throbber
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., SNAP INC., FACEBOOK, INC.,
`and WHATSAPP, INC.,1
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,2
`Patent Owner.
`____________
`
`Case IPR2017-00225
`Patent 8,995,433 B2
`____________
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`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 Snap Inc. filed a petition and motion for joinder in IPR2017-01611, which
`we granted. Paper 12. Facebook, Inc. and WhatsApp, Inc., filed a petition
`and motion for joinder in IPR2017-01634, which we granted. Paper 13.
`Thus, these entities, as captioned, are joined, as Petitioner, to this
`proceeding.
`2 An updated Mandatory Notice filed by Patent Owner pursuant to 37 C.F.R.
`§ 42.8(a)(2) states that Uniloc Luxembourg S.A. is the Patent Owner. Paper
`25.
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`IPR2017-00225
`Patent 8,995,433 B2
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`
`I.
`INTRODUCTION
`In this inter partes review, instituted pursuant to 35 U.S.C. § 314,
`Petitioner, as listed in the caption above, challenges the patentability of
`claims 16 and 8 of U.S. Patent No. 8,995,433 B2 (Ex. 1001, “the ’433
`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 not shown by a preponderance of the evidence that claims 16
`and 8 (“the challenged claims”) of the ’433 patent are unpatentable.
`
`A.
`PROCEDURAL HISTORY
`Apple Inc. filed a Petition to institute inter partes review of claims 1–
`6 and 8 of the ’433 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 all challenged claims. Paper 7
`(“Institution Decision” or “Dec”). Snap Inc., Facebook, Inc., and
`WhatsApp, Inc. are joined to this proceeding pursuant to our grant of
`petitions and motions for joinder filed in IPR2017-01611 and IPR2017-
`01634. Papers 12, 13.
`After institution, Patent Owner filed a Patent Owner Response.
`Paper 11 (“PO Resp.”). And Petitioner filed a Reply. Paper 15 (“Reply”).
`We heard oral arguments on February 8, 2018. A transcript of the hearing
`has been entered into the record. Paper 26 (“Tr.”).
`
`B.
`RELATED MATTERS
`The parties indicate that the ’433 patent is involved in Uniloc USA,
`Inc. v. Apple, Inc., Case No. 6-16-cv-00638 (E.D. Tex.), Uniloc USA, Inc. v.
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`Snap Inc., 2-16-cv-00696-JRG (E.D. Tex.), Uniloc USA, Inc. v. Facebook,
`Inc., 2-16-cv-00728-JRG (E.D. Tex.), Uniloc USA, Inc. v. WhatsApp, Inc.,
`2-16-cv-00645-JRG (E.D. Tex.), and other proceedings. Pet. 7577; Paper
`28.
`
`The ’433 patent also has been the subject of multiple petitions for
`inter partes review filed by various petitioners. Paper 28 at 3. We mention
`here that the ’433 patent is also the subject matter of IPR2017-01427 and
`IPR2017-01428, filed by two Petitioner entities in this proceeding:
`Facebook, Inc., and WhatsApp, 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 25.
`
`D. THE ’433 PATENT (EX. 1001)
`The ’433 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, 1:1923. The ’433 patent acknowledges that “[i]nstant
`text messaging is [] known” in the VoIP and public switched telephone
`network (“PSTN”) environments, with its 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 2:3542. In one
`embodiment, such as depicted in Figure 2 (reproduced below), the system of
`the ’433 patent involves an instant voice message (IVM) server and IVM
`clients. Id. at 7:2122.
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`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 6:65–7:6,
`7:2749. 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 7:4953. In one embodiment, when in “record mode,” the user of an
`IVM client selects one or more IVM recipients from a list. Id. at 8:25. 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 8:1215. “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
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`ready to be sent to the selected recipients.” Id. at 8:1922. 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 8:2526. Only the available IVM recipients,
`currently connected to the IVM server, will receive the instant voice
`message. Id. at 8:3638. 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 8:3843.
`The ’433 patent also describes an “intercom mode” of voice messaging. Id.
`at 11:3437. The specification states that the “intercom mode” represents
`real-time instant voice messaging. Id. at 11:3738. 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 11:3841.
`Successive portions of the instant voice message are written to the one or
`more buffers. Id. at 11:4146. 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 11:4659.
`
`E. REPRESENTATIVE CLAIM
`Of the challenged claims, claims 1 and 6 are independent. Each of
`claims 25 and 8 depends directly or indirectly from claim 1. Claim 1 is
`representative:
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`1. A system comprising:
`an instant voice messaging application including a client
`platform system for generating an instant voice message
`and a messaging system for transmitting the instant voice
`message over a packet-switched network via a network
`interface;
`wherein the instant voice messaging application displays a list
`of one or more potential recipients for the instant voice
`message;
`wherein the instant voice messaging application includes a
`message database storing the instant voice message,
`wherein the instant voice message is represented by a
`database record including a unique identifier; and
`wherein the instant voice messaging application includes a file
`manager system performing at least one of storing,
`deleting and retrieving the instant voice messages from
`the message database in response to a user request.
`Ex. 1001, 23:65–24:15.
`
`F. INSTITUTED GROUNDS OF UNPATENTABILITY
`We instituted inter partes review based on the following prior art
`(Dec. 2627):
`a) Abburi: U.S. Patent Appl. Pub. No. US 2003/0147512 A1,
`published Aug. 7, 2003, filed in the record as Exhibit 1005;
`
`b) Holtzberg: U.S. Patent No. 6,625,261 B2, issued Sept. 23, 2003,
`filed in the record as Exhibit 1007;
`
`c) Vuori: U.S. Patent Appl. Pub. No. US 2002/0146097 A1,
`published Oct. 10, 2002, filed in the record as Exhibit 1009;
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`d) Logan: U.S. Patent No. 5,732,216, issued Mar. 24, 1998, filed in
`the record as Exhibit 1008; and
`
`e) Väänänen: U.S. Patent No. 7,218,919 B2, issued May 15, 2007,
`filed in the record as Exhibit 1006.
`
`The trial involves the following obviousness grounds:
`Challenged
`Claim(s)
`1, 2, 4, and 8
`3
`5 and 6
`1, 2, 46, and 8
`3
`
`Reference(s)
`Abburi and Holtzberg
`Abburi, Holtzberg, and Vuori
`Abburi, Holtzberg, and Logan
`Väänänen and Holtzberg
`Väänänen, Holtzberg, and Vuori
`
`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. (“First Forys Declaration”); Ex. 1019, Supplemental
`Declaration of Leonard J. Forys, Ph.D (“Reply 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
`The Board interprets claims using the “broadest reasonable
`construction in light of the specification of the 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).
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`In our Decision on Institution, we did not construe expressly any term.
`Dec. 7. During trial, Patent Owner argues for construction of the term
`“instant voice messaging application,” recited in claims 1 and 6. PO Resp.
`89. In particular, Patent Owner proposes that the plain reading of the claim
`language yields an application that is located at the client. Id. at 9.
`Petitioner responds that the application is not restricted to a single device,
`among other arguments. Reply 3. The argument is not only directed to the
`location of the “instant voice messaging application.” Rather, the dispute
`arises because claim 1 recites a message database as follows: “the instant
`voice messaging application includes a message database.” See, e.g., PO
`Resp. 10 (Patent Owner arguing that the “message database” is at the
`originating client); Reply 35 (Petitioner promoting a distributed application
`view of the invention to argue that the message database is not restricted to
`either a single device or the client).
`First, we address whether the “instant voice messaging application” is
`restricted to any particular location. Then we address the “message
`database.”
`
`1. Instant voice messaging application
`Both challenged independent claims recite this term. Following the
`plain language, both claims require that the “instant voice messaging
`application”:
`i.
`Include a “client platform system for generating an instant
`voice message”;
`Include a “messaging system” for transmitting the instant voice
`message over a packet-switched network via a network
`interface;
`
`ii.
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`iii. Display a “list of one or more potential recipients for the instant
`voice message”; and
`iv.
`Include a “file manager system.”
`With regard to the “message database,” claim 1 requires that the
`“instant voice messaging application” include a message database storing the
`instant voice message. But claim 6 does not include the same limitation.
`Instead, claim 6 recites the “message database” only in connection with the
`storing, deleting, and retrieving functions of the “file manager system.”
`Thus, from the plain language of these claims, we understand claim 1
`to require expressly that the message database is included in the “instant
`voice messaging application,” while claim 6 does not recite this inclusion
`explicitly. A further point of distinction between the independent claims is
`claim 6’s language that the “instant voice messaging application” includes
`“a compression/decompression system for compressing the instant voice
`messages to be transmitted over the packet-switched network and
`decompressing the instant voice messages received over the packet-switched
`network.” Claim 1 omits this limitation. Therefore, claims 1 and 6 are not
`identical in scope, but have substantial overlap in what constitutes an
`“instant voice messaging application.”
`From our review of the claim language alone, it is reasonable to
`conclude that all of the recited functions of the components of the “instant
`voice messaging application” appear to be performed at a client of the
`recited system (as opposed to a server or other network component). See
`Dec. 18 (noting at institution that under a plain reading of the claim
`language the “instant voice messaging application” is directed to the
`application at the client). To start with, the client platform system, the
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`messaging system, the displayed list, and the compression/decompression
`system all are involved in generating and transmitting the instant voice
`message, whereas the “message database” and the “file manager system” are
`involved post-transmission of the instant voice message, i.e., storing,
`deleting, and retrieving instant voice messages. Thus, although the client
`platform system is the only component expressly assigned to the client, the
`functions of the remaining components logically are included, at a
`minimum, where the instant voice messages are generated, transmitted, and
`managed in storage, namely, at the client. Without an express claim
`requirement of the application’s location, however, we look to the
`Specification to give context to our understanding of the claim language
`with regard to the location and operation of the “instant voice messaging
`application.”
`We begin with recognizing that the Specification neither defines nor
`provides examples of the “instant voice messaging application.” The
`Specification provides two relevant embodiments, depicted in Figures 3 and
`4.
`
`In connection with the first of the embodiments, Figure 3 (reproduced
`below) and its corresponding description describe IVM client 208, its
`components, and its relationship to IP network 204 and local IVM server
`202.
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`Figure 3 depicts an example of the architecture in IVM client 208 for
`enabling instant voice messaging. Ex. 1001, 6:3031; 12:68. The recited
`components of the “instant voice messaging application” are all included
`within the depicted IVM client 208: client platform 302 (for generating an
`instant voice message); messaging system 230 (for messaging between IVM
`client 208 and IVM server 202); file manager 308 (which services requests
`from the user to record, delete or retrieve messages to/from message
`database 310); compression/decompression 318 (for
`compressing/decompressing the outgoing/incoming audio files). Id. at
`12:852. With regard to this embodiment, the Specification also describes
`IVM client 208 as a “general-purpose programmable computer.” Id. at
`12:1314. Thus, a person of ordinary skill in the art, according to the expert
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`testimony of record, would conclude that the “instant voice messaging
`application” is, at a minimum, a program operating at the general-purpose
`programmable computer of the IVM client depicted in Figure 3, where the
`functions of the program align with the recited components. See Ex. 1003
`¶ 94 (Dr. Forys stating that an “application” is a “set of coded instructions
`that enable a machine (e.g., a computer) to perform a sequence of
`operations”); Ex. 2001 ¶ 31 (Mr. Easttom stating that an “application” is a
`specialized program designed to permit an end user to interface with a
`computer to perform a coordinated group of tasks applicable to the purpose
`of the application). Beyond the understanding of an “application” to a
`person of ordinary skill in the art within the context of the ’433 patent, we
`do not rely further on the expert testimony.
`With regard to the second embodiment, Figure 4 of the ’433 patent,
`reproduced below, depicts details of local IVM server 202, illustrated
`generally in Figure 3.
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`Figure 4 illustrates local IVM server 202 that comprises server
`communication platform 402, messaging system 436, and database 414.
`Ex. 1001, 13:4150. Client manager 406 controls IVM clients 206, 208,
`“providing contact presence (connection) information and message
`scheduling and delivery.” Id. at 15:25. Database manager 412 accesses
`database 414 and services requests to add, update, delete or retrieve database
`records from database 414. Id. at 13:5354, 14:23. And database 414
`“stores users (e.g., IVM clients as well as legacy telephone clients) that are
`known to the IVM server 202 via the database manager 412.” Id. at
`13:6264. Lastly, messaging system 436 communicates with IVM clients
`206, 208 via the network and communicates with server engine 304 via
`message objects. Id. at 13:5961, 14:57. The message objects
`communicate actions to the server engine, such as determining whether an
`IVM client is awake, disconnecting from the IVM client, processing an IVM
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`client message, and notifying IVM clients if the server goes down. Id. at
`14:815.
`From the above descriptions of Figures 3 and 4, we understand that
`the components of Figure 3 perform different functions from the
`components of Figure 4. Figure 4 addresses the server messaging functions
`and the management of client connections to the server. In contrast, Figure
`3 focuses on the client device functions with regard to generating,
`transmitting, receiving, and storing instant voice messages, among others.
`Accordingly, the embodiment of Figure 3 is highly relevant to the scope of
`the independent claims 1 and 6 in that the embodiment provides the context
`for the operation of the recited components of the “instant voice messaging
`application.” Figure 3 also provides the context for the recited “application”
`as being located at the client device (as opposed to the server).
`Petitioner has argued that the “instant voice messaging application” is
`not located at any particular location or device because the broadest
`reasonable interpretation of the claim language does not compel such an
`interpretation, and a “distributed” application resides in more than one
`physical location. Reply 23 (citing Ex. 1018, 32:1618). Most notably,
`Petitioner argues that IVM client 208 is part of a larger global instant
`messaging system 500 (illustrated in Figure 5), where transport servers (604,
`606) each includes a message database in which the instant voice message is
`saved. Reply 45 (citing Ex. 1001, Fig. 7, 22:5358). Because the message
`database may be located in these transport servers, Petitioner contends the
`“instant voice messaging application,” which according to claim 1 includes a
`message database, cannot be located solely at the client device. Id.
`According to Petitioner, relying on Figure 3 to construe the scope of the
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`“instant voice messaging application” as being at the client device would be
`akin to importing that particular embodiment into the claims. Id.
`We do not agree with Petitioner. Although the ’433 patent
`Specification provides for a message database at the transport server, that
`database is for storing the messages of the one or more recipients that are not
`available, and, therefore, cannot receive instant voice messages. Ex. 1001,
`22:5363. When a user becomes available, database (storage) manager 710
`retrieves the undelivered instant voice messages from the database, and
`client manager 706 delivers the messages to the designated, now available,
`recipients. Id. Thus, message database 710 at the transport server stores and
`retrieves instant voice messages upon command from the client manager
`706, whereas message database 310, of Figure 3, stores and retrieves instant
`voice messages upon command of file manager 308. This distinction is
`significant because claims 1 and 6 directly link the recited “message
`database” to the “file manager,” and no other component of the disclosed
`system. Further, the recited “file manager” performs the “storing,” for
`example, “in response to a user request,” according to the claim language of
`claims 1 and 6. The ’433 patent Specification lacks any description of the
`transport server’s message database or database manager storing instant
`voice messages in response to a user request. Indeed, the transport server
`does not store instant voice messages in the database in response to a user’s
`request, because it only stores messages in the database when the recipient is
`unavailable. In fact, the message database of the transport server stores
`messages at the request of client manager 706, and on condition that a
`recipient is not available. Ex. 1001, 22:5363; see also id. at 8:3843
`(describing the local server in a similar manner, delivering messages to the
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`available recipients and temporarily storing the instant voice messages for
`unavailable recipients).
`Further, the Specification contains no disclosure of “distributed”
`applications or programs or any other indication that the “instant voice
`messaging application” is a “distributed” application with components
`placed throughout the system (at clients and servers). Petitioner’s reliance
`on Figure 7 as supporting the contention of a “distributed” application, as
`discussed above, is unavailing. Other than having the same name, the
`message database of the transport servers (Figure 7) is a different message
`database from the one recited in claims 1 and 6 and described in Figure 3.
`Finally, Dr. Forys’s testimony regarding the scope of the term
`“application,” as not restricted to the client device, is also unpersuasive.
`Dr. Forys opines that the ’433 patent does not describe any restriction of the
`application to be in any particular device, and that operations on multiple
`computer devices may fall within the context of the same overarching
`application. Ex. 1003 ¶ 94 (opining that the message database and the file
`management system may be on different devices than the client platform
`system). These explanations broaden the claim language to an unreasonable
`extent. 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. “[T]he protocol of giving claims their broadest
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`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).
`As explained above, the ’433 patent discloses the components of the
`instant voice messaging application as being client-based. Contrary to
`Petitioner’s argument and Dr. Forys’s testimony, none of the disclosed
`servers includes the components with the corresponding functions recited by
`the claims. Thus, from a reading of the claim language in the context of the
`Specification, it is unreasonable to broaden the “instant voice messaging
`application” as existing at a server or as having any of its recited
`components “distributed” throughout the system.
`In reaching this conclusion, we are also mindful that,
`[t]he 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 Int’l, 871 F.3d at 1382–83 (citations and internal quotation marks
`omitted); see also In re Suitco Surface, Inc., 603 F.3d 1255, 1259–60 (Fed.
`Cir. 2010). Under this guidance, we do not give Dr. Forys’s testimony (Ex.
`1019 ¶ 94) any weight to the extent that it invites an interpretation that is
`inconsistent with the Specification. That testimony also urges reliance on
`the ’433 patent Specification as not precluding the broad, and factually
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`unsupported, reading of the claim proposed by Petitioner. Instead, we rely
`on the description of the invention as stated in the ’433 patent Specification,
`especially with respect to Figure 3, and the plain reading of the claim
`language. Suitco, 603 F.3d at 1260 (“[C]laims should always be read in
`light of the specification and teachings in the underlying patent.”).
`In sum, we determine that the “instant voice messaging application” is
`a client-based program. Our inquiry, however, does not end here, because
`Patent Owner argues that the claims are further directed to an originating
`client. PO Resp. 1213; see also id. at 28 (arguing that Väänänen does not
`meet the claims because the cited disclosure focuses on the recipient not the
`sender). Patent Owner’s arguments in this regard focus on the claim
`language and the antecedent basis for the recited “instant voice message.”
`Id. at 12. In sum, Patent Owner contends that the claim recites “generating
`an instant voice message,” and, therefore, because the claim recites
`subsequently “the instant voice message,” the claim refers only to the
`“instant voice messaging application” that generates and transmits the
`instant voice message. See id. In other words, Patent Owner urges that we
`interpret the “instant voice messaging application” and its recited
`components as handling only instant voice messages that the client device
`sends, i.e. the “instant voice messaging application” is not met by pointing to
`a receiving device in the prior art.
`The main problem with Patent Owner’s antecedent basis argument is
`that the claim is not internally consistent with the antecedents for the terms
`“instant voice message” and “instant voice messages.” For instance, the
`claims recite “an[/the] instant voice message” (singular) in referring to
`generating, transmitting, and displaying. Claim 1 then recites storing “the
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`instant voice message” (singular). However, claims 1 and 6 also recite
`storing, deleting and retrieving “the instant voice messages” (plural) from
`the message database in response to a user request. There is no indication
`that the plural “instant voice messages” refer only to generated and
`transmitted messages. Indeed, the claim language does not support this
`narrow interpretation. Although claim 6 recites compressing “the instant
`voice messages” (plural) to be transmitted, it recites decompressing “the
`instant voice messages [(plural)] received over the packet-switched
`network.”
`Therefore, simply relying on antecedent basis is inconclusive because
`for some functions the claim refers to the singular (e.g., generated and
`transmitted) instant voice message, while for other functions (e.g., storing,
`deleting, and retrieving) the claim refers to plural instant voice messages.
`Another interpretation of the claim is more reasonable—that the “instant
`voice messaging application” of claims 1 and 6 are on a device that both
`originates and receives instant voice messages. While the “instant voice
`messaging application” requires certain functions characteristic of the
`originating device (e.g., generating and transmitting the instant voice
`message), the claim language does not limit the “instant voice messaging
`application,” in all respects, to the originating device. For example, the
`claims encompass a “file manager system” linked to received instant voice
`messages, in addition to transmitted instant voice messages. And claim 6
`further recites decompressing received instant voice messages, in addition to
`compressing transmitted instant voice messages.
`The Specification supports this interpretation of the claims. The
`’433 patent describes the “message database” as storing both “the received
`
`19
`
`

`

`IPR2017-00225
`Patent 8,995,433 B2
`
`and recorded instant voice messages” and the “file manager” as accessing
`the message database and servicing requests from the user to “record, delete
`or retrieve messages to/from the message database.” Ex. 1001, 12:3642.
`Thus, the recited “message database” (included in the “instant voice
`messaging application” in claim 1) stores the generated and transmitted
`instant voice message. However, the “file manager system” limitation,
`recited in claims 1 and 6, performs at least one of storing, deleting, and
`retrieving instant voice messages (plural) destined for or stored at the
`“message database,” regardless of whether the instant voice messages
`comprise messages transmitted from or received at the client device. The
`Specification broadly describes the “message database” in this manner—
`storing both types of messages: sent and received by the client. Ex. 1001,
`12:3642.
`Accordingly, in the context of the Specification and following the
`natural reading of the claim language, giving the plural words their
`appropriate plain meaning, the “instant voice messaging application” is a
`client-based program, not limited to only an originating device, as discussed
`above.
`
`2. Messaging Database
`As stated above, claims 1 and 6 have differing recitations of a
`“messaging database.” Claim 1 recites the “instant voice messaging
`application” as including the “message database,” while claim 6 is silent in
`this regard. Neither party argues that the scope of these two claims is
`different, even though the claims include different language for this
`limitation. See, e.g., Pet. 44 (Petitioner relying, for claim 6, on the same
`arguments and disclosures as for claim 1); see also id. at 58 (Petitioner
`
`20
`
`

`

`IPR2017-00225
`Patent 8,995,433 B2
`
`arguing for the Väänänen-based ground that it would have been obvious to
`store voice messages at the subscriber terminal); Tr. 28:817 (Petitioner
`arguing that all presented grounds allege that the functionality existed within
`the client device). Accordingly, we need not resolve whether the “message
`database” has different scope for claim 6.
`
`B. ANALYSIS OF ASSERTED GROUNDS
`All of Petitioner’s asserted grounds are based on obviousness. A
`patent claim is unpatentable as obvious under 35 U.S.C. § 103(a) if the
`differences between the claimed subject matter and 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) when in evidence, objective
`evidence of nonobviousness. 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 doe

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