Trials@uspto.gov
`571.272.7822
`
`
`Paper No. 7
`
` Filed: December 4, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC. and WHATSAPP, INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01523
`Patent 7,535,890 B2
`____________
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BEGLEY, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`Facebook, Inc. and WhatsApp, Inc. (collectively, “Petitioner”) filed a
`Petition requesting inter partes review of claims 1–6, 9, 40–43, and 46 of
`U.S. Patent No. 7,535,890 B2 (Ex. 1001, “the ’890 patent”). Paper 2
`(“Pet.”). Uniloc USA, Inc. and Uniloc Luxembourg S.A. (collectively,
`“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
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`Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be
`instituted unless “the information presented in the petition . . . and any
`response . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” Having considered the Petition and the Preliminary Response, we
`determine that the information presented does not show that there is a
`reasonable likelihood that Petitioner would prevail in establishing the
`unpatentability of any of the challenged claims of the ’890 patent. For the
`reasons given below, we deny institution of an inter partes review.
`I. BACKGROUND
`A. RELATED MATTERS
`Petitioner and Patent Owner represent that the ’890 patent is asserted
`in numerous actions before the U.S. District Court for the Eastern District of
`Texas, including actions filed against Petitioner (Case Nos. 2-16-cv-00728
`(Facebook, Inc.) and 2-16-cv-00645 (WhatsApp, Inc.)). Pet. 2–3; Paper 4, 2.
`In addition, the ’890 patent is the subject of several inter partes
`review proceedings before the Office. In IPR2017-00221, filed by
`Apple Inc., the Board instituted inter partes review of claims 1–6, 14, 15,
`17–20, 28, 29, 31–34, 40–43, 51–54, 62–65, and 68 of the ’890 patent on
`May 25, 2017. Apple Inc. v. Uniloc USA, Inc., Case IPR2017-00221 (PTAB
`May 25, 2017) (Paper 9). On June 16, 2017, Snap Inc. and Petitioner filed
`IPR2017-01612 and IPR2017-01636, respectively, both of which included a
`motion for joinder with IPR2017-00221. The Board instituted review in
`these proceedings and joined Snap Inc. and Petitioner as petitioners in
`IPR2017-00221. Snap Inc. v. Uniloc Luxembourg S.A., Case
`IPR2017-01612 (PTAB Oct. 3, 2017) (Paper 11); Facebook, Inc. v. Uniloc
`Luxembourg S.A., Case IPR2017-01636 (PTAB Oct. 3, 2017) (Paper 10).
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`Moreover, on June 2, 2017—concurrent with the instant Petition—
`Petitioner filed IPR2017-01524, which challenges claims 14, 15, 17–20, 23,
`28, 29, 31–34, 37, 51–54, 57, 62–65, and 68 of the ’890 patent. See Pet. 1.
`The ’890 patent also is at issue in IPR2017-01802 (filed by Samsung
`Electronics America, Inc.), IPR2017-02082, IPR2017-02083, and
`IPR2017-02084 (filed by Google, Inc.)—in which the Board has not yet
`issued an institution decision. See Samsung Elecs. Am., Inc. v. Uniloc
`Luxembourg S.A., Case IPR2017-01802 (PTAB), Paper 1; Google, Inc. v.
`Uniloc Luxembourg S.A., Cases IPR2017-02082, IPR2017-02083,
`IPR2017-02084 (PTAB), Paper 2.
`Further, the ’890 patent previously was the subject of IPR2017-00220,
`filed by Apple Inc., in which the Board denied institution. See Pet. 1.
`B. THE ’890 PATENT
`The ’890 patent explains that “[v]oice messaging” and “instant text
`messaging” in both the Voice over Internet Protocol (“VoIP”) and public
`switched telephone network environments are known. Ex. 1001, 2:11–35.
`In prior art instant text messaging systems, a server presents a user of a
`client terminal with a “list of persons who are currently ‘online’ and ready to
`receive text messages,” the user “select[s] one or more” recipients and types
`the message, and the server immediately sends the message to the respective
`client terminals. Id. at 2:23–35. According to the ’890 patent, however,
`“there is still a need in the art for . . . a system and method for providing
`instant VoIP messaging over an IP network,” such as the Internet.
`Id. at 1:6–11, 2:36–48, 6:37–39.
`In one embodiment, the ’890 patent discloses local instant voice
`messaging (“IVM”) system 200, depicted in Figure 2 below. Id. at 6:12–14.
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`As illustrated in Figure 2, local packet-switched IP network 204, which may
`be a local area network (“LAN”), “interconnects” IVM clients 206, 208 and
`legacy telephone 110 to local IVM server 202. Id. at 6:40–61; see id.
`at 7:13–14, 7:51–55. Local IVM server 202 enables instant voice messaging
`functionality over network 204. Id. at 7:53–55.
`In “record mode,” IVM client 208 “displays a list of one or more IVM
`recipients,” provided and stored by local IVM server 202, and the user
`selects recipients from the list. Id. at 7:47–49, 7:55–61. IVM client 208
`then transmits the selections to IVM server 202 and “records the user’s
`speech into . . . digitized audio file 210 (i.e., an instant voice message).” Id.
`at 7:61–8:1.
`When the recording is complete, IVM client 208 transmits audio
`file 210 to local IVM server 202, which delivers the message to the selected
`recipients via local IP network 204. Id. at 8:5−19. “[O]nly the available
`IVM recipients, currently connected to . . . IVM server 202, will receive the
`instant voice message.” Id. at 8:23−25. IVM server 202 “temporarily saves
`the instant voice message” for any IVM client that is “not currently
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`connected to . . . local IVM server 202 (i.e., is unavailable)” and “delivers
`it . . . when the IVM client connects to . . . local IVM server 202 (i.e., is
`available).” Id. at 8:24–29; see id. at 9:7–11. Upon receiving the instant
`voice message, the recipients can audibly play the message. Id. at 8:19–22.
`C. ILLUSTRATIVE CLAIM
`Of the challenged claims, claims 1 and 40 of the ’890 patent are
`independent. Claim 1, reproduced below, is illustrative:
`1. An instant voice messaging system for delivering instant
`messages over a packet-switched network, the system comprising:
`a client connected to the network, the client selecting one or more
`recipients, generating an instant voice message therefor, and
`transmitting the selected recipients and the instant voice
`message therefor over the network; and
`a server connected to the network, the server receiving the selected
`recipients and the instant voice message therefor, and
`delivering the instant voice message to the selected recipients
`over the network, the selected recipients enabled to audibly
`play the instant voice message, and the server temporarily
`storing the instant voice message if a selected recipient is
`unavailable and delivering the stored instant voice message to
`the selected recipient once the selected recipient becomes
`available.
`Ex. 1001, 23:55–24:3.
`D. EVIDENCE OF RECORD
`The Petition relies upon the following asserted prior art references:
`U.S. Patent No. 6,750,881 B1 (filed Feb. 24, 1997) (issued June 15, 2004)
`(Ex. 1004, “Appelman”);
`PCT International Application Publication No. WO 01/11824 A2 (published
`Feb. 15, 2001) (Ex. 1003, “Zydney”);1
`
`
`1 Exhibit 1003 includes line numbers that were added by Petitioner. Pet. v,
`10–11. Petitioner also submitted the original version of Zydney, without
`line numbers, as Exhibit 1013. Id. at vi, 11.
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`J.P. Martin-Flatin, Push vs. Pull in Web-Based Network Management, in
`INTEGRATED NETWORK MANAGEMENT VI (Morris Sloman et al. eds.,
`1999) (Ex. 1009, “Martin-Flatin”); and
`DEBRA LITTLEJOHN SHINDER, COMPUTER NETWORKING ESSENTIALS (2002)
`(Ex. 1008, “Shinder”).
`In addition, Petitioner supports its contentions with the Declaration of Tal
`Lavian, Ph.D. (Ex. 1002). Patent Owner relies on the Declaration of Val
`DiEuliis, Ph.D. (Ex. 2001).
`E. ASSERTED GROUNDS OF UNPATENTABILITY
`Petitioner asserts the following grounds of unpatentability. Pet. 5.
`Challenged Claim(s)
`Basis
`Reference(s)
`1, 3, 5, 6, 9, 40, 42, 43, 46 § 103 Zydney
`2
`§ 103 Zydney and Shinder
`4, 41
`§ 103 Zydney, Appelman, and Martin-Flatin
`
`II. ANALYSIS
`A. CLAIM CONSTRUCTION
`The Board interprets claim terms of an unexpired patent using the
`“broadest reasonable construction in light of the specification of the patent.”
`37 C.F.R. § 42.100(b); see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct.
`2131, 2144–46 (2016) (upholding the use of the broadest reasonable
`interpretation standard). We presume a claim term carries its “ordinary and
`customary meaning,” which is the meaning “the term would have to a person
`of ordinary skill in the art” at the time of the invention. In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (citation omitted).
`Petitioner does not proffer a construction for any claim term of the
`’890 patent. Pet. 9. Patent Owner proposes constructions for “transmitting
`the selected recipients and the instant voice message therefor” and
`“receiving the selected recipients and the instant voice message therefor,” as
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`recited in independent claims 1 and 40. See Prelim. Resp. 6–10, 20–21.
`Based on our review of the record before us and the dispositive issues in our
`determination of whether to institute inter partes review, we determine that
`no claim terms of the ’890 patent require an express construction to resolve
`the issues presented by the patentability challenges. See Vivid Techs., Inc. v.
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that
`only claim terms that “are in controversy” need to be construed and “only to
`the extent necessary to resolve the controversy”).
`B. ALLEGED OBVIOUSNESS OVER ZYDNEY ALONE
`Petitioner argues that Zydney renders obvious claims 1, 3, 5, 6, 9, 40,
`42, 43, and 46 of the ’890 patent. Pet. 25–52. Patent Owner disputes
`Petitioner’s obviousness assertions. Prelim. Resp. 11–27.
`1. Overview of Zydney
`Zydney discloses “a system and method for voice exchange and voice
`distribution” that allows software agent 22, in conjunction with central
`server 24, to “send, receive and store messages using voice containers.”
`Ex. 1003, 1:19–20, 10:20–11:1, Fig. 1A. In the disclosed “pack and send
`mode of operation,” the sender “selects one or more intended recipients,”
`and sending software agent 22 then “acquire[s], compresse[s,] and . . .
`store[s]” a “message . . . in a voice container[].” Id. at 11:1–6, 14:18–19; see
`id. at 14:2–6, Figs. 4, 6–7. Next, sending software agent 22 transmits the
`voice container over the Internet to the one or more recipient software
`agents 28, either directly or indirectly through central server 24. Id. at 11:1–
`6; see id. at 1:20–2:5, 5:3–5, 12:20–23, 15:15–21, 16:7–10, Fig. 1A. Each
`recipient software agent then “opens” or “unpack[s] the voice container and
`play[s] the message.” Id. at 13:19–22, 14:14–16.
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`Zydney defines “[t]he term ‘voice container[]’” to “refer[] to a
`container object that contains no methods, but contains voice data or voice
`data and voice data properties.” Id. at 12:6–8. The “voice data properties
`components” include originator’s code 302, one or more recipient’s
`code 304, originating time 306, delivery time(s) 308, number of plays 310,
`source 312, reuse restrictions 314, delivery priority 322, session values 324,
`and repeating information 330. Id. at 23:1–12, Fig. 3. The voice container
`also contains “information concerning codec type, size, sample rate, and
`data.” Id. at 23:10–11.
`
`2. Discussion
`Challenged independent claims 1 and 40 and dependent claims 3, 5, 6,
`9, 42, 43, and 46 of the ’890 patent each repeatedly recite an “instant voice
`message.” Ex. 1001, 23:55–24:37, 28:21–29:16. Independent claim 1 is
`directed to “[a]n instant voice messaging system for delivering instant
`messages over a packet-switched network,” whereas independent claim 40 is
`directed to a corresponding “method for instant voice messaging over a
`packet-switched network.” Id. at 23:55–24:3, 28:21–40. These claims recite
`numerous specific requirements for the claimed “instant voice message”
`regarding its generation at the client, transmission, receipt by the server,
`temporary storage, delivery from the server to selected recipients, and
`audible playing by the recipients. Id. Moreover, the challenged dependent
`claims, with the exception of claim 3, feature additional requirements
`regarding the “instant voice message.” See id. at 24:6–7, 24:13–21, 24:34–
`37, 28:47–59, 29:11–16. For example, claims 6 and 43 additionally recite
`that “the client records,” or the client “recording,” “the instant voice
`message in an audio file,” which is transmitted to and delivered by the
`server. Id. at 24:16–21, 28:51–59. In addition, claims 9 and 46 require that
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`“the client is enabled to attach,” or the client “attaching,” “one or more files
`to the instant voice message.” Id. at 24:34–36, 29:11–14.
`Petitioner argues that Zydney teaches the “instant voice message”
`recited in challenged claims 1, 3, 5, 6, 9, 40, 42, 43, and 46, including each
`of the particular requirements for this claim element. See generally Pet. 25–
`52. In the Petition and Dr. Lavian’s supporting Declaration, however,
`Petitioner interchangeably maps—without explanation—the “instant voice
`message” of the challenged claims to either: (1) Zydney’s voice container or
`(2) the voice data or message that is stored in Zydney’s voice container.2
`Specifically, in addressing independent claim 1 of the ’890 patent, the
`Petition fluctuates, without justification, between these two theories for the
`alleged identity of the claimed “instant voice message” in its analysis of
`different limitations and even within its analysis of the same limitation.
`First, the Petition alleges that Zydney’s voice container qualifies as and
`equates to the claimed “instant voice message” in its analysis of the
`preamble and the “temporarily storing” limitation, as well as in part of its
`analysis of the “transmitting” limitation. Pet. 25–26, 35, 41. In its analysis
`of the preamble, the Petition affirmatively represents that “Zydney makes
`clear that the ‘voice containers’ qualify as ‘instant voice messages’” and that
`Zydney’s system “allows clients to create and transmit instant voice
`messages in the form of ‘voice containers.’” Id. at 25–26 (emphases, other
`
`
`2 We note that our analysis and conclusion regarding Petitioner’s
`inconsistent mapping of the claimed “instant voice message” are consistent
`with our determinations in the companion related case IPR2017-01524,
`which Petitioner filed concurrently with the instant Petition and which also
`challenges claims of the ’890 patent as obvious based on Zydney. See
`Pet. 1; Facebook, Inc. v. Uniloc USA, Inc., Case IPR2017-01524, slip op.
`at 6, 10–22, 33–35 (PTAB Dec. 4, 2017) (Paper 7).
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`than for first “instant voice messages,” added). Likewise, the Petition later
`equates Zydney’s voice container with the claimed “instant voice
`message”—referring to Zydney’s “voice container (instant voice message)”
`and similarly, to “the instant voice message (voice container)”—in its
`analysis of the “transmitting” and “temporarily storing” limitations. Id.
`at 35, 41.
`Second, in its analysis of claim 1’s “generating,” “receiving,” and
`“audibly play” limitations, as well as in a different part of its analysis of the
`“transmitting” limitation than cited above, the Petition alleges that the
`“instant voice message” is the voice data or message that is “stored in,”
`“contained in,” or “include[d]” in Zydney’s voice container—rather than the
`voice container itself. Id. at 31–32, 35–36, 40–41. For instance, in
`addressing the “generating” and “transmitting” limitations, the Petition
`expressly represents that “[t]he instant voice message in Zydney is stored
`in,” or “contained in,” “a voice container,” based on Zydney’s explanation
`that “[t]he term ‘voice containers’ . . . refers to a container object that . . .
`contains voice data or voice data and voice data properties.” Id. at 31, 35–
`36 (second and third emphasis added, first and fourth emphasis added by
`Petitioner) (quoting Ex. 1003, 12:6–8). Further, for the “generating”
`limitation, the Petition alleges that Zydney’s “client generates the voice
`container that includes the instant voice message,” as demonstrated, inter
`alia, by Zydney’s descriptions in Figures 4 and 6 that the “client builds
`voice container with message” or “voice message.” Id. at 32–33 (emphasis
`added). Similarly, for the “receiving” limitation, the Petition alleges that
`Zydney’s “voice container . . . includes . . . the instant voice message.” Id.
`at 40 (emphasis added).
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`The Petition’s analysis of independent claim 40 shares Petitioner’s
`shifting mapping of the claimed “instant voice message” for claim 1. In
`particular, the Petition asserts that “there is no material difference between
`claims 1 and 40 for purposes of the application to Zydney.” Id. at 49–51.
`Thus, the Petition relies exclusively on its analysis of claim 1 in alleging that
`Zydney renders claim 40 obvious. Id. at 51 (“For the reasons explained
`above for claim 1, therefore, claim 40 is obvious over Zydney.”).
`As to challenged dependent claims 3, 5, 6, 9, 42, 43, and 46, the
`Petition’s mapping of the “instant voice message” likewise inexplicably
`vacillates. To start, because each of these claims depends from either
`independent claim 1 or 40, the Petition’s inconsistent allegations regarding
`the identity of the “instant voice message” of claims 1 and 40 in Zydney
`carry through to these claims. See Ex. 1001, 24:6–37, 28:47–29:16.
`Moreover, in addressing the additional limitations of several
`dependent claims that directly recite “the instant voice message,” the
`Petition again fluctuates its theory regarding the identity of the “instant voice
`message” without explanation. For example, in analyzing claims 5 and 42,
`the Petition equates the recited “instant voice message” with Zydney’s voice
`container by referring to Zydney’s “voice container (instant voice
`message).” Pet. 44, 51–52. In contrast, for claims 6 and 43, the Petition
`represents that “in creating a voice container,” Zydney’s client “record[s] the
`instant message in a voice file” and that “these voice recordings become part
`of the voice container file.” Id. at 44–45, 51–52 (emphases added).
`The Petition’s analysis of dependent claims 9 and 46 adds further
`confusion regarding which element of Zydney Petitioner is alleging
`corresponds to the recited “instant voice message.” Specifically, the Petition
`identifies Zydney’s voice container as an “audio file”—stating “[t]he client
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`system in Zydney can attach files such as . . . a ‘digitized greeting card’ or
`‘other data types’ to each audio file (voice container).” Id. at 46, 51–52
`(emphasis added, emphasis of “attach” omitted); see Ex. 1002 ¶ 170.
`Claims 9 and 46 do not feature “audio file” as a claim element. Ex. 1001,
`24:34–37, 29:11–16. Dependent claims 6 and 43, however, recite an “audio
`file” as a distinct element from the claimed “instant voice message”—e.g.,
`both recite that “the client records,” or the client “recording,” “the instant
`voice message in an audio file.” Id. at 24:16–21, 28:51–59.
`In addition, Dr. Lavian’s Declaration, which Petitioner offers in
`support of the Petition, compounds Petitioner’s contradictory allegations
`regarding the identity of the recited “instant voice message” in the Petition.
`Like the Petition, Dr. Lavian’s testimony vacillates between identifying the
`“instant voice message” as Zydney’s voice container and the voice data or
`message stored therein, and Dr. Lavian fails to explain this inconsistent
`mapping of the claim element. E.g., compare Ex. 1002 ¶¶ 87–88, 104, 111,
`135, 156, with id. ¶¶ 132, 162. For example, in addressing the preamble and
`the “generating” limitation of independent claim 1, Dr. Lavian equates
`Zydney’s voice containers with the claimed “instant voice message”—
`testifying that “Zydney makes clear that ‘voice containers’ qualify as
`‘instant voice messages,’” and correspondingly, Zydney’s “instant voice
`messages [are] in the form of” or “take[] the form of a voice container.” Id.
`¶¶ 87–88, 104 (emphasis omitted). Yet in his analysis of claim 6, which
`depends from claim 1, Dr. Lavian opines that “Zydney describes the process
`of the client recording an instant voice message in a voice container.” Id.
`¶ 162 (emphasis added); see Ex. 1001, 24:16–21.
`Moreover, Dr. Lavian’s supporting testimony often directly conflicts
`with the position stated in the Petition regarding the identity of the “instant
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`voice message” for the same limitation. For instance, as explained above,
`the Petition’s analysis of the “generating” and “transmitting” limitations of
`independent claim 1 alleges that the “[t]he ‘instant voice message’ in
`Zydney is stored in,” “include[d]” in, or “contained in the voice container.”
`Pet. 31–32, 35–36. In his testimony addressing these limitations, however,
`Dr. Lavian identifies the recited “instant voice message” as the voice
`container itself. In particular, Dr. Lavian opines that “[t]he ‘instant voice
`message’ in Zydney takes the form of a ‘voice container’” in his analysis of
`the “generating” limitation. Ex. 1002 ¶ 104. And for the “transmitting”
`limitation, Dr. Lavian again equates Zydney’s voice container with the
`recited “instant voice message” by referring to “the voice container (instant
`voice message).” Id. ¶ 111.
`The “instant voice message” claim element is central to the challenged
`claims, and the identity of the “instant voice message” in the alleged prior
`art, Zydney, is a critical component of Petitioner’s obviousness case—given
`that, as discussed above, the “instant voice message” is recited numerous
`times throughout challenged independent claims 1 and 40 and, thus, their
`dependent claims. Yet Petitioner offers no explanation for mapping the
`recited “instant voice message” to different elements of Zydney throughout
`its analysis of the challenged claims in the Petition and Dr. Lavian’s
`Declaration. Specifically, Petitioner does not proffer a construction of the
`claim term “instant voice message.” Pet. 9 (“The Petitioners do not contend
`that any term from the ’890 Patent requires an explicit construction in order
`to understand how the claims apply to the prior art cited below.”). Nor does
`Petitioner state that it is arguing in the alternative as to the alleged identity of
`the recited “instant voice message”—whether based on a claim interpretation
`or otherwise—or apply the alternative mappings of the “instant voice
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`message” consistently throughout its analysis of each claim limitation that
`requires an “instant voice message.” Nor does Petitioner argue that the
`elements of Zydney to which the Petition maps the recited “instant voice
`message,” i.e., Zydney’s voice container and the voice data or message
`stored therein, are equivalent.
`Not only has Petitioner failed to advance any argument that the
`elements Petitioner interchangeably identifies as the recited “instant voice
`message”—Zydney’s voice container and the voice data or message stored
`therein—are equivalent, but also these elements of Zydney are distinct in the
`context of Petitioner’s obviousness arguments. See Ex. 2001 ¶¶ 45, 48, 51
`(opining that Zydney’s voice container “is not the thing it holds,” i.e., voice
`or audio data, and contains information in addition to voice data, including
`selected recipients (emphasis omitted)). Zydney discloses that its
`“message[s]” are “address[ed], pack[ed,] and sen[t] . . . in a voice container”
`and similarly, that “voice data is transmitted in a voice container.” Ex. 1003,
`12:6, 14:4–5; see, e.g., Pet. 31, 35–36 (quoting Ex. 1003, 12:6–8, 14:2–5).
`Zydney further explains that “[t]he term ‘voice container[]’ 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.”
`Ex. 1003, 12:6–8 (emphases added); see, e.g., Pet. 31, 35–36 (quoting
`Ex. 1003, 12:6–8). Zydney elaborates, and illustrates in Figure 3, that the
`“voice data properties components . . . include: “an originator’s
`code 302 . . . , one or more recipient’s code 304, originating time 306,
`delivery time(s) 308, number of ‘plays’ 310, voice container source 312,”
`etc. Ex. 1003, 23:1–12, Fig. 3 (emphasis added); see id. at 34:4–8; see, e.g.,
`Pet. 35 (quoting Ex. 1003, 2:19, 23:2–10, 34:4–8, Fig. 3). According to
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`Zydney, the voice container “[a]dditionally . . . will have information
`concerning codec type, size, sample rate, and data.” Ex. 1003, 23:10–11.
`Even assuming that Zydney’s disclosures may be interpreted such that
`Zydney’s voice container could consist exclusively of the underlying voice
`data or message in the container—without any voice data properties or any
`other data or components—such a situation is not encompassed by
`Petitioner’s obviousness assertions. Rather, for challenged independent
`claims 1 and 40—and also, therefore, all challenged dependent claims—
`Petitioner explicitly relies on Zydney’s voice container storing not only the
`underlying voice data or message but also “one or more recipient’s
`code 304,” i.e., a voice data properties component that identifies the selected
`recipients. Pet. 35–36, 41 (quoting Ex. 1003, 2:19, 12:6–8, 23:2–10, 34:4–8,
`Fig. 3); Ex. 1003, 23:1–4, Fig. 3; see Pet. 49–51; Ex. 1002 ¶¶ 111, 124, 182.
`In particular, Petitioner alleges that Zydney teaches the “transmitting” and
`“receiving” limitations of claims 1 and 40, which require the client
`“transmitting” and the server “receiving” “the selected recipients and the
`instant voice message therefor,” by arguing that Zydney’s “voice container –
`which includes,” or “stores,” “both” “the identity of the selected recipients
`and the instant voice message –” is “transmitted by the client” to the central
`server. Pet. 35–36, 41, 49–51; Ex. 1001, 23:58–64, 28:27–31. Accordingly,
`in the context of Petitioner’s obviousness assertions for all challenged
`claims, Zydney’s voice container is distinct from—and does not equate to—
`the voice data or message stored in the voice container.
`
`It is not our role to pick a theory for Petitioner regarding the identity
`of the recited “instant voice message” in Zydney between the conflicting
`options presented, without explanation, in the Petition and Dr. Lavian’s
`Declaration, and then to apply that selected theory consistently in applying
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`Zydney to the challenged independent and dependent claims where
`Petitioner has failed to do so. Cf. Schumer v. Lab. Comput. Sys., Inc.,
`308 F.3d 1304, 1316 (Fed. Cir. 2002) (“It is not our task, nor is it the task of
`the district court, to attempt to interpret confusing or general testimony to
`determine whether a case of invalidity has been made out . . . .”). We will
`not, and cannot, piece together Petitioner’s inconsistent and contradictory
`arguments into a cogent and coherent explanation that supports an
`obviousness showing. Rather, we must evaluate the Petition’s arguments as
`presented. See In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380–81
`(Fed. Cir. 2016) (rejecting an argument that the Board properly “ma[de] an
`obviousness argument on behalf of [petitioner]” that “could have been
`included in a properly-drafted petition,” because “petitioner . . . bears the
`burden of proof” and, thus, the Board “must base its decision on arguments
`that were advanced by a party, and to which the opposing party was given a
`chance to respond,” and is not “free to adopt arguments on behalf of
`petitioners” (citations omitted)).
`As a result of the deficiencies in Petitioner’s obviousness showing,
`outlined above, we deny institution of inter partes review on this asserted
`ground for two independent reasons. First, as detailed above, Petitioner
`inconsistently maps the recited “instant voice message” to different elements
`of Zydney within its proffered analysis of independent claims 1 and 40, and
`across the challenged dependent claims, in the Petition, as well as in the
`supporting Declaration of Dr. Lavian—without clearly or consistently
`arguing in the alternative for the alleged identity of this claim element in
`Zydney and without asserting, much less demonstrating, that the identified
`elements of Zydney are equivalent to one another. Accordingly, Petitioner
`has not alleged sufficiently that the same element in Zydney discloses,
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`teaches, or suggests each requirement of the “instant voice message” recited
`in independent claims 1 and 40 and their challenged dependent claims.
`Thus, Petitioner has not established a reasonable likelihood of demonstrating
`that Zydney renders obvious independent claims 1 and 40 as well as
`dependent claims 3, 5, 6, 9, 42, 43, and 46 of the ’890 patent.
`Second, the Petition’s arguments and supporting evidence regarding
`the recited “instant voice message” violate the statutory and regulatory
`requirements for a petition. Under 35 U.S.C. § 312(a)(3), a petition “may be
`considered only if . . . the petition identif[ies], in writing and with
`particularity, . . . the grounds on which the challenge to each claim is based,
`and the evidence that supports the grounds for the challenge to each claim”
`(emphasis added). As such, the U.S. Court of Appeals for the Federal
`Circuit has recognized that “the Petitioner has the burden from the onset to
`show with particularity why the patent it challenges is unpatentable.”
`Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed. Cir. 2016)
`(emphasis added) (citing 35 U.S.C. § 322(a)(3), which is equivalent to
`35 U.S.C. § 312(a)(3) other than that it applies to post-grant reviews).
`Our rules further address the showing required in a petition. In
`particular, 37 C.F.R. § 42.104(b)(4) provides that “[t]he petition must specify
`where each element of the claim is found in the prior art patents or printed
`publications relied upon” (emphasis added). Moreover, 37 C.F.R.
`§ 42.104(b)(5) adds that the Petition must “identify[] specific portions of the
`evidence that support the challenge” (emphasis added). Similarly, 37 C.F.R.
`§ 42.22(a)(2) mandates that a petition include “[a] full statement of the
`reasons for the relief requested, including a detailed explanation of the
`significance of the evidence.”
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`Here, given Petitioner’s unexplained inconsistent arguments and
`conflicting theories regarding the identity of the recited “instant voice
`message” in Zydney within its analysis of independent claims 1 and 40, as
`well as across their challenged dependent claims, the Petition lacks clarity
`regarding precisely which element or portion of Zydney Petitioner is
`alleging discloses, teaches, or suggests the “instant voice message” of the
`challenged claims. The Petition, therefore, fails to “specify where each
`element of the claim is found in” Zydney for independent claims 1 and 40
`and dependent claims 3, 5, 6, 9, 42, 43, and 46—in violation of 37 C.F.R.
`§ 42.104(b)(4). In addition, more generally, the Petition fails to identify and
`explain adequately the reasoning and evidence that supports its obviousness
`assertions, as 35 U.S.C. § 312(a)(3), 37 C.F.R. § 42.22(a)(2), and 37 C.F.R.
`§ 42.104(b)(5) require.
`
`These requirements in the Leahy-Smith America Invents Act and our
`rules protect patent owners from the unfair burden of responding to