Trials@uspto.gov
`571.272.7822
`
`Paper No. 33
`
` Filed: 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.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,1
`Patent Owner.
`____________
`
`Case IPR2017-002212
`Patent 7,535,890 B2
`____________
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C § 318(a) and 37 C.F.R. § 42.73
`
`
`
`1 Patent Owner’s Mandatory Notice, filed pursuant to 37 C.F.R. § 42.8, and
`Preliminary Response identify Uniloc USA, Inc. and Uniloc Luxembourg
`S.A. as patent owners. Paper 4; Paper 6 (“Prelim. Resp.”) at caption.
`Therefore, we adjust the case caption to include Uniloc USA, Inc.
`2 Snap Inc., which filed a petition in Case IPR2017-01612, and Facebook,
`Inc. and WhatsApp, Inc., which filed a petition in Case IPR2017-01636,
`have been joined as petitioners in this case. Papers 14, 15.
`
`
`
`
`
`571.272.7822
`
`Paper No. 33
`
` Filed: 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.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,1
`Patent Owner.
`____________
`
`Case IPR2017-002212
`Patent 7,535,890 B2
`____________
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C § 318(a) and 37 C.F.R. § 42.73
`
`
`
`1 Patent Owner’s Mandatory Notice, filed pursuant to 37 C.F.R. § 42.8, and
`Preliminary Response identify Uniloc USA, Inc. and Uniloc Luxembourg
`S.A. as patent owners. Paper 4; Paper 6 (“Prelim. Resp.”) at caption.
`Therefore, we adjust the case caption to include Uniloc USA, Inc.
`2 Snap Inc., which filed a petition in Case IPR2017-01612, and Facebook,
`Inc. and WhatsApp, Inc., which filed a petition in Case IPR2017-01636,
`have been joined as petitioners in this case. Papers 14, 15.
`
`
`
`
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`IPR2017-00221
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`INTRODUCTION
`I.
`Apple Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of claims 1–6, 14, 15, 17–20, 28, 29, 31–34, 40–43, 51–54, 62–65,
`and 68 (“challenged claims”) 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. Prelim. Resp. We instituted this review as to all challenged
`claims. Paper 9 (“Inst. Dec.”). Snap Inc., Facebook, Inc., and WhatsApp,
`Inc. are joined to this proceeding pursuant to our grant of the petitions and
`motions for joinder filed in IPR2017-01612 and IPR2017-01635. See
`Papers 14, 15.
`Subsequent to institution, Patent Owner filed a Patent Owner
`Response. Paper 13 (“PO Resp.”). Petitioner filed a Reply. Paper 17
`(“Reply”). A transcript of the oral hearing held on February 8, 2018, has
`been entered into the record as Paper 30 (“Tr.”).
`This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
`For the reasons that follow, Petitioner has demonstrated by a preponderance
`of the evidence that claims 1–6, 14, 15, 17–20, 28, 29, 31–34, 40–43, 51–54,
`62–65, and 68 of the ’890 patent are unpatentable.
`
`A. Related Matters
`Petitioner represents that the ’890 patent is the subject of numerous
`
`ongoing actions before the U.S. District Court for the Eastern District of
`Texas, including actions filed against the various Petitioner entities (Case
`Nos. 2:16-cv-00638, 2:16-cv-00645, 2:16-cv-00696, 2:16-cv-00728).
`Pet. 71–72; see Paper 4, 2; Paper 29, 2; Paper 31, 2; Paper 32, 2.
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`Before the Office, the ’890 patent also is the subject of Cases
`IPR2017-00220, IPR2017-01523, IPR2017-01524, and IPR2017-01802, in
`which we denied institution. Case IPR2017-00220, Paper 9 (May 25, 2017);
`Case IPR2017-01523, Paper 7 (Dec. 4, 2017); Case IPR2017-01524, Paper 7
`(Dec. 4, 2017); Case IPR2017-01802, Paper 8 (Feb. 6, 2018).
`
`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, exemplified as a VoIP softphone
`in Figure 2, “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
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`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
`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 Claims
`Of the challenged claims, claims 1, 14, 28, 40, 51, and 62 of the
`’890 patent are independent. Claims 1 and 28, reproduced below, are
`illustrative of the recited subject matter:
`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
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`recipient is unavailable and delivering the stored instant
`voice message to the selected recipient once the selected
`recipient becomes available.
`28. An instant voice messaging system for delivering instant
`messages over a plurality of packet-switched networks, the
`system comprising:
`a client connected to an external network, the client selecting
`one or more recipients connected to a local network,
`generating an
`instant voice message
`therefor, and
`transmitting the selected recipients and the instant voice
`message therefor over the external network; and
`a external server system connected to the external network,
`the external server system receiving the selected recipients
`and the instant voice message, and routing the selected
`recipients and the instant voice message over the external
`network and the local network;
`a local server connected to the local network, the local server
`receiving the selected recipients and the instant voice
`message therefor, and delivering the instant voice message
`to the selected recipients over the local network, the
`selected recipients being enabled to audibly play the
`instant voice message, and the local 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.
`Id. at 23:55–24:3, 27:6–28.
`
`D. Evidence of Record
`The Petition relies upon the following asserted prior art references:
`U.S. Patent No. 7,123,695 B2 (filed Aug. 19, 2002) (issued Oct. 17,
`2006) (Ex. 1007, “Malik”);
`International Application Publication No. WO 02/17658 A1 (published
`Feb. 28, 2002) (Ex. 1008, “Väänänen”);
`U.S. Patent Application Publication No. 2003/0046273 A1 (published
`Mar. 6, 2003) (Ex. 1009, “Deshpande”);
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`U.S. Patent Application Publication No. 2004/0068545 A1 (filed Dec. 19,
`2002) (published Apr. 8, 2004) (Ex. 1010, “Daniell”); and
`U.S. Patent Application Publication No. 2003/0147512 A1 (published
`Aug. 7, 2003) (Ex. 1015, “Abburi”).
`In addition, Petitioner supports its contentions with the Declaration of
`Leonard J. Forys, Ph.D. (Ex. 1003) as well as his supplemental declaration
`(Ex. 1029). Patent Owner supports its position with a Declaration of
`William C. Easttom II (Ex. 2001).
`
`E. Asserted Grounds of Unpatentability
`We instituted inter partes review on the following grounds of
`unpatentability under 35 U.S.C. § 103.3 Inst. Dec. 39.
`Challenged Claim(s)
`Basis
`References
`1–3, 5, 6, 14, 15, 17, 19, 20,
`§ 103 Malik and Väänänen
`28, 29, 31, 33, 34, 40, 42, 43,
`51, 53, 54, 62, 64, 65
`4, 18, 32, 41, 52, 63
`
`6, 20, 34, 43, 54, 65
`68
`
`§ 103 Malik, Väänänen, and
`Deshpande
`§ 103 Malik, Väänänen, and Abburi
`§ 103 Malik, Väänänen, Abburi,
`and Daniell
`
`II. ANALYSIS
`
`A. Level of Ordinary Skill
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`
`
`3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29,
`125 Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103, effective March 16,
`2013. Because the patent application resulting in the ’890 patent was filed
`before the effective date of the relevant section of the AIA, we refer to the
`pre-AIA version of § 103 throughout this decision.
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`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(internal quotation and citation omitted).
`Petitioner argues and Dr. Forys opines that a person of ordinary skill
`in the art would have had “the equivalent of a Bachelor degree in Electrical
`Engineering, Computer Science, or an equivalent field as well as at least 3−5
`years of academic or industry experience in communications systems,”
`particularly messaging systems and data networks, including VoIP and
`mobile telephony, “or comparable industry experience.” Pet. 9; Ex. 1003
`¶ 30. Patent Owner did not respond to Petitioner’s proffered level of
`ordinary skill in the art in the Preliminary Response. Based on the record at
`the time, we adopted Petitioner’s proposed level of skill for purposes of the
`Institution Decision. Inst. Dec. 7.
`In its post-institution Response, Patent Owner notes that its expert,
`Mr. Easttom, disagrees with Petitioner’s proposed level of skill “to the
`extent ‘ordinary skill’ is interpreted to require more than 4 years of academic
`or industry experience exclusively in the fields of . . . VoIP and mobile
`telephony.” PO Resp. 7. Instead, Mr. Easttom opines that a person of
`ordinary skill “would be someone with a baccalaureate degree related to
`computer technology and 2 years of experience with communications
`technology, or 4 years of experience without a baccalaureate degree.”
`Ex. 2001 ¶ 13.
`The two proposed levels of skill largely overlap. Patent Owner’s
`proffered level of ordinary skill in the art, however, focuses on experience in
`the general area of “communications technology,” whereas Petitioner
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`proposes experience more specifically in “messaging systems and data
`networks, including VoIP and mobile telephony.” We find that the
`extremely broad area of “communications technology” is too generic to be
`useful in determining the level of ordinary skill in the art applicable to this
`case under any of the GPAC factors. For instance, experience with
`“communications technology” is untethered to addressing problems and
`solutions in facilitating voice message services, such as in Malik and
`Väänänen, or to whether active workers in the appropriate field would
`manifest such a general experience in “communications technology.” Both
`Malik and Väänänen focus, specifically, on facilitating voice messaging
`services. See, e.g., Ex. 1007 Abstract; Ex. 1008 Abstract. Therefore, we
`cannot ignore that a person of ordinary skill in the art would have experience
`in an area more narrowly defined than the broad and generic
`“communications technology.”
`Instead, we find that Petitioner’s assessment, which is more specific to
`messaging systems using the Internet and computer networks, is proper and
`consistent with the level of ordinary skill in the art at the time of the
`invention as reflected in the prior art in this proceeding. See Okajima v.
`Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Both Malik and Väänänen
`are directed to messaging over computer networks. For example, Malik’s
`exemplary embodiment describes clients and servers communicating “via
`the Internet or some other communication network.” Ex. 1007, 4:42–53.
`Väänänen addresses voice instant messaging systems using mobile terminals
`in the context of packet switched or circuit switched connections. Ex. 1008,
`6:17–23. Thus, it is evident from the prior art that Petitioner’s assessment is
`appropriate because, in addition to a degree, a person of ordinary skill in the
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`art would have experience in communications systems, particularly in
`messaging systems, data networks including VoIP and mobile telephony, or
`comparable industry experience.
`Consequently, we adopt Petitioner’s assessment of the level of
`ordinary skill in the art.
`
`B. 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).
`1. “external network” and “local network”
`The Petition proposed a construction of “external network,” as recited
`
`in challenged claims 14, 17, 28, 31, 51, and 62 of the ’890 patent, as “a
`network that is outside another network.” Pet. 9–12. In the Institution
`Decision, however, we did not see a need to construe the term. Inst. Dec. 7–
`8 (citing Pet. 9–12; Prelim. Resp. 19–21).
`Post-institution, the parties spend portions of their briefs discussing
`the proper construction of the terms “external network” and “local network.”
`PO Resp. 8–11; Reply 1–4. However, the ultimate positions of the parties,
`and how much they differ, are not entirely clear. For example, the parties do
`not dispute, and we agree, that the preambles of claims 14, 28, 51, and 62
`are limiting because the “plurality of packet-switched networks” provides
`antecedent basis for the “local network” and the “external network” recited
`in the bodies of these claims. See Pet. 25–27, 38, 46; PO Resp. 3–4, 9; Inst.
`Dec. 23–24; Reply 1–4; Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc.,
`289 F.3d 801, 807–10 (Fed. Cir. 2002). The parties also agree, and the ’890
`patent supports, that a Local Area Network (“LAN”) qualifies as a “local
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`network” and the Internet qualifies as an “external network.” Pet. 38 (“As
`discussed . . . it would have been obvious to connect Client 200 and its local
`server 215 over a LAN.”), 39 (“Malik explicitly teaches using the Internet,
`which is a type of an external network.”); PO Resp. 9–10. And the parties
`appear to agree that the “Internet” does not qualify as a “local network.”
`The crux of the parties’ dispute on this issue appears to be whether a LAN
`that resides outside of the “local network” may qualify as an “external
`network.” Petitioner would have us find that it would, but Patent Owner
`would not. Reply 1 (stating the only difference between the two terms is
`“their respective locations”); PO Resp. 9–10 (explaining that relative
`location is not the only difference between the two terms). The analysis
`below, however, does not turn on whether a LAN may qualify as an
`“external network”; therefore, we need not resolve this dispute.
`Because the analysis below does not require a complete, explicit
`construction of either term, we address their construction only to the extent
`necessary to resolve the issues in this case. Namely, for the reasons
`discussed below, we conclude that there is a difference between the terms
`“local network” and “external network” in that they refer to networks of
`differing geographic scope relative to each other. We do not agree that the
`Specification supports further differentiation between the two—either that
`local and external networks must be of different architectures or require
`different levels of accessibility.
`Intrinsic Evidence
`The disclosure of the ’890 patent does not provide a clear definition
`for the terms “local network” and “external network,” but does provide
`several clues to the intended meaning of the terms. Notably, although the
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`’890 patent only explicitly uses the term “external network” in language that
`simply mirrors that of the claims (see Ex. 1001, 3:39–6:2), the ’890 patent
`also repeatedly uses both the words “global” and “external” similarly, as a
`contrast to the term “local.” For example, the ’890 patent appears to use the
`term “global” to describe the context in which an “external network” is
`relevant. In particular, the ’890 patent states that “[t]he present invention is
`directed to a system and method for enabling local and global instant VoIP
`messaging over an IP network, such as the Internet.” Ex. 1001, 2:46–48
`(emphases added). The ’890 patent goes on to describe Figure 2, illustrating
`local IP network 204, as “an exemplary local IVM system.” Id. at 6:12–14
`(emphasis added). In contrast, the ’890 patent describes Figure 5, which
`illustrates both local IP network 204 and IP network (Internet) 102, as “an
`exemplary illustration of a global instant voice messaging (IVM) system
`500.” Id. at 15:24–25 (emphasis added). And both parties agree that IP
`network (Internet) 102, of Figure 5, exemplifies the claimed “external
`network.” PO Resp. 9 (citing to Figure 5 to support the statement that “[i]t
`is undisputed, for example, that the ’890 patent identifies the Internet as a
`type of ‘external network.’”); Reply 3 (“And FIG. 5 illustrates an IP network
`102 that is outside the local IP network 204.”).
`We, therefore, consider the term “global,” as used in the ’890 patent,
`to be similar to “external” and helpful in determining the intended meaning
`of the term “external network.” Each of the potions of the ’890 patent cited
`above show that the modifiers “local” and “global” or “external” are used to
`differentiate the relative geographic scope of the networks.
`We are not persuaded that more differentiation between the two terms
`is supported by the Specification or is necessary to resolve the issues in this
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`case. Patent Owner does not point us to language in the ’890 patent, nor do
`we see any, indicating such further differentiation is required. In fact, Patent
`Owner does not explain what it is referring to when it describes the terms as
`referring to different “types” of networks. PO Resp. 8–11.4 Patent Owner’s
`“type” argument is not supported by the description of the recited networks
`in the ’890 patent, which describes the “local network” and “external
`network” in terms of their geographic scope, not their “type.”
`We, therefore, conclude that the intrinsic evidence supports a
`construction that “local” and “external” refer to the relative geographic
`scope of the networks.
`Extrinsic Evidence
`Both parties also rely on extrinsic evidence, in the form of expert
`testimony, to support their argument. Most of the extrinsic evidence,
`however, is consistent with a construction of the two terms referring to
`relative geographic scope. For example, Patent Owner argues, based on the
`testimony of Mr. Easttom, that a person of ordinary skill “would recognize
`inherent and distinct meanings for ‘local’ and ‘external’ in this context.” PO
`Resp. 8 (citing Ex. 2001 ¶¶ 23–26). According to Patent Owner, a person of
`ordinary skill in the art “would understand from the context of the claim
`language as a whole, when read in light of the rest of the ’890 patent
`
`
`4 In the oral hearing, both parties indicated that Patent Owner’s argument is
`that, to qualify as different “types,” the “local network” and the “external
`network” must have heterogeneous network architectures such that “local”
`means “private” with “limited accessibility” and “external” means “public”
`with “open accessibility.” Tr. 14:17–15:12; Tr. 45:9–56:16. This argument,
`however, was not made in any brief. To the extent this is, indeed, Patent
`Owner’s argument, we see no support in the Specification for such a
`requirement.
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`specification, that the recited ‘local network’ and ‘external network’ are
`distinguishable from one another and that the words ‘local’ and ‘external’
`refer to distinct types of networks.” Ex. 2001 ¶ 23. Nothing in these
`statements is inconsistent with a construction of relative geographic scope.
`Mr. Easttom adds that “[t]he words ‘local network’ and ‘external
`network’ in the context of the ’890 patent are analogous to the terms ‘private
`network’ and ‘public network’ as also used in the art.” Id. ¶ 24. We,
`however, give this testimony, regarding “private” and “public” networks,
`little weight because it is not explained or supported in any way. See
`37 C.F.R. § 42.65(a); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368
`(Fed. Cir. 2004) (“[T]he Board is entitled to weigh the declarations and
`conclude that the lack of factual corroboration warrants discounting the
`opinions expressed in the declarations.”); Rohm & Haas Co. v. Brotech
`Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997) (“Nothing in the [federal] rules
`[of evidence] or in our jurisprudence requires the fact finder to credit the
`unsupported assertions of an expert witness.”).
`Dr. Forys’s testimony is also consistent with a construction of relative
`geographic scope. Specifically, Dr. Forys refers to LANs and the Internet as
`different “types” of network (see, e.g., Ex. 1003 ¶¶ 56, 79), but he also
`emphasizes the difference between global and local networks in terms of
`their geographic scope (id. ¶¶ 68–69, 147 (stating that “a local network was
`widely used to connect devices dispersed over a relatively limited area”),
`150, 152, 299–302). Finally, in its observations of the cross-examination of
`Dr. Forys’s supplemental declaration (Ex. 1029), Patent Owner points to
`testimony of Dr. Forys discussing some common technical properties of
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`LANs related to their geographical scope. Paper 25, 1–3 (citing Ex. 2004,
`14:8–20 (“a LAN serves a geographically small area”)).
`Considering all the record extrinsic evidence regarding the
`construction of the terms “local network” and “external network,” we
`conclude that it supports the same construction as the intrinsic evidence—
`the terms “local” and “external” are relational terms used to indicate the
`relative geographic scope of the networks.
`2. “recipient”
`It is unclear from the briefing whether the parties agree that the term
`“recipient” in the context of the challenged claims refers to “a client device”
`or if Patent Owner requires the “recipient” to be a specific client device. PO
`Resp. 11–12 (“It is undisputed that the term ‘recipient’ . . . refers to a
`specific client device.”); Reply 4 (“PO leaves unclear why recipient should
`be a specific client device – except to avoid the prior art.”). To the extent
`that Patent Owner is arguing that the term “specific” is required for its
`construction, however, Patent Owner does not support this argument with
`explanation of the relevance of this requirement. PO Resp. 12 (stating that
`“[t]hose limitations each confirm ‘recipient’ refers to a client device”). Nor
`did Patent Owner emphasize the “specific” portion of its construction at oral
`hearing (Tr. 40:20–21 (“The parties agree that recipient refers to a
`device.”)). Most importantly, addressing any potential dispute about
`whether the term “specific” should be added to the construction does not
`inform our analysis of the issues in this case. See Tr. 42:20–43:16. For
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`purposes of this Decision, therefore, we adopt, without further elaboration,
`the parties’ proposal that a “recipient” is a client device.5
`
`C. Alleged Obviousness over Malik and Väänänen
`Petitioner argues Malik and Väänänen render obvious claims 1–3, 5,
`6, 14, 15, 17, 19, 20, 28, 29, 31, 33, 34, 40–43, 51, 53, 54, 62, 64, and 65.
`Pet. 19–58.
`
`1. Overview of Malik
`Malik explains that in many prior art instant-messaging (“IM”)
`
`systems, including Jabber, when an instant message is sent to a user that is
`not present on the network, servers have the capability to hold the message
`in a queue and deliver it “to the user as soon as the user is present.”
`Ex. 1007, 2:40–41, 2:60–67, 3:16–23. Figure 2 of Malik is reproduced
`below.
`
`
`5 Despite agreement on this construction of the term “recipient” as referring
`to a device, the parties also apparently agree that the phrase “transmitting the
`selected recipients,” recited by all challenged independent claims, refers not
`to transmitting devices, but to transmitting “an identification of the
`recipients.” Pet 4, 24–25, 29–30; PO Resp. 22–23; Tr. 39:22–42:19.
`Because the parties do not raise this as an issue in this case, we do not
`further address the construction of the phrase “transmitting the selected
`recipients” or how it relates to the construction of the term “recipients.”
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`Figure 2 depicts a prior art IM network using the Jabber “client-server”
`architecture, which contains “distributed network servers,” namely, local
`Jabber servers 215–217, and Jabber clients 200–205. Id. at 2:49–3:1, 3:66–
`67. Clients 200–205 send and receive messages, and Jabber servers 215–
`217 deliver the messages in “real time.” Id. at 2:56–67. “Each local Jabber
`server 200–205 performs two main functions: listening for and
`communicating directly with Jabber client applications 200–205, and
`communicating with other Jabber servers 215–217” that are “connected to
`the Internet.” Id. at 3:5–12; see id. at 2:58–59.
`
`According to Malik, prior art IM systems do not allow non-text instant
`messages, such as voice instant messages (“VIM”), to be “stored in a queue
`for later immediate delivery” when the recipient becomes available. Id.
`at 3:24–31. Malik seeks to address this alleged need in the art with its
`disclosed systems and methods for generating and sending VIMs. Id. at
`[57], 3:24–46. Figure 3 of Malik is included below.
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`Figure 3 is a block diagram of a representative embodiment of voice
`message delivery system 300, which includes VIM client 310 of a first user,
`VIM client 320 of a second user, and VIM server 330. Id. at 4:25–35.
`“Each VIM client 310, 320 communicates with . . . VIM server 330 via the
`Internet or some other communication network 325.” Id. at 4:42–44.
`In this embodiment, VIM clients are configured to “receive and play a
`voice recording . . . in a voice instant message” as well as “to generate a
`voice recording . . . and include the voice recording in an instant message
`upon accepting a VIM invitation.” Id. at 4:29–37; see id. at 6:65–67, Fig. 5.
`A VIM invitation is a message transmitted from one VIM client to another
`that “invites or prompts” the generation of a voice recording, for example,
`from VIM client 310 of the first user to VIM client 320 of the second user
`“invit[ing] or prompt[ing] . . . VIM client 320 . . . to generate a voice
`recording for the first user.” Id. at 4:37–41.
`
`VIM server 330 “may act as a single IM server . . . or a local IM
`server, such as . . . Jabber Server 215 of F[igure] 2.” Id. at 4:45–47. “VIM
`server 330 includes the capabilities of conventional IM servers and the
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`additional capabilities for handling VIM . . . delivery and storage.” Id.
`at 4:51–53. In a preferred embodiment, when a user is not present and
`available, a VIM may be stored in queue 340 of VIM server 330 and
`“delivered to the user the next time that the user connects to” the network.
`Id. at 5:20–24.
`
`Malik further explains “the functionality of a representative
`implementation” of voice message delivery system 300. Id. at 4:4–6; see id.
`at 5:43–6:64, Fig. 4. A first user “authorizes” users from whom it “will
`accept voice messages,” for example, by specifying users in its contact list
`(block 410). Id. at 4:56–63, Fig. 4. As a result of this authorization, if an
`authorized user attempts to send an instant message to the first user when the
`first user “is not present and/or available, the authorized user may be given
`the opportunity to generate a voice instant message for the first user.” Id.
`at 5:66–6:4.
`
`“[L]ater,” VIM client 320 of the second user “receives a request or
`prompt by the second user to send an instant message to the first user”
`(block 420). Id. at 5:66–6:9, Fig. 4; see id. at 12:51–52, 14:12–13. Such a
`request typically “is generated after the second user attempts to initiate the
`transmission of the instant message.” Id. at 6:9–11. VIM client 320 detects
`that the first user “is not present and/or available” and then checks if it is
`“capable of generating a voice recording” as well as the voice contact
`parameters of the first user to see if “the second user is authorized . . . to
`leave a voice instant message for the first user” (blocks 425, 430, 435, 440,
`445). Id. at 6:11–23, Fig. 4. If so, VIM client 320 “invites or prompts the
`second user to leave a voice message” for the first user (block 450). Id.
`at 6:31–35, Fig. 4. “[I]f the second user accepts the VIM invitation,” the
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`second user “generates a voice recording” (block 460). Id. at 6:39–46.
`After a VIM is generated from the recording (block 470), the message is sent
`to VIM server 330 and stored in VIM queue 340 (block 475). Id. at 6:47–
`59. Next, “VIM server 350 detects when the first user is present and/or
`available to receive instant messages again” (block 480). Id. at 6:59–62; see
`id. at 7:1–3. After the first user becomes present, VIM server 330 “delivers
`the voice instant message” from its queue 340 to VIM client 310 of the first
`user (block 485). Id. at 6:62–64, 7:3–5, Fig. 5.
`2. Overview of Väänänen
`Väänänen discloses a “server centric method” for instant voicemail
`
`messaging. Ex. 1008, [57], 1:13–16. In one disclosed method of sending
`voice messages, the user first chooses one or several message recipients at
`the subscriber terminal (phase 110). Id. at 6:5–11, Fig. 1. This recipient
`selection may occur through the “simple press of a button,” “labeling the
`recipient with a pointer from the ‘contacts’ file of the terminal device,”
`“speech recognition, a dedicated
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