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 IPR2017-01524
`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 14, 15, 17–20, 23, 28, 29,
`31–34, 37, 51–54, 57, 62–65, and 68 of U.S. Patent No. 7,535,890 B2
`(Ex. 1101, “the ’890 patent”). Paper 2 (“Pet.”). Uniloc USA, Inc. and
`
`
`
`
`
`
`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 IPR2017-01524
`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 14, 15, 17–20, 23, 28, 29,
`31–34, 37, 51–54, 57, 62–65, and 68 of U.S. Patent No. 7,535,890 B2
`(Ex. 1101, “the ’890 patent”). Paper 2 (“Pet.”). Uniloc USA, Inc. and
`
`
`
`
`
`
`
`IPR2017-01524
`Patent 7,535,890 B2
`Uniloc Luxembourg S.A. (collectively, “Patent Owner”) filed a Preliminary
`Response. Paper 6 (“Prelim. Resp.”).
`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
`deny institution of an inter partes review on all challenged claims of the
`’890 patent for the reasons given below.
`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).
`2
`
`
`
`
`
`IPR2017-01524
`Patent 7,535,890 B2
`Moreover, on June 2, 2017—concurrent with the instant Petition—
`Petitioner filed IPR2017-01523, which challenges claims 1–6, 9, 40–43,
`and 46 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. 1101, 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.
`
`
`
`3
`
`
`
`IPR2017-01524
`Patent 7,535,890 B2
`
`
`As illustrated in Figure 2, local packet-switched IP network 204, which may
`be a local area network (“LAN”), “interconnects” IVM clients 206, 208 and
`legacy telephone 110 to local IVM server 202. Id. at 6:40–61; see id.
`at 7:13–14, 7:51–55. Local IVM server 202 enables instant voice messaging
`functionality over network 204. Id. at 7:53–55.
`In “record mode,” IVM client 208 “displays a list of one or more IVM
`recipients,” provided and stored by local IVM server 202, and the user
`selects recipients from the list. Id. at 7:47–49, 7:55–61. IVM client 208
`then transmits the selections to IVM server 202 and “records the user’s
`speech into . . . digitized audio file 210 (i.e., an instant voice message).” Id.
`at 7:61–8:1.
`When the recording is complete, IVM client 208 transmits audio
`file 210 to local IVM server 202, which delivers the message to the selected
`recipients via local IP network 204. Id. at 8:5−19. “[O]nly the available
`IVM recipients, currently connected to . . . IVM server 202, will receive the
`instant voice message.” Id. at 8:23−25. IVM server 202 “temporarily saves
`the instant voice message” for any IVM client that is “not currently
`connected to . . . local IVM server 202 (i.e., is unavailable)” and “delivers
`4
`
`
`
`
`
`IPR2017-01524
`Patent 7,535,890 B2
`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.
`In another embodiment, the ’890 patent discusses global IVM
`system 500. Id. at 15:24–28, Fig. 5. Global IVM system 500 includes a
`local IVM system, such as local IVM system 200, and global IVM server
`system 502, with global IVM clients 506, 508. Id. at 15:25–33. Both the
`local and global IVM systems are connected to “packet-switched
`network 102 (i.e., Internet)” to enable the local and global IVM clients to be
`able to exchange instant voice messages with one another. Id. at 15:25–38.
`C. ILLUSTRATIVE CLAIM
`Of the challenged claims, claims 14, 28, 51, and 62 of the ’890 patent
`are independent. Claim 14, reproduced below, is illustrative:
`14. An instant voice messaging system for delivering instant
`messages over a plurality of packet-switched networks, the system
`comprising:
`a client connected to a local network, the client selecting one or
`more external recipients connected to an external network
`outside the local network, generating an instant voice
`message therefor, and transmitting the selected recipients and
`the instant voice message therefor over the local network and
`the external network; and
`a server connected to the external 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 external network, the selected recipients
`being enabled to audibly play the instant voice message, and
`the server temporarily storing the instant voice message if a
`selected recipient is unavailable and delivering the stored
`instant voice message to the selected recipient once the
`selected recipient becomes available.
`Ex. 1101, 25:21–40.
`
`
`
`5
`
`
`
`IPR2017-01524
`Patent 7,535,890 B2
`
`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. 1104, “Appelman”);
`U.S. Patent No. 7,016,978 B2 (filed Apr. 29, 2002) (issued Mar. 21, 2006)
`(Ex. 1115, “Malik”);
`PCT International Application Publication No. WO 01/11824 A2 (published
`Feb. 15, 2001) (Ex. 1103, “Zydney”);1
`J.P. Martin-Flatin, Push vs. Pull in Web-Based Network Management, in
`INTEGRATED NETWORK MANAGEMENT VI (Morris Sloman et al. eds.,
`1999) (Ex. 1109, “Martin-Flatin”); and
`DEBRA LITTLEJOHN SHINDER, COMPUTER NETWORKING ESSENTIALS (2002)
`(Ex. 1108, “Shinder”).
`Petitioner also relies on the Declaration of Tal Lavian, Ph.D. (Ex. 1102).
`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 Claims
`Basis
`References
` 14, 17, 19, 20, 23, 51, 53, 54, 57
`§ 103 Zydney and Shinder
` 15, 28, 29, 31, 33, 34, 37, 62, 64,
`§ 103 Zydney, Shinder, and Malik
`65, 68
` 18, 52
`
`§ 103 Zydney, Shinder, Appelman,
`and Martin-Flatin
`§ 103 Zydney, Shinder, Malik,
`Appelman, and Martin-Flatin
`
` 32, 63
`
`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.”
`
`
`1 Exhibit 1103 includes line numbers added by Petitioner. Pet. v–vi, 7.
`Petitioner submitted the original version of Zydney as Exhibit 1113. Id.
`6
`
`
`
`
`
`IPR2017-01524
`Patent 7,535,890 B2
`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. 6. Patent Owner proposes constructions for “transmitting”
`and “receiving the selected recipients and the instant voice message
`therefor,” as recited in independent claims 14, 28, and 62, and the
`corresponding limitations of independent claim 51. Prelim. Resp. 6–11, 16–
`19 & nn.1–2. 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. 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. LEGAL STANDARDS FOR OBVIOUSNESS
`A patent claim is unpatentable as obvious under 35 U.S.C. § 103(a) if
`“the differences between” the recited 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.”
`35 U.S.C. § 103(a) (2004). To establish obviousness, it is the petitioner’s
`“burden to demonstrate . . . that a skilled artisan would have been motivated
`to combine the teachings of the prior art references to achieve the claimed
`invention.” In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1381 (Fed.
`7
`
`
`
`
`
`IPR2017-01524
`Patent 7,535,890 B2
`Cir. 2016) (quotations omitted). Accordingly, the petitioner must
`“articulate[] reasoning with some rational underpinning to support the legal
`conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
`418 (2007) (citation omitted). The “factual inquiry” into the reasons for
`“combin[ing] references must be thorough and searching, and the need for
`specificity pervades.” In re Nuvasive, Inc., 842 F.3d 1376, 1381–82 (Fed.
`Cir. 2016) (quotations omitted). An obviousness determination cannot be
`reached where the record lacks “explanation as to how or why the references
`would be combined to produce the claimed invention.” TriVascular, Inc. v.
`Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016).
`C. ALLEGED OBVIOUSNESS OVER ZYDNEY AND SHINDER
`Petitioner argues that Zydney and Shinder render obvious claims 14,
`17, 19, 20, 23, 51, 53, 54, and 57 of the ’890 patent. Pet. 19–45. Patent
`Owner disputes Petitioner’s assertions. Prelim. Resp. 11–36, 38–41.
`1. Overview of Zydney
`Zydney discloses “a system and method for voice exchange and voice
`distribution” that allows software agent 22 to “send, receive and store
`messages using voice containers.” Ex. 1103, 1:19–20, 10:20–11:1. 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.
`8
`
`
`
`
`
`IPR2017-01524
`Patent 7,535,890 B2
`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. Overview of Shinder
`Shinder provides an overview of the “fundamentals of computer
`
`networking concepts and implementation.” Ex. 1108, xxii. According to
`Shinder, it is “becom[ing] vital to business interests that a LAN be able to
`communicate with the outside” and, thus, to connect to a wide area network
`(“WAN”), such as the Internet. Id. at 182; see id. at 5, 19. Shinder
`discusses “several ways” to connect a LAN to a WAN, including equipping
`the computers on the LAN with a modem and phone line; translated
`connections; routed connections; and proxy servers. Id. at 182–87.
`Shinder explains that a proxy server acts as a “middlem[a]n” or
`“intermediary” that “separat[es] the LAN from the outside network.” Id.
`at 185, 463. Shinder discloses that “[c]omputers on the internal network
`communicate with the proxy, which then communicates ‘on their behalf’
`with computers on the external network.” Id. at 463. Shinder also refers to
`functionalities and services that can be provided by a proxy server, including
`“protection by filtering incoming and outgoing packets,” “enhance[ment of]
`Web performance by caching often-requested Web pages,” “[r]everse
`proxy” in which the proxy server “redirect[s] external [Hypertext Transfer
`9
`
`
`
`
`
`IPR2017-01524
`Patent 7,535,890 B2
`Protocol (‘HTTP’)] requests to a single designated machine,” and “[r]everse
`hosting” in which the proxy server “redirect[s] HTTP requests to more than
`one Web server by mapping several servers to one logical address.” Id. at
`185, 463 (emphasis omitted). Figure 14-7 of Shinder is reproduced below.
`
`
`Figure 14-7 depicts a proxy server between an external network, i.e., the
`Internet, and an internal LAN. See id. at 463, Fig. 14-7.
`3. Inconsistent Mapping of the Recited “[I]nstant [V]oice [M]essage”
`Challenged independent claims 14 and 51 and dependent claims 17,
`19, 20, 23, 53, 54, and 57 of the ’890 patent each repeatedly recite an
`“instant voice message.” Ex. 1101, 25:21–40, 25:54–26:2, 26:15–18, 30:8–
`30, 30:38–50, 31:3–7. Independent claim 14 is directed to “[a]n instant
`voice messaging system for delivering instant messages over a plurality of
`packet-switched networks,” whereas independent claim 51 is directed to a
`corresponding “method for instant voice messaging over a plurality of
`packet-switched networks.” Id. at 25:21–40, 30:8–30. These claims recite
`numerous specific requirements for the claimed “instant voice message”
`regarding its generation at the client, transmission, receipt by the server or
`external server, temporary storage, delivery to selected recipients, and
`audible playing by the recipients. Id. Moreover, the challenged dependent
`claims, with the exception of claim 17, feature additional requirements
`regarding the “instant voice message.” See id. at 25:54–26:2, 26:15–18,
`10
`
`
`
`
`
`IPR2017-01524
`Patent 7,535,890 B2
`30:38–50, 31:3–7. For example, claims 20 and 54 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 or the
`external server. Id. at 25:65–26:2, 30:42–50. In addition, claims 23 and 57
`require that “the client is enabled to attach,” or the client “attaching,” “one
`or more files to the instant voice message.” Id. at 26:15–18, 31:3–7.
`Petitioner relies on Zydney alone—not Shinder—as allegedly
`teaching the recited “instant voice message.” See generally Pet. 19–45. In
`response, Patent Owner argues that Petitioner fails to consistently map the
`claimed “instant voice message” to the same element in Zydney. Prelim.
`Resp. 11–16. According to Patent Owner, Petitioner maps “the claimed
`instant voice message to two distinct and incompatible” items—i.e.,
`Zydney’s “voice container and a message stored in the voice container.” Id.
`at 13–14; see Ex. 2001 ¶¶ 45, 48, 51 (opining that Zydney’s voice container
`“is not the thing it holds,” i.e., voice or audio data (emphasis omitted)).
`Patent Owner contends that Petitioner alleges, and relies on, such an
`“inconsistent” mapping of the recited “instant voice message” for
`independent claims 14 and 28 challenged in this asserted ground. Prelim.
`Resp. 14. Specifically, Patent Owner asserts that Petitioner—in arguing that
`independent claim 14 would have been obvious—first alleges that “[t]he
`‘voice containers’ in Zydney qualify as ‘instant voice messages’” but
`subsequently alleges that “according to Zydney, the instant voice message is
`‘stored in a “voice container.”’” Id. at 11–12 (quoting Pet. 20, 31)
`(emphases omitted). Patent Owner argues that Petitioner relies on its flawed
`analysis of independent claim 14 for independent claim 51. Id. at 14 (citing
`Pet. 55). In addition, Patent Owner contends that Petitioner maps the recited
`“instant voice message” differently in several dependent claims, even though
`11
`
`
`
`
`
`IPR2017-01524
`Patent 7,535,890 B2
`the “instant voice message” in these claims “must be the same instant voice
`message” as the independent claim from which they depend. Id. at 15.
`Patent Owner argues that Petitioner “relies heavily on the different
`interpretations” or mappings of the “instant voice message” “in attempting
`to invalidate different claims.” Id. (emphasis omitted).
`Patent Owner further asserts that Petitioner’s arguments identifying
`the recited “instant voice message” as different elements of Zydney are
`“mutually exclusive,” because “the instant voice message of the challenged
`claims” either “is stored in Zydney’s voice container or the instant voice
`message is Zydney’s voice container”—but “cannot be both.” Id. at 12
`(emphases of “Zydney” omitted). As support, Patent Owner argues that
`Zydney’s voice container and its voice message are “not equivalent.” Id.
`at 13; see Ex. 2001 ¶¶ 45, 48. Rather, according to Patent Owner, Zydney
`discloses that its voice container stores a “voice message” as well as
`“additional data items,” including “information about the origin, destination,
`and properties of the message.” Prelim. Resp. 12–13 (citing Ex. 1103,
`10:20–11:3, 23:1–2); see Ex. 2001 ¶ 51.
`Patent Owner argues that Petitioner’s “fundamentally flawed mapping
`of the claimed instant voice message” to distinct elements in Zydney renders
`the Petition “contradictory,” “internally inconsistent,” and “fatally flawed.”
`Prelim. Resp. 14. Moreover, Patent Owner asserts that Petitioner’s
`arguments “evade the fundamental requirement of showing each and every
`limitation of the claims” in the asserted prior art reference and “violate[] the
`basic principle that a term in a claim means the same thing throughout [the]
`claim (including dependent claims by operation of antecedent basis rules),
`and therefore should be mapped to the same alleged prior art teaching.” Id.
`
`
`
`12
`
`
`
`IPR2017-01524
`Patent 7,535,890 B2
`at 13–16. As a result, Patent Owner contends that the Board should reject
`and dismiss the Petition in its entirety. Id. (citing 37 C.F.R. § 42.108).
`We agree with Patent Owner. In particular, throughout the Petition
`and Dr. Lavian’s Declaration, Petitioner interchangeably maps—without
`explanation—the “instant voice message” recited in the challenged claims of
`the ’890 patent to either: (1) Zydney’s voice container or (2) the voice data
`or message that is stored in Zydney’s voice container.
`In addressing independent claim 14, 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. 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. Pet. 19–20, 41. Specifically, in its analysis
`of the preamble, the Petition affirmatively represents that “[t]he ‘voice
`containers’ in Zydney 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 19–20 (emphases, other than for first
`“instant voice messages,” added). Likewise, the Petition later equates
`Zydney’s voice container with the claimed “instant voice message”—
`referring to “[t]he instant voice message (voice container)”—in its analysis
`of the “temporarily storing” limitation. Id. at 41.
`Second, in its analysis of claim 14’s “generating,” “transmitting,”
`“receiving,” and “audibly play” limitations, 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, 34–35, 39–41. For instance, in addressing
`the “generating” and “transmitting” limitations, the Petition represents that
`13
`
`
`
`
`
`IPR2017-01524
`Patent 7,535,890 B2
`“[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.” Id.
`at 31–35 (second and third emphasis added, first and fourth emphasis added
`by Petitioner) (quoting Ex. 1103, 12:6–8). Similarly, for the “receiving”
`limitation, the Petition alleges that Zydney’s “voice container . . .
`includes . . . the instant voice message.” Id. at 39–40 (emphasis added).
`The Petition’s analysis of independent claim 51 relies on its analysis
`of independent claim 14 and, thus, shares Petitioner’s shifting mapping of
`the claimed “instant voice message” for claim 14. In particular, the Petition
`asserts that “[f]or purposes of applying the prior art to the claims, there are
`no material differences” between claims 14 and 51. Id. at 45.
`As to challenged dependent claims 17, 19, 20, 23, 53, 54, and 57, the
`Petition’s mapping of the “instant voice message” likewise inexplicably
`vacillates. To start, because each of these claims depends from either
`independent claim 14 or 51, the Petition’s inconsistent allegations regarding
`the identity of the “instant voice message” of claims 14 and 51 in Zydney
`carry through to these claims. See Ex. 1101, 25:54–26:18, 30:38–31:7.
`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 19 and 53,
`the Petition equates the recited “instant voice message” with Zydney’s voice
`container by referring to Zydney’s “voice container (instant voice
`message).” Pet. 42, 45. In contrast, for claims 20 and 54, the Petition
`represents that “in creating a voice container,” Zydney’s client “record[s] the
`
`
`
`14
`
`
`
`IPR2017-01524
`Patent 7,535,890 B2
`instant message in a voice file” and that “these voice recordings become part
`of the voice container file.” Id. at 43, 45 (emphases added).
`The Petition’s analysis of dependent claims 23 and 57 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
`in Zydney can attach files . . . to each audio file (voice container).” Id.
`at 44–45 (emphasis added, emphasis of “attach” omitted); see Ex. 1102
`¶¶ 170, 280. Claims 23 and 57 do not feature an “audio file.” Ex. 1101,
`26:15–18, 31:3–7. Dependent claims 20 and 54, 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 25:65–26:2, 30:42–50.
`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 vacillates between identifying the “instant
`voice message” as Zydney’s voice container and the voice data or message
`stored therein within his analysis of independent claims 14 and 51 and their
`dependent claims—even across limitations where his testimony features
`explicit cross-references. E.g., compare Ex. 1102 ¶¶ 87–88, 104, 135, 156,
`241, 245, 264–265, 275, 278, with id. ¶¶ 162, 271, 274, 279. Dr. Lavian also
`fails to explain this inconsistent mapping of the claim element.
`For example, in addressing the preamble as well as the “generating”
`and “transmitting” limitations of independent claim 14, Dr. Lavian equates
`Zydney’s voice containers with the claimed “instant voice message.” Id.
`¶¶ 87–88, 104, 241, 264–265. Dr. Lavian testifies that “Zydney makes clear
`15
`
`
`
`
`
`IPR2017-01524
`Patent 7,535,890 B2
`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, 241, 264
`(emphasis omitted). Elsewhere, however, Dr. Lavian takes a conflicting
`position. In analyzing the “receiving” limitation of claim 14—despite
`explicitly referring to his testimony for the “generating” limitation where he
`equates Zydney’s voice container with the “instant voice message”—
`Dr. Lavian opines that Zydney’s “voice container . . . includes . . . the instant
`voice message.” Id. ¶¶ 265, 271 (emphasis added).
`Moreover, Dr. Lavian’s supporting testimony often directly conflicts
`with the position stated in the Petition regarding the identity of the “instant
`voice message” for the same limitation. For instance, as explained above,
`the Petition’s analysis of the “generating” and “transmitting” limitations of
`independent claim 14 alleges that the “[t]he ‘instant voice message’ in
`Zydney is stored in” or “contained in the voice container.” Pet. 31, 34–35.
`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’” and refers to Zydney’s “instant voice
`messages (voice containers).” Ex. 1102 ¶¶ 104, 264–265.
`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 14 and 51 and, thus, their
`dependent claims. Yet Petitioner offers no explanation for mapping the
`recited “instant voice message” to different elements of Zydney throughout
`16
`
`
`
`
`
`IPR2017-01524
`Patent 7,535,890 B2
`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. 6 (“The Petitioners do not at this
`time contend that any term requires explicit construction to understand how
`the prior art applies to the claims.”). 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 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 we agree with Patent Owner that these
`elements of Zydney are distinct in the context of Petitioner’s obviousness
`arguments. Prelim. Resp. 12–13; 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. 1103, 12:6, 14:4–5;
`see, e.g., Pet. 31, 34–35, 39–40 (quoting and citing Ex. 1103, 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.”
`17
`
`
`
`
`
`IPR2017-01524
`Patent 7,535,890 B2
`Ex. 1103, 12:6–8 (emphases added); see, e.g., Pet. 31, 34, 39–40 (quoting
`and citing Ex. 1103, 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. 1103, 23:1–12, Fig. 3 (emphasis added); see id. at 34:4–8; see, e.g.,
`Pet. 34 (quoting Ex. 1103, 2:19, 23:2–10, 34:4–8, Fig. 3). According to
`Zydney, the voice container “[a]dditionally . . . will have information
`concerning codec type, size, sample rate, and data.” Ex. 1103, 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 14 and 51—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. 34–35, 39–40 (quoting Ex. 1103, 2:19, 12:6–8, 23:2–10,
`34:4–8, Fig. 3); Ex. 1103, 23:1
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
