Figs. 17-18.)
(Id., Fig. 17.)
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(Id., Fig. 18.) Accordingly, the software agent in Zydney “invokes a document
handler to create a link between the instant voice message and the one or more
files,” as recited in claim 14.
The Petitioners note that the ’433 patent specification does not provide a
definition for “document handler.” The written description instead refers to
document handler 306 contained within the general-purpose programmable
computer IVM client 208. (’433, 12:13-23.) The patent states that to attach files to
an instant voice message, the system “invokes the document handler 306 to make
the appropriate linkages to the one or more files.” (Id., 13:35-40.) The specification
also states that “[t]he document handler 306 oversees the retrieving, sending,
receiving and storing of one or more documents (or files) attached to instant voice
messages from/to the one or more selected IVM recipients that may be
communicating with the IVM client 208.” (Id., 12:28-32.)
Under the broadest reasonable interpretation, therefore, a person of ordinary
skill in the art would have understood “document handler” to simply refer to a
software component that handles documents. (Lavian, ¶ 118.) That software
component in Zydney is the portion of the software on the originating device,
described above, that facilitates attachments to voice containers and creates an
“association” between the message and the attachments. (Id., ¶ 120.)
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The Patent Owner has proposed to construe “document handler” to mean a
“component of the client platform that oversees the retrieving, sending, receiving
and storing of one or more documents (or files) attached to instant voice messages
from/to the one or more selected IVM recipients that may be communicating with
the IVM client.” This construction is not the broadest reasonable interpretation of
this term. (Id., ¶ 119.) The proposed construction attempts to import a number of
limitations such as “retrieving, sending, receiving and storing” file attachments,
which are not recited in the claim. The written description of the preferred
embodiment does not appear to strictly limit the claimed “document handler” to
those specific functions. (Id.)
Even under the Patent Owner’s proposed construction, the software agent
would disclose the claimed “document handler.” Zydney describes that the client
system contains functionality for retrieving, sending, receiving and storing sent and
received instant voice messages (voice containers) including any attached files.
(Zydney, 1:21-2:5, 10:19-11:6, 11:14-22, 13:1-6, 13:19-22, 16:1-14, 19:2-12, Figs.
4, 6, 16-18.) The software agent in Zydney is responsible for sending and receiving
the voice containers and otherwise communicating with the central server, as
illustrated in Figure 2. It would have been understood and obvious that the software
agent is a component of the client platform that oversees the retrieving, sending,
receiving and storing of one or more documents (or files) attached to instant voice
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messages from/to the one or more selected IVM recipients that may be
communicating with the IVM client. (Lavian, ¶ 123.) Zydney does not identify
another software program or module on the client system that could perform this
“overseeing” function, and therefore it would have been understood and obvious that
the software agent would perform it. (Id.)
Accordingly, Zydney discloses “wherein the instant voice messaging
application invokes a document handler to create a link between the instant voice
message and the one or more files,” rendering claim 14 obvious.
Claim 17 (Dependent): “The system according to claim 9, further comprising an instant voice messaging server receiving the instant voice message and an indication of one or more intended recipients of the instant voice message.”
For ease of reading, this Petition will divide claim 17 into two parts.
(a) “an instant voice messaging server receiving the instant voice message…”
The central server in Zydney discloses the claimed “instant voice messaging
server.” The central server receives, translates, transmits, and stores instant voice
messages (voice containers). (Zydney, 13:12-18, 14:6-13.) The server is depicted
in Figure 1A, reproduced below.
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(Id., Fig. 1A.)
Zydney discloses several ways in which the central server in Zydney can
receive the voice container from the sending software agent. For example, if the
recipient is not currently online, the sending software agent can send the voice
container to the central server for temporary storage. (Zydney, 14:9-11, 16:7-12
(“Based on status information received from the central server, the agent then
decides on whether to transport the voice containers to a central file system and/or
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sends it directly to another software agent using the IP address previously stored in
the software agent. If the intended recipient has a compatible active software agent
on line after log on, the central server downloads the voice recording almost
immediately to the recipient.”); see also id., Fig. 4 (“if recipient is not online, client
sends voice container to server file”), Fig. 8, Step 1.2.3 (“uploading the voice
container(s) to a central file server…”), 15:19-21 (“[T]he voice containers are
delivered to the central server to manage the ultimate delivery to the recipient.”).)
Zydney also teaches that instant voice messages are routed from the sender
through the central server for data format translation (transcoding) at the central
server. (Id., 12:18-23 (describing routing through translator 42 in central server),
13:7-10 (discussing transcoding server (translator) 70), Fig. 1A (translator 42), Fig.
2 (translator 70).) See also Fig. 16 (“Originator” transmits voice container and
attachment), Fig. 17 (“Central Server” receives the voice container and attachment
and uploads file to the recipient).)
This discloses the central server “receiving the instant voice message,” as
claimed.
(b) “an instant voice messaging server receiving … an indication of one or more intended recipients of the instant voice message.”
Zydney also teaches that the selected recipients are identified as part of the
instant voice message sent to the server: “Each message will have a unique identifier
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that will encode the sending software agents identifier, [and] the destination software
agents and non-registered users.” (Zydney, 34:4-8.) The recipient information is
encoded in the instant voice message as part of the voice container. (Id., 23:2-10
(“Voice container components include … one or more recipients code 304”), Fig. 3
(showing “one or more recipient’s code” 304).) Because the recipient’s code is part
of the voice container, when the server in Zydney receives an instant voice message,
it also receives the indication of the intended recipients. Claim 17 is therefore
obvious over Zydney.
Claim 25 (Dependent): “The system of claim 17 wherein the instant voice messaging server determines availability of the one or more intended recipients for receipt of the instant voice message.”
Zydney discloses that the central server “track[s],” i.e., determines, “the
status of all software agents.” (Zydney, 14:6-9, 13:12-14.) The statuses tracked by
the central server include “the core states of whether the recipient is online or offline,
but also offers related status information, for example whether the recipient does not
want to be disturbed.” (Id., 14:17-15:1.) Zydney further describes this connectivity
status as follows:
Software agents may also be in other states that will be communicated
to the other logged on software agents. These states would be the
following: Available – available for messages or live talking; Do Not
disturb – available for messages but not live talking; Not Available –
system is logged on but not accepting messages or live talk; Will
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return – Stepped out of the office and is accepting messages; Out to
Lunch – Stepped out to lunch and is accepting messages; Not logged
on – Message will be sent to the message server.
(Id., 32:18-33:2.)
Zydney further teaches that when an instant voice message is being
transmitted, the central server determines the recipient’s status. After “the originator
digitally records messages for one or more recipients,” then “[b]ased on status
information received from the central server, the agent then decides on whether to
transport the voice containers to a central file system and/or sends it directly to
another software agent.” (Id., 16:1-10.) In particular, “[i]f the intended recipient
has a compatible active software agent on line after log on, the central server
downloads the voice recording almost immediately to the recipient.” (Id., 16:10-
12.) Therefore, Zydney renders obvious claim 25.
Claim 26 (Dependent): “The system of claim 25, wherein the instant voice messaging server: delivers the instant voice message to the one or more intended recipients who are determined to be currently available; stores the instant voice message for the one or more intended recipients who are not currently available; and delivers the instant voice message to the one or more intended recipients who are not currently available when the instant voice messaging server determines that the not currently available one or more intended recipients become available.”
In light of the length of this claim, this Petition will address it in three parts.
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(a) “the instant voice messaging server: delivers the instant voice message to the one or more intended recipients who are determined to be currently available;”
Zydney specifically describes “forwarding the message to the recipient if the
recipient is available.” (Zydney, Abstract; claims 1, 8.) Zydney teaches that “the
central server downloads the voice recording almost immediately to the recipient” if
the “intended recipient has a compatible active software agent on line after log on.”
(Id., 16:7-12.) See also id., 12:18-23 (describing routing through central server for
transcoding), 1:21-22 (“voice containers can be stored, transcoded and routed to the
appropriate recipients instantaneously or stored for later delivery”), Fig. 17 (“Central
Server” receives the voice container and attachment and “upload[s] the file to the
recipient”).)
Zydney therefore discloses that the central server “delivers the instant voice
message to the one or more intended recipients who are determined to be currently
available.”
(b) “the instant voice messaging server… stores the instant voice message for the one or more intended recipients who are not currently available;”
Zydney specifically teaches “storing said message at said central server when
said recipient is not available.” (Id., claim 1; see also id., 13:12-15, 14:9-11, Fig. 4
(“if recipient is not online, client sends voice container to server file.”).)
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(c) “the instant voice messaging server… delivers the instant voice message to the one or more intended recipients who are not currently available when the instant voice messaging server determines that the not currently available one or more intended recipients become available.”
As discussed previously with respect to claim 25, Zydney discloses that the
central server “track[s],” i.e., determines, “the status of all software agents.”
(Zydney, 14:8-9.) Zydney specifically teaches “storing said message at said central
server when said recipient is not available for forwarding when said recipient is
available.” (Id., claim 1, 14:14-16, 15:15-21, 16:10-12.) Additionally:
The message server will be the repository for messages sent to software
agents that are not logged onto the system. Once a software agent has
been authenticated all messages that have been stored on the message
server will be sent to the appropriate software agent.
(Id., 25:1-4; see also id., 33:7-10.) The message server is a component of the central
server in Zydney. (Id., 13:7-10.)
Figure 4, reproduced below, illustrates how the temporarily stored messages
are delivered once the recipient becomes available. (Id., 2:20-21, 34:13-15.)
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(Id., Fig. 4.) Zydney therefore discloses the final limitation of claim 26. Claim 26
is therefore obvious over Zydney.
C. Ground 2: Claims 11, 15, 16 Are Obvious Over Zydney + Greenlaw
Claim 11 (Dependent): “The system according to claim 9, wherein the instant voice messaging application displays one or more controls for audibly playing the instant voice message.”
Zydney discloses that the “Software Agent,” which is part of the instant voice
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messaging application as explained previously, can “unpack the voice container and
play the message.” (Zydney, 13:19-22; see also id., 14:14-16, Fig. 4.) The voice
message can be played “through the speakers or headset attached to the[]
[recipient’s] computer.” (Id., 16:10-14; see also id., 20:14-17.) This is shown in
Figure 9 of Zydney (shown below), which confirms that the recipient can audibly
play the instant voice message (“it may be heard through speakers,” Step 1.3.4) and
states that the software agent “provid[es] visual means for adjusting the quality and
speed of playback of each recording through the software agent” (Step 1.3.6):
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(Id., Fig. 9.) Zydney thus discloses that the software agent, which is part of the
instant voice messaging application, “displays one or more controls for audibly
playing the instant voice message,” as recited in claim 11.
The Petitioners note the “visual means for adjusting the quality and speed of
playback” in Zydney refers to the software agent on the recipient user’s device, not
the software agent on the sending (originating) user’s device. (Id., Fig. 9 (all steps
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disclosed in connection with “recipient”).) But claim 11 says that “the instant voice
messaging application displays one or more controls for audibly playing the instant
voice message,” referring back to the same “instant voice messaging application”
recited in claim 9. The claim thus could be interpreted as requiring that the instant
voice messaging application of the sender to be capable of “display[ing] one or
more controls for audibly playing the instant voice message.”
Assuming this is a requirement of the claim, it does not present any non-
obvious distinction over Zydney. It would have been obvious to a person of ordinary
skill in the art that the same controls for listening to a voice container could be made
available to the sender, as well as the recipient, of a voice container. (Lavian, ¶ 156.)
This would have merely involved allowing the sending (originating) user to review
a voice container that was sent, using the exact same tools of the software agent
available to the recipient as explained above. (Id.)
This could have been accomplished using a number of well-known
techniques, perhaps the simplest being disclosed by Greenlaw. Although entitled
“Introduction to the Internet for Engineers,” the information provided in Greenlaw
cited below would have been familiar to many casual Internet users. (Id., ¶ 157.)
Greenlaw describes the basics of how to use email to send messages, and confirms
that in selecting the recipients to whom a message will be delivered, a sender could
become a recipient of its own message by “copying” himself or herself on the
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message. (Id.) For example, in the context of sending an email message, Greenlaw
explains that “[f]or important correspondence that you want to maintain a record of,
it is a good idea to Cc or Bcc yourself, unless your mailer automatically keeps sent
messages.” (Greenlaw at 19, §1.5.1; id. at 21, §1.5.3 (“After composing your
message using the text editor and signing it, you are ready to send. Again, for
important correspondence or correspondence you would like to keep a record of, it
is a good idea to Cc yourself on the message.”).) The term “cc” refers to the well-
known “carbon copy” functionality used to specify other persons who will receive a
copy of the message. (Id. at 15, §1.4.) Similarly, “bcc” stands for “blind carbon
copy” and works the same as “cc,” except that blind carbon copied users do not know
about each other. (Id.) Users who are “carbon copied” or “blind carbon copied”
will receive a copy of the message. (Id.) If a sending user copies itself, therefore,
the sender will receive the transmitted message the same way as any other recipient
of the message. (Lavian, ¶ 157.)
Rationale and Motivation to Combine: It would have been obvious to
combine Zydney with Greenlaw, with no change in their respective functions. (Id.,
¶ 158.) This combination would have predictably resulted in the software agent of
Zydney in which the sending (originating) user, in selecting recipients for a voice
container, could choose to also copy itself on the message. This would have
predictably resulted in the sending user’s software agent receiving a copy of the
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voice container, which the sending software agent could process and manipulate
using the same tools available to the other recipients of the message. (Id.) This
would have made the feature described in Figure 9 of Zydney, i.e., that the recipient
software agent “provid[es] visual means for adjusting the quality and speed of
playback of each recording through the software agent” (Zydney, Fig. 9), available
to the sending (originating) software agent. Zydney and Greenlaw thus render this
claim obvious even if it is construed as limited to the “instant messaging application”
of the sender. (Lavian, ¶ 158.)
Greenlaw itself provides several motivations to make such a combination. For
example, Greenlaw twice states that “it is a good idea” for sending users to copy
themselves on important correspondence to “keep a record” of them. (Greenlaw at
19, §1.5.1; id. at 21, §1.5.3.) A person of ordinary skill in the art, and even casual
users of messaging systems, would have recognized the importance of being able to
keep records of sent messages. (Lavian, ¶ 159.)
In fact, it was well-known that popular messaging applications such as
Microsoft Outlook allowed senders to store copies of messages they had sent (for
example, in a “Sent Items” folder), allowing the sending users to later review those
messages. (Id., ¶ 160.) Greenlaw itself acknowledges this by stating that copying
oneself on an outgoing message is not necessary if “your mailer automatically keeps
sent messages.” (Greenlaw at 19, §1.5.1.) The ability to review and process sent
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messages, either through the sender “carbon copying” itself, or based on the
messaging software keeping copies of the message, was well-known to persons of
ordinary skill in the art. (Lavian, ¶ 160.)
Although Greenlaw describes the “carbon copy” technique in the context of
email and not “instant messaging,” the technological distinctions between these two
technologies would have been wholly irrelevant to a person of ordinary skill in the
art for purposes of this combination. (Id., ¶ 161.) This Petition cites Greenlaw
merely for the elementary proposition that, in a messaging system, a sending user
can choose to send a copy of an outgoing message to itself. That technique depends
only on the ability to specify addresses of those users who will receive the message
(which Zydney allows), and does not depend on the types of messaging system or
technical details of message delivery. (Id.)
Finally, both references are directed to similar techniques of addressing and
directing communications to recipient, and both describe similar means of
identifying the intended recipients. (Compare Zydney, 14:17-19 (the message
sender (originator) “selects one or more intended recipients from a list of names that
have been previously entered into the software agent.”) with Greenlaw at 19
(“Simply enter the other e-mail addresses or aliases, as desired.”).) Thus, a person
of ordinary skill in the art would naturally have found the teachings of Greenlaw
with respect to addressing sent messages applicable to Zydney. (Lavian, ¶ 161.)
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It would therefore have been obvious to a person of ordinary skill in the art
that a sending (originating) user could have entered itself as among the recipients
who will receive a message, a practice expressly encouraged by Greenlaw. Zydney
in view of Greenlaw therefore discloses “wherein the instant voice messaging
application displays one or more controls for audibly playing the instant voice
message.” Claim 11 is therefore obvious. (Id., ¶ 162.)
Claim 15 (Dependent): “The system according to claim 9, wherein the instant voice messaging application displays the attachment.”
Figures 16-18 of Zydney depict a process for attaching a file to an instant
voice message. (Zydney, Figs. 16-18.) Figure 18 explains that when the recipient
receives the message, the software agent “unpack[s] and present[s] the graphical and
sound components.” (Id., Fig. 18, 4:13-15, 35:20-22.)
(Id., Fig. 18.) A person of ordinary skill in the art would have understood that
“presenting the graphical and sound components” includes “display[ing] the
attachment,” which would be performed by the software on the client system that
discloses the instant voice messaging application. (Lavian, ¶ 165.)
As explained in the discussion of claim 11 above, this claim also refers to “the
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instant voice messaging application,” referring back to the application of claim 9. In
the event it is determined that the instant voice messaging application of the sender
must be able to display the attachment in claim 15, this would have been obvious
over Greenlaw as explained above. (Id., ¶ 166.) This combination would have
predictably resulted in the sending (originating) software agent of Zydney in which
the voice container is sent (e.g. “copied”) to the sender, who can view the attachment
in the same way as the recipient. (Id.) The rationale and motivation to combine
Zydney and Greenlaw was described fully in the discussion of claim 11 above.
Accordingly, claim 15 is obvious.
Claim 16 (Dependent): “The system according to claim 9, wherein the instant voice messaging application displays one or more controls for performing at least one of reviewing, re-recording or deleting the instant voice message.”
Zydney discloses that the software in the instant voice messaging application
allows both senders and recipients to review the recorded messages. The originator
of the instant voice message (voice container) can use “visual means to control and
monitor the recording quality in the originator’s agent.” (Zydney, Fig. 7.) The visual
means for monitoring the recording quality of the voice container discloses the
claimed controls for reviewing the instant voice message under the broadest
reasonable interpretation, as the recording quality would be monitored based on a
review of the content of the voice recording.
Similarly, a recipient’s software agent “provid[es] visual means for adjusting
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the quality and speed of playback of each recording through the software agent.”
(Id., Fig. 9.) Each “visual means” discloses controls displayed by the software
comprising the instant voice messaging application. Zydney also describes that the
software agent provides “controls for saving, deleting, or resending recorded
containers from the recipient’s computer.” (Id., Fig. 9 (Step 1.3.7).) As explained
in the discussion of claims 11 and 15 above, the claim refers to “the instant voice
messaging application,” referring back to the application of claim 9. In the event it
is determined that the instant voice messaging application of the sender must provide
the claimed controls for “reviewing, re-recording or deleting the instant voice
message,” this would have been obvious over Greenlaw as explained above. This
combination would have predictably resulted in the sending (originating) software
agent of Zydney in which the voice container is sent (e.g. “copied”) to the sender,
who can review or delete the voice container in the same way as any other recipient.
(Lavian, ¶ 171.) The motivation to combine Zydney and Greenlaw was described
fully in the discussion of claim 11 above. Claim 16 is therefore obvious.
D. Ground 3: Claim 10 Is Obvious Over Zydney + Newton
Claim 10 (Dependent): “The system according to claim 9, wherein the packet-switched network comprises a WiFi network.”
As explained in connection with claim 9, Zydney discloses and renders
obvious transmission of an instant voice message over a “packet-switched
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network.” Zydney explains that its system for instant voice messaging can be
implemented on a personal computer or other suitable device, which could be a
“wireless handheld computer such as a personal data assistant (PDA).” (Zydney,
11:16-18.) Zydney also describes that its system can be used to communicate instant
voice messages over the Internet, with a TCP/IP connection and IP address
indicating its direct connection on the Internet, as discussed previously. (Id., 5:3-7,
23:11-12, 15:1-2 (“For online recipients, the software agent is also notified on [sic,
of] the recipient’s Internet Protocol (IP) address.”).)
Although Zydney does not expressly mention a “WiFi network,” it would
have been obvious in view of the disclosures of Newton [Ex. 1106]. Just about
anyone who has used a cellular phone or a laptop computer would be familiar with
IEEE 802.11 wireless networking, commercially referred to as “WiFi.” IEEE
802.11 refers to a series of international standards initially published in the late
1990s by the Institute of Electrical and Electronics Engineers (IEEE). Generally
speaking, IEEE 802.11 describes a series of technical standards for providing
wireless networking services. (Lavian, ¶ 177.) IEEE 802.11 is an enormously
popular technology that has spawned a number of variants, including IEEE 802.11a
and 802.11b, the early variants published in the late 1990s. (Id.) A person of
ordinary skill in the art would have been well-aware of the widespread and growing
prevalence of WiFi capability in consumer electronic devices to connect to the
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Internet. (Id., ¶ 178.)
Newton, a telecommunications dictionary from 2002, confirms the well-
known nature of WiFi. It states that “802.11b is now the most common wireless
local area network. 802.11b (also called WiFi) is now commonly installed in offices,
airports, coffee shops, etc. Many laptops now come with 802.11b built-in.”
(Newton at 18.) Newton further observes that all Apple computers included built-in
WiFi capability to connect to the Internet, and that laptop personal computers
routinely used built-in or add-on WiFi capability. (Id.) Newton thus discloses “a
WiFi network,” as claimed.
Rationale and Motivation to Combine. It would have been obvious to a
person of ordinary skill in the art to combine Zydney’s personal computer
embodiment with Newton’s WiFi teachings. (Lavian, ¶ 179.) This combination
would have predictably resulted in the personal computer in Zydney running the
software agent being connected to the Internet using a WiFi network, as taught by
Newton. (Id.) As a result, the claimed “packet-switched network” of claim 9
would also include a WiFi network for connecting the computer to the Internet. (Id.)
Zydney expressly describes that its instant voice messaging system may be
implemented with a wireless computer, as noted, confirming that its system is
intended to work over a wireless connection. Newton provides several express
motivations to use WiFi to implement the wireless functionality of Zydney. For
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example, Newton explains that WiFi was “the most common” wireless local network
as of 2002 that was “commonly installed in offices, airports, coffee shops, etc.”
(Newton at 18.) For example, Newton observes that Microsoft and Starbucks had
announced by 2002 that they would make 802.11b WiFi available in “most of
Starbucks’ coffee outlets over the next two years.” (Id.)
A person of ordinary skill would have recognized that the ability to engage in
instant voice messaging wirelessly (e.g., using a laptop personal computer) would
have provided well-known advantages of wireless connectivity, permitting the user
to exchange instant voice messages without being tethered to a physical wire line
connection. (Lavian, ¶ 180.) It also would have been plainly obvious in view of
Newton, furthermore, that one predictable and reliable design choice for the Zydney
personal computer client system would be an Apple computer, which could connect
with the Internet through WiFi as Newton describes, in view of Apple’s decades-
long track record of popular and easy-to-use personal computers. (Id.)
Furthermore, a person of ordinary skill in the art would have appreciated that
there were only a finite number of wireless networking technologies suitable for
consumer mobile computer usage, and as Newton confirms, WiFi was the most
prominent. (Id., ¶ 181.) No technical difficulties would have been expected, given
that WiFi was an IEEE standardized protocol with “plug and play” availability in
built-in equipment or plug-in cards as described by Newton. Likewise, using WiFi
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to connect with the Internet was common and straightforward with existing off-the-
shelf commercial equipment as confirmed by Newton. (Id.)
VIII. CONCLUSION
The Petitioners respectfully request institution of inter partes review of claims
9-12, 14-17, 25, and 26, and a finding that they are unpatentable.
Dated: May 11, 2017 COOLEY LLP ATTN: Patent Group 1299 Pennsylvania Avenue NW Suite 700 Washington, DC 20004 Tel: (650) 843-5001 Fax: (650) 849-7400
Respectfully submitted,
By: /Heidi L. Keefe/ Heidi L. Keefe Reg. No. 40,673 Counsel for Petitioners
-64-
CERTIFICATE OF COMPLIANCE WITH WORD COUNT
Pursuant to 37 C.F.R. § 42.24(d), I certify that this petition complies with the type-volume limits of 37 C.F.R. § 42.24(a)(1)(i) because it contains 11,497 words, according to the word-processing system used to prepare this petition, excluding the parts of this petition that are exempted by 37 C.F.R. § 42.24(a) (including the table of contents, a table of authorities, mandatory notices, a certificate of service or this certificate word count, appendix of exhibits, and claim listings).
DATED: May 11, 2017
COOLEY LLP ATTN: Heidi L. Keefe Patent Docketing 1299 Pennsylvania Avenue NW Suite 700 Washington, D.C. 20004 Tel: (650) 843-5001 Fax: (650) 849-7400
/ Heidi L. Keefe / Heidi L. Keefe Reg. No. 40,673
CERTIFICATE OF SERVICE I hereby certify, pursuant to 37 C.F.R. Sections 42.6 and 42.105, that a complete copy of the attached PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,995,433, including all exhibits (Nos. 1101-1113) and related documents, are being served via Federal Express on the 11th day of May, 2017, the same day as the filing of the above-identified document in the United States Patent and Trademark Office/Patent Trial and Appeal Board, upon the Patent Owner by serving the correspondence address of record with the USPTO as follows: Uniloc USA Inc. Legacy Town Center 7160 Dallas Parkway, Suite 380 Plano, TX 75024 and upon counsel of record for the Patent Owner in the litigations pending before the U.S. District Court for the Eastern District of Texas entitled Uniloc USA, Inc., Uniloc Luxembourg, S.A. v. Facebook, Inc., Case No. 2:16-cv-00728-JRG, and Uniloc USA, Inc., Uniloc Luxembourg, S.A. v. WhatsApp, Inc., Case No. 2:16-cv-00645-JRG as follows: Paul J. Hayes Kevin Gannon James John Foster Prince Lobel Tye LLP One International Place, Suite 3700 Boston, MA 02210
Anthony Michael Vecchione Edward R Nelson, III Nelson Bumgardner PC 3131 West 7th Street, Suite 300 Ft Worth, TX 76107
DATED: May 11, 2017 / Heidi L. Keefe /
Heidi L. Keefe Reg. No. 40,673
COOLEY LLP ATTN: Patent Docketing 1299 Pennsylvania Ave. NW, Suite 700 Washington, D.C. 20004 Tel: (650) 843-5001 Fax: (650) 849-7400