Trials@uspto.gov
`571-272-7822
`
`
`Paper 29
`Entered: May 23, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., FACEBOOK, INC., and WHATSAPP, INC.,1
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-00222
`Patent 8,243,723 B2
`____________
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN,
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`1 Facebook, Inc. and WhatsApp, Inc. filed a petition and motion for joinder
`in IPR2017-01635, which we granted, and, thus, these entities are joined, as
`Petitioner, to this proceeding. Paper 12.
`
`
`571-272-7822
`
`
`Paper 29
`Entered: May 23, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC., FACEBOOK, INC., and WHATSAPP, INC.,1
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-00222
`Patent 8,243,723 B2
`____________
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN,
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`1 Facebook, Inc. and WhatsApp, Inc. filed a petition and motion for joinder
`in IPR2017-01635, which we granted, and, thus, these entities are joined, as
`Petitioner, to this proceeding. Paper 12.
`
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`
`I.
`INTRODUCTION
`We instituted this inter partes review pursuant to 35 U.S.C. § 314 to
`
`review claims 18 of U.S. Patent No. 8,243,723 B2 (“the ’723 patent”),
`owned by Uniloc Luxembourg S.A. We have jurisdiction under 35 U.S.C.
`§ 6(c). This Final Written Decision is entered pursuant to 35 U.S.C.
`§ 318(a) and 37 C.F.R. § 42.73. For the reasons discussed below, Petitioner
`has shown by a preponderance of the evidence that claims 1 and 2 of the
`’723 patent are unpatentable. Petitioner has not shown by a preponderance
`of the evidence that claims 38 are unpatentable.
`
`A. PROCEDURAL HISTORY
`Apple Inc. filed a Petition to institute inter partes review of claims
`
`18 of the ’723 patent. Paper 2 (“Pet.”). Patent Owner filed a Preliminary
`Response. Paper 6 (“Prelim. Resp.”). On May 25, 2017, we instituted inter
`partes review as to challenged claims 17. Paper 7 (“Institution Decision”
`or “Dec”). We did not institute trial as to claim 8. Id. Facebook, Inc. and
`WhatsApp, Inc. are joined to this proceeding pursuant to our grant of the
`petition and motion for joinder filed in IPR2017-01635 (Paper 12).
`After institution, Patent Owner filed a Patent Owner Response.
`Paper 11 (“PO Resp.”). And Petitioner filed a Reply. Paper 14 (“Reply”).
`We heard oral arguments on February 8, 2018. A transcript of the hearing is
`in the record. Paper 25 (“Tr.”).
`On April 24, 2018, the Supreme Court held that a decision to institute
`under U.S.C. § 314 may not institute on fewer than all claims challenged in a
`petition. SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018). In light of
`the Guidance on the Impact of SAS on AIA Trial Proceedings posted on
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`April 26, 2018,2 we modified our Institution Decision to institute on all of
`the challenged claims, including claim 8, and all of the grounds presented in
`the Petition. Paper 28. Both parties affirmatively waived additional
`briefing. Id. Accordingly, this Final Written Decision addresses all of the
`challenged claims and all of the grounds presented in the Petition.
`
`B. RELATED MATTERS
`The parties indicate that the ’723 patent is involved in Uniloc USA,
`Inc. v. Apple, Inc., Case No. 2-16-cv-00638 (E.D. Tex.), Uniloc USA, Inc. v.
`Facebook, Inc., 2-16-cv-00728-JRG (E.D. Tex.), and Uniloc USA, Inc. v.
`WhatsApp, Inc., 2-16-cv-00645-JRG (E.D. Tex.), among other proceedings.
`Pet. 75–77; Paper 4; Paper 26; Paper 27; IPR2017-01635, Paper 2, 24.
`The ’723 patent also has been the subject of multiple petitions for
`inter partes review filed by various petitioners. Paper 5, 4; Paper 26. For
`instance, the ’723 patent is the subject of an instituted inter partes review in
`IPR2017-01800, filed by Samsung Electronics America, Inc.
`
`C. REAL PARTIES-IN-INTEREST
`Patent Owner asserts that Uniloc U.S.A., Inc. is the exclusive licensee
`and is a real party-in-interest. Paper 24.
`
`D. THE ’723 PATENT (EX. 1001)
`The ’723 patent relates to Internet telephony, and more particularly, to
`instant Voice over IP (“VoIP”) messaging over an IP network, such as the
`Internet. Ex. 1001, 1:1417. The ’723 patent acknowledges that “[i]nstant
`text messaging is [] known” in the VoIP and public switched telephone
`
`2 See https://www.uspto.gov/patents-application-process/patent-trial-and-
`appeal-board/trials/guidance-impact-sas-aia-trial.
`3
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`network (“PSTN”) environments, with a server presenting the user with a
`“list of persons who are currently ‘online’ and ready to receive text
`messages on their own client terminals.” Id. at 2:19, 3037. In one
`embodiment, such as depicted in Figure 2 (reproduced below), the system of
`the ’723 patent involves an instant voice message (IVM) server and IVM
`clients. Id. at 7:1924.
`
`
`Figure 2 illustrates IVM clients 206, 208 and legacy telephone 110
`interconnected via network 204 to the local IVM server 202, where IVM
`client 206 is a VoIP telephone, and where legacy telephone 110 is connected
`to legacy switch 112 and further to media gateway 114. Id. at 6:61–65,
`7:1941. The media gateway converts the PSTN audio signal to packets for
`transmission over a packet switched IP network, such as local network 204.
`Id. at 7:4548. In one embodiment, when in “record mode,” the user of an
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`IVM client selects one or more IVM recipients from a list. Id. at 7:5364.
`The IVM client listens to the input audio device and records the user’s
`speech into a digitized audio file at the IVM client. Id. at 8:17. “Once the
`recording of the user’s speech is finalized, IVM client 208 generates a send
`signal indicating that the digitized audio file 210 (instant voice message) is
`ready to be sent to the selected recipients.” Id. at 8:1114. The IVM client
`transmits the digitized audio file to the local IVM server, which, thereafter,
`delivers that transmitted instant voice message to the selected recipients via
`the local IP network. Id. at 8:125. Only the available IVM recipients,
`currently connected to the IVM server, will receive the instant voice
`message. Id. at 8:2830. If a recipient “is not currently connected to the
`local IVM server 202,” the IVM server temporarily saves the instant voice
`message and delivers it to the IVM client when the IVM client connects to
`the local IVM server (i.e., is available). Id. at 8:3035.
`The ’723 patent also describes an “intercom mode” of voice
`messaging. Id. at 11:2629. The Specification states that the “intercom
`mode” represents real-time instant voice messaging. Id. at 11:2930. In this
`mode, instead of creating an audio file, one or more buffers of a
`predetermined size are generated in the IVM clients or local IVM servers.
`Id. at 11:3033. Successive portions of the instant voice message are
`written to the one or more buffers. Id. at 11:3543. As the buffers fill, the
`content of each buffer is automatically transmitted to the IVM server for
`transmission to the one or more IVM recipients. Id. Buffering is repeated
`until the entire instant voice message has been transmitted to the IVM
`server. Id. at 11:4852.
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`
`E. REPRESENTATIVE CLAIM
`
`Of the challenged claims, claim 1 is independent. Each of claims 28
`depends directly or indirectly from claim 1. Claim 1 is representative:
`1. A method for instant voice messaging over a packet-switched
`network, the method comprising:
`monitoring a connectivity status of nodes within the packet-
`switched network, said connectivity status being available and
`unavailable;
`recording the connectivity status for each of the nodes;
`associating a sub-set of the nodes with a client;
`transmitting a signal to a client including a list of the recorded
`connectivity status for each of the nodes in the sub-set
`corresponding to the client;
`receiving an instant voice message having one or more
`recipients;
`delivering the instant voice message to the one or more
`recipients over a packet-switched network;
`temporarily storing the instant voice message if a recipient is
`unavailable; and
`delivering the stored instant voice message to the recipient once
`the recipient becomes available.
`Ex. 1001, 23:55–24:16.
`F. INSTITUTED GROUNDS OF UNPATENTABILITY
`
`We have instituted inter partes review of claims 18, based on the
`following prior art (Dec. 6; Paper 28, 2):
`a) Vuori: U.S. Patent Appl. Pub. No. US 2002/0146097 A1,
`published Oct. 10, 2002, filed in the record as Exhibit 1005;
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`
`b) Malik: U.S. Patent Appl. Pub. No. US 2003/0219104 A1,
`published Nov. 27, 2003, filed in the record as Exhibit 1019;
`
`c) Lerner: U.S. Patent No. 6,192,395 B1, issued Feb. 20, 2001, filed
`in the record as Ex. 1021;
`
`d) Stubbs: PCT Application published as WO 99/63773 on Dec. 9,
`1999, filed in the record as Exhibit 1022; and
`
`e) Abburi: U.S. Patent Appl. Pub. No. US 2003/0147512 A1,
`published Aug. 7, 2003, filed in the record as Exhibit 1023.
`
`This Final Written Decision addresses the following obviousness
`grounds:
`
`Reference(s)
`
`Vuori
`Vuori and Malik
`Vuori, Malik, and Lerner
`Stubbs and Abburi
`Stubbs and Lerner
`
`Challenged
`Claim(s)
`1
`27
`8
`17
`8
`
`In addition to the supporting argument for these grounds in the
`Petition, Petitioner also presents expert testimony. Ex. 1003, Declaration of
`Leonard J. Forys, Ph.D. (“Forys Declaration”). Patent Owner supports its
`arguments of patentability with a Declaration of William Easttom II.
`Ex. 2001 (“Easttom Declaration”).
`
`II. ANALYSIS
`
`A. CLAIM INTERPRETATION
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
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`patent in which they appear. 37 C.F.R. § 42.100(b). We presume a claim
`term carries its plain meaning, which is the meaning customarily used by
`those of skill in the relevant art at the time of the invention. Trivascular,
`Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir. 2016). We note that only
`those claim terms that are in controversy need to be construed, and only to
`the extent necessary to resolve the controversy. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017);
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999).
`During the preliminary stage of the proceeding, Petitioner proposed a
`claim construction for the term “intercom mode.” Pet. 6. Patent Owner
`argued that construction of this term was unnecessary, and we agreed with
`Patent Owner. See Prelim. Resp. 18; Dec. 7. Neither party proposed
`explicit construction of any other term. It became clear, however, that the
`scope of the word “list” was at issue, when Patent Owner argued that the
`“list of the recorded connectivity status” must include the connectivity status
`of more than one node. Prelim. Resp. 2728. In our Decision on Institution,
`we disagreed with Patent Owner’s contention regarding the scope of the
`word “list,” and noted that the Specification seemed to contradict Patent
`Owner’s position on claim scope. Dec. 1718 (citing Ex. 1001, 7:6164).
`We invited the parties to provide, during trial, claim construction analysis
`concerning this dispute.
`In post-institution briefing, Patent Owner contends that we can resort
`to the “claim language itself” to resolve the dispute. PO Resp. 8. In
`particular, Patent Owner points out that the word “list” is recited in the
`limitation “transmitting a signal to a client including a list of the recorded
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`connectivity status for each of the nodes in the sub-set corresponding to the
`client.” Id. (emphasis added). Patent Owner reasons that because “nodes” is
`recited in the plural form in that phrase, the recited “list” must record the
`connectivity status of more than one node. Id. (citing Ex. 2001 ¶ 23).
`Petitioner responds that the claim language alone is not dispositive,
`for the Specification consistently refers to a list as having “one or more”
`items. Reply 23 (citing Ex. 1001, 7:6163, 8:5256, 16:6163; Ex. 1028
`¶ 10). Further, Petitioner reasons that the claim language surrounding the
`“list” provides other modifying phrases that do not compel the outcome
`Patent Owner seeks. Id. For instance, according to Petitioner, the claim
`refers to the “list of the connectivity status of each of the nodes in the sub-
`set.” Id. at 4 (emphasis added by Petitioner). According to Petitioner, the
`“sub-set” of the nodes “could reasonably include only one node, because the
`sub-set may contain only one node.” Id. (citing Ex. 1028 ¶ 13).
`In rebuttal, Patent Owner concedes that the Specification
`contemplates that the word “list,” in certain circumstances, could be
`singular. Tr. 76:1223. According to Patent Owner, the Specification uses
`the word “list” in both the singular and the plural sense: list of a single
`contact (recipient) and a list of multiple contacts (recipients). Id.
`at 76:2077:4. Patent Owner contends that in the context of the claim,
`however, the word “list” should be read to encompass only the plural use of
`the word, because the phrase “each of the nodes in the subset” would have
`made “one skilled in the art aware that nodes here is referring to plural
`form.” Id. Patent Owner argues that because the claim recites delivering the
`instant voice message to “one or more recipients,” the modifying phrase
`“one or more” would be “rendered superfluous if the use of the plural form
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`for terms recited in [c]laim 1 is interpreted to include both the singular and
`the plural.” PO Resp. 9 (referring to IPR2015-00353, Paper 9 (citing
`Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007))).
`Here, claim 1 recites the “list of the recorded connectivity status for
`each of the nodes in the sub-set corresponding to the client.” This phrase
`repeats the “sub-set” recited earlier in the claim: “associating a sub-set of the
`nodes with a client.” The claim refers to nodes as “nodes within the packet-
`switched network.” Thus, the claim addresses two interrelated elements:
`“nodes in a packet-switched network” and a “sub-set of the nodes” associated
`with a client. The word “nodes” is undeniably plural. The more pressing
`issue, however, is whether the “sub-set of the nodes” must include more than
`one node.
`Of course, “claim construction must begin with the words of the
`claims themselves.” Amgen Inc. v. Hoechst Marion Roussel, Inc., 457 F.3d
`1293, 1301 (Fed. Cir. 2006). But we do not agree with Patent Owner that
`resorting to the plurality of the word “nodes” in the claim language, alone,
`resolves the issue. The claim requires that “a sub-set of the nodes” be
`associated with a client, and these words are inconclusive as to whether the
`“sub-set” must include more than one node. Neither party offers persuasive
`extrinsic evidence showing that the ordinary meaning of this word (“sub-
`set”) is necessarily plural, i.e., that a “sub-set” must include more than one
`member. In fact, Dr. Forys’s testimony is to the contrary, that the term “sub-
`set” would have been understood by a person of ordinary skill in the art to
`mean a “smaller part of a larger set,” and that, therefore, a “‘sub-set of nodes’
`could be a single node.” Ex. 1028 ¶ 13. This testimony, however, does not
`resolve the issue because it is conclusory and lacking explanation. This
`testimony does not explain, for example, why a “smaller part” necessarily
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`yields a “single node,” as opposed to two nodes or zero nodes (i.e., the null
`set), as lowest limit of the “sub-set.” See, e.g., subset, Oxford Dictionary,
`English, at https://en.oxforddictionaries.com/definition/subset (2018, Oxford
`University Press) (defining the noun “subset” as “A part of a larger group of
`related things” and, for the mathematical sense: “A set of which all the
`elements are contained in another set”). Further, Dr. Forys does not explain
`how the word “sub-set” affects the analysis of the claim, other than to
`conclude, summarily, that the nodes comprise a “larger set” and that the
`“sub-set” is a smaller part of that set. Accordingly, we accord Dr. Forys’s
`testimony, with regard to the definition of “sub-set,” little to no weight. See
`37 C.F.R. § 42.65(a); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368
`(Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and
`conclude that the lack of factual corroboration warrants discounting the
`opinions expressed in the declarations.”); Rohm & Haas Co. v. Brotech
`Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (“Nothing in the [federal] rules
`[of evidence] or in our jurisprudence requires the fact finder to credit the
`unsupported assertions of an expert witness.”).
`On the other side of this dispute, Patent Owner’s expert, Mr. Easttom,
`offers opinions regarding the disputed “list” as “includ[ing] the connectivity
`status of more than one node.” Ex. 2001 ¶ 22. His analysis centers on the
`fact that the word “nodes” is plural to impart plurality to the contents of
`“sub-set of the nodes.” Id. ¶ 23. In other words, because the word “nodes”
`is plural, then the “sub-set of the nodes” must also be plural, and
`consequently the “list” requires more than one node. In discussing the
`Specification’s use of the term “list,” Mr. Easttom explains the
`Specification’s description of the word “list” as including “one or more IVM
`recipients” as offering alternative embodiments—one that includes one IVM
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`recipient and another that includes multiple IVM recipients. Id. ¶ 24 (citing
`Ex. 1001, 7:6164). Mr. Easttom states he understands “the claim language
`to refer exclusively to the latter embodiment by reciting ‘each of the nodes
`in the sub-set’—i.e., ‘nodes’ in the plural.” Id. We question this
`testimony’s usefulness to the claim construction inquiry because the
`explanation focuses on grammar, not on whether any of the terms of the
`claim has a particular meaning to a person of ordinary skill in the art. See
`Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015)
`(“‘[E]xperts may be examined to explain terms of art, and the state of the art,
`at any given time,’ but they cannot be used to prove ‘the proper or legal
`construction of any instrument of writing.’”). Accordingly, we do not rely
`on any of the expert testimony to resolve the claim construction dispute.
`Since the expert testimony is inconclusive and the words “list” and
`“sub-set of the nodes” are not elucidating on their own, we turn our attention
`to surrounding claim language. Here we note that the claim requires that the
`list include recorded connectivity status “for each of the nodes in the sub-set
`corresponding to the client.” The use of the word “each” does imply the
`inclusion of more than one node in the “sub-set.” See, e.g., each, Oxford
`Dictionary, English, at https://en.oxforddictionaries.com/definition/each
`(2018, Oxford University Press) (defining the pronoun “each” as “used to
`refer to every one of two or more people or things, regarded and identified
`separately”) (emphasis added). Thus, the phrase “each of the nodes in the
`sub-set corresponding to the client” reasonably refers to the list identifying,
`individually, the recorded connectivity status for at least two nodes in the
`“sub-set.” But a dictionary meaning of “each” is not dispositive on its own.
`We must look to the context of the Specification in order to determine
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`whether it is reasonable to construe the “list of the recorded connectivity
`status for each of the nodes in the sub-set corresponding to the client” as
`referring to the recorded connectivity status of more than one (or at least two)
`nodes.
`The “broadest reasonable interpretation . . . is an interpretation that
`corresponds with what and how the inventor describes his invention in the
`specification.” In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir.
`2017); see Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed.
`Cir. 2015). Even when giving claim terms their broadest reasonable
`interpretation, the Board cannot construe the claims “so broadly that its
`constructions are unreasonable under general claim construction principles.”
`Microsoft, 789 F.3d at 1298 (emphasis in original). “[T]he protocol of
`giving claims their broadest reasonable interpretation . . . does not include
`giving claims a legally incorrect interpretation” “divorced from the
`specification and the record evidence.” Id. (citations and internal quotation
`marks omitted); see PPC Broadband, Inc. v. Corning Optical Commc’ns RF,
`LLC, 815 F.3d 747, 751–53 (Fed. Cir. 2016).
`The Specification describes that the server maintains the status of the
`clients as follows: “The local IVM server 202 maintains the current status of
`the IVM clients connected to the local IVM server 202, i.e., IVM clients
`206, 208.” Ex. 1001, 12:5052. Further, users are represented in the
`database as “records,” with each “record comprising a user name, a
`password, and a contact list (a list of other users with whom the user wishes
`to exchange instant voice messages), and other data relating to the user.”
`Ex. 1001, 13:58–62. The Specification also describes the server generating
`and maintaining “a list for each IVM client,” then waiting to receive
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`“connection objects from the IVM clients 206, 208 that are stored in the
`respective lists,” and servicing the specific requests from the clients after
`decoding the received connection objects. Id. at 14:5258. In a particular
`embodiment, the Specification describes an IVM client requesting from the
`global IVM server “a global contact list . . . of global one or more IVM
`recipients with which the IVM client 208 may exchange instant voice
`messages.” Id. at 14:5516:1 (emphasis added). In this embodiment, the
`Specification states that
`it is assumed that global IVM clients 506, 508 are in the contact
`list. The global IVM server system 502 stores and maintains
`this contact list. Thus, the global IVM server system 502
`responds by transmitting the contact list to the IVM client 208.
`The IVM client 208 displays the contact list on its display 216.
`Alternatively, the [] global contact list may be replicated to the
`local IVM server 202 within the local IVM system 510, in
`which case the local IVM client 208 obtains the global contact
`list from the IVM server 202.
`
`Id. at 15:60–16:1; see also id. at 19:2233, 20:1224 (“[T]he global IVM
`server system 502 responds by transmitting the contact list to each of the
`IVM clients 506, 508.”). Thus, the Specification describes transmitting a
`“list” as the “contact list” of one or more instant voice message recipients.
`But it also refers to the “contact list” as a list of other users with whom the
`user wishes to exchange instant voice messages. Id. at 13:58–62.
`Neither party has pointed out, nor do we find, any embodiment or
`description of a “list” that specifically encompasses “recorded connectivity
`status,” but only a list referred to as a “contact list” that is stored in the
`user’s database record and is transmitted by the server to the client, as
`described above. Thus, it is unclear whether the disclosed “contact list” is
`coextensive with the claim language in dispute. Nevertheless, as the only
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`“list” evident from the disclosure, its description attempts to describe what
`the inventor meant by the plain and ordinary meaning of the word “list.”
`Consequently, it is not entirely clear if the disclosed and claimed
`invention comprises either a list that includes “one or more” entries, or a list
`that includes more than one entry (Patent Owner’s proposed scope). We
`also note that Patent Owner does not point to any evidence of either
`lexicography of the disputed terms (to limit the “list” to multiple entries) or a
`clear and unmistakable disavowal of claim scope (to narrow the claims to
`the multiple entries embodiment, despite disclosing “one or more”).
`Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1249 (Fed.
`Cir. 1998); CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed.
`Cir. 2002). In sum, it is certain that the claim language recites the “list” that
`may include multiple entries (“recorded connectivity status of a sub-set of the
`nodes”). It is not as certain whether the inventor meant to claim a “list” that
`could encompass a single entry, even though the Specification supports such
`a scope.
`We resolve this close issue by noting that a claim construction that
`excludes the “single entry” from the claim scope is preferable, because
`otherwise, the word “each” would be meaningless in instances where the list
`contained only one entry.3 See Merck & Co. v. Teva Pharm. USA, Inc., 395
`F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives meaning
`to all the terms of the claim is preferred over one that does not do so.”); see
`also Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950–51 (Fed. Cir. 2006)
`
`3 If the “sub-set of the nodes” were a single node, then the word “each” in
`the phrase “each of the nodes in the sub-set corresponding to the client”
`would also be superfluous in the circumstances where there was a single
`node. The term “each” still has meaning in the circumstances where there is
`more than one.
`
`15
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`IPR2017-00222
`Patent 8,243,723 B2
`
`(refusing to construe claim terms in a way that made other claim limitations
`meaningless). Accordingly, guided by case law governing claim
`construction, we adopt a construction of the term “list,” as used in claim 1,
`that requires more than one node in the “sub-set” corresponding to the client.
`This conclusion, however, does not resolve another dispute related to
`the term “list.” Close inspection of the parties’ arguments shows a dispute
`over whether the scope of claim 1 also excludes transmitting the list
`(including its entries) one value at a time. See PO Resp. 14 (argument by
`Patent Owner that Vuori does not transmit the “list” because Vuori
`distributes presence information to SVM watcher 256 “one value at a time”).
`We note that some of the dispute seems to focus further on how the recorded
`connectivity status is transmitted as a list. We also note that both the claim
`and the Specification are silent regarding how the recited “list” is
`transmitted, and we do not draw inferences from the disclosed embodiments
`in order to construe the claims in this regard. See, e.g., Johnson Worldwide
`Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 992 (Fed. Cir. 1999) (“[M]ere
`inferences drawn from the description of an embodiment of the invention
`cannot serve to limit claim terms.”); see Ex. 1001, 15:5516:1, 16:4953,
`19:2233, 20:1224, 21:3137; see also id. at 7:6164 (“list of one or more
`IVM recipients” displayed on the client display, where the list is provided
`and stored by the local server); cf. id. at 2:3440 (“The instant text-
`messaging server presents the user, via the client terminal, with a list of
`persons who are currently ‘online’ and ready to receive text messages on
`their own client terminals.” (emphasis added)). In other words, the claims
`only require that the recorded connectivity statuses of the multiple potential
`recipients, with which a client is associated, are included in a list that is
`
`16
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`IPR2017-00222
`Patent 8,243,723 B2
`
`transmitted in a signal to a client. But no further transmission detail is either
`required or excluded in accordance with the claim language and the
`Specification.
`We, therefore, do not construe claim 1 to include any requirement
`related to transmission of its recited list. In reaching this conclusion, we are
`mindful that
`The correct inquiry in giving a claim term its broadest
`reasonable interpretation in light of the specification is not
`whether the specification proscribes or precludes some broad
`reading of the claim term adopted by the examiner. And it is
`not simply an interpretation that is not inconsistent with the
`specification. It is an interpretation that corresponds with what
`and how
`the
`inventor describes his
`invention
`in
`the
`specification, i.e., an interpretation that is consistent with the
`specification.
`
`Smith, 871 F.3d at 138283 (citations and internal quotation marks omitted);
`see also In re Suitco Surface, Inc., 603 F.3d 1255, 1259–60 (Fed. Cir. 2010).
`
`In summary, we determine that, consistent with the claim language
`and the Specification, as discussed above, the “list” must comprise multiple
`entries, i.e., the recorded connectivity status for each of nodes in the sub-set
`of the nodes, and that the claims do not exclude transmitting the “list” one
`value at a time.
`No other terms need to be construed for us to render this Final Written
`Decision.
`
`B. OBVIOUSNESS DETERMINATION
`All the grounds involved in this trial are based on obviousness. See
`supra Section I.F. A patent claim is unpatentable as obvious under
`35 U.S.C. § 103(a) if the differences between the claimed subject matter and
`
`17
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`IPR2017-00222
`Patent 8,243,723 B2
`
`the prior art are such that the subject matter, as a whole, would have been
`obvious at the time the invention was made to a person having ordinary skill
`in the art to which said subject matter pertains. KSR Int’l Co. v. Teleflex
`Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on
`the basis of underlying factual determinations including (1) the scope and
`content of the prior art; (2) any differences between the claimed subject
`matter and the prior art; (3) the level of ordinary skill in the art; and (4)
`objective evidence of nonobviousness, if in evidence.4 Graham v. John
`Deere Co., 383 U.S. 1, 17–18 (1966).
`As the Supreme Court explained in KSR, an invention “composed of
`several elements is not proved obvious merely by demonstrating that each of
`its elements was, independently, known in the prior art.” 550 U.S. at 418.
`Rather, “it can be important to identify a reason that would have prompted a
`person of ordinary skill in the relevant field to combine the elements in the
`way the claimed new invention does.” Id. In other words, “there must be
`some articulated reasoning with some rational underpinning to support the
`legal conclusion of obviousness.” Id. (quoting In re Kahn, 441 F.3d 977,
`988 (Fed. Cir. 2006)). Accordingly, the U.S. Court of Appeals for the
`Federal Circuit has made clear that a petitioner in an inter partes review
`proceeding cannot “satisfy its burden of proving obviousness” by
`“employ[ing] mere conclusory statements” and “must instead articulate
`specific reasoning, based on evidence of record” to support an obviousness
`determination. In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380–81
`(Fed. Cir. 2016).
`
`
`4 Patent Owner does not contend in its Response that any such secondary
`considerations are present.
`
`18
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`IPR2017-00222
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`
`
`1. Level of Ordinary Skill in the Art
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(internal quotation and citation omitted). In that regard, Petitioner proffers,
`via its declarant, Dr. Forys, that a person having ordinary skill in the art
`would have “a B.S. degree in Electrical Engineering, Computer Science, or
`an equivalent field as well as at least 35 years of academic or industry
`experience in communications systems, particularly in messaging systems,
`data networks including VoIP and mobile telephony, or comparable industry
`experience.” Pet. 5 (citing Ex. 1003 ¶ 31). Patent Owner proffers that a
`person of ordinary skill in the art would have a B.S. degree related to
`computer technology and two years of experience with communications
`technology, or four years of experience without a degree. PO Resp. 6 (citing
`Ex. 2001 ¶ 12). Dr. Easttom disagrees with the level of ordinary
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