Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 32
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` Entered: January 31, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Cases IPR2017-01797 and IPR2017-01798
`Patent 8,724,622 B2
`____________
`
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
`
`
`

`

`IPR2017-01797 and IPR2017-01798
`Patent 8,724,622 B2
`
`
`I.
`
`INTRODUCTION
`
`Samsung Electronics America, Inc. (“Petitioner”) filed a Petition in
`
`each of the captioned proceedings on July 20, 2017, collectively requesting
`
`inter partes review of claims 3, 4, 6–8, 10–19, 21–35, 38, and 39 of
`
`U.S. Patent No. 8,724,622 B2 (“the ’622 patent”). IPR2017-01797, Paper 1
`
`(“1797 Petition” or “1797 Pet.”); IPR2017-01798 (“1798 Petition” or
`
`“1798 Pet.”). Each proceeding challenges a different set of claims, as
`
`follows:
`
`Proceeding
`
`Challenged Claim Set of the ’622 Patent
`
`IPR2017-01797 3, 4, 6–8, 10–13, 18, 21–23, 27, 32, 34,
`35, 38, and 39
`
`IPR2017-01798 14–17, 19, 24–26, 28–31, and 33
`
`See 1797 Pet. 1; 1798 Pet. 1. Patent Owner1 filed a Preliminary Response to
`
`each Petition. IPR2017-01797, Paper 6; IPR2017-01798, Paper 6. We
`
`instituted inter partes review pursuant to 35 U.S.C. § 314 as to all
`
`challenged claims. IPR2017-01797, Paper 8 (“1797 Dec. on Inst.”);
`
`IPR2017-01798, Paper 8 (“1798 Dec. on Inst.”).
`
`Subsequent to institution, Patent Owner filed a Patent Owner
`
`Response in each case. IPR2017-01797, Paper 12 (“1797 PO Resp.”);
`
`IPR2017-01798, Paper 12 (“1798 PO Resp.”). Petitioner then filed Replies.
`
`IPR2017-01797, Paper 17 (“1797 Reply”); IPR2017-01798, Paper 17
`
`
`
`1 Uniloc Luxembourg S.A. was initially identified as the owner of the
`’622 patent. See, e.g., IPR2017-01797, Paper 3, 1. In Updated Mandatory
`Notices filed August 27, 2018, Uniloc 2017 LLC is identified as the owner
`of the ’622 patent. IPR2017-01797, Paper 19; IPR2017-01798, Paper 19.
`
`2
`
`

`

`IPR2017-01797 and IPR2017-01798
`Patent 8,724,622 B2
`
`(“1798 Reply”). Patent Owner also filed a Motion to Exclude as Paper 21 in
`
`each case (“Mot. Excl.”), and Petitioner filed an opposition as Paper 24
`
`(“Opp’n”). A transcript of the consolidated oral hearing held on October 30,
`
`2018, has been entered into the record as Paper 31 in each case (“Tr.”).
`
`We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
`
`Decision is entered pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`
`For the reasons discussed below, Petitioner has shown by a preponderance
`
`of the evidence that claims 3, 4, 6–8, 10–19, 21–35, 38, and 39 of the
`
`’622 patent are unpatentable.
`
`II. CONSOLIDATION OF PROCEEDINGS
`
`The two captioned proceedings (IPR2017-01797 and IPR2017-01798)
`
`involve the ’622 patent. Although each proceeding challenges the
`
`patentability of a different set of claims, there are disputed claim terms
`
`across the challenged claims and the primary prior art is identical. For
`
`instance, all the claims recite the term “instant voice message,” which we
`
`construe below, and the “Griffin” and “Zydney” references (identified with
`
`particularity below) are asserted as prior art in both proceedings.
`
`Consolidation is appropriate where, as here, the Board can more efficiently
`
`handle the common issues and evidence and also remain consistent across
`
`proceedings. Under 35 U.S.C. § 315(d) the Director may determine the
`
`manner in which these pending proceedings may proceed, including
`
`“providing for stay, transfer, consolidation, or termination of any such
`
`matter or proceeding.” See also 37 C.F.R. § 42.4(a) (“The Board institutes
`
`the trial on behalf of the Director.”). There is no specific Board Rule that
`
`governs consolidation of cases. But 37 C.F.R. § 42.5(a) allows the Board to
`
`3
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`IPR2017-01797 and IPR2017-01798
`Patent 8,724,622 B2
`
`determine a proper course of conduct in a proceeding for any situation not
`
`specifically covered by the rules and to enter non-final orders to administer
`
`the proceeding. Therefore, on behalf of the Director under § 315(d), and for
`
`a more efficient administration of these proceedings, we consolidate
`
`IPR2017-01797 and IPR2017-01798 for purposes of rendering this Final
`
`Written Decision in which we construe the term “instant voice message” and
`
`determine whether the asserted prior art teaches the properly construed
`
`“instant voice message.”
`
`III. BACKGROUND
`
`A. Related Matters
`
`The parties indicate that the ’622 patent is involved in multiple district
`
`court cases, including Uniloc USA, Inc. v. Samsung Electronics America,
`
`Inc., Case No. 2:16-cv-00641-JRG (E.D. Tex.). See, e.g., 1797 Pet. 13;
`
`IPR2017-01797, Paper 19, 2.
`
`The ’622 patent also has been the subject of petitions for inter partes
`
`review in Cases IPR2017-00223, IPR2017-00224, IPR2017-01804, and
`
`IPR2017-01805 (filed by Apple Inc.), all of which were denied; Cases
`
`IPR2017-01667 and IPR2017-01668 (filed by Facebook, Inc. and
`
`WhatsApp Inc.), in which we instituted inter partes review on January 19,
`
`2018; Cases IPR2017-02080 and IPR2017-02081 (filed by Google, Inc.),
`
`which we denied; Case IPR2017-02090 (filed by Huawei Device Co., Ltd.
`
`and LG Electronics, Inc.), in which we granted a motion for the petitioners’
`
`joinder with Case IPR2017-01667; and Cases IPR2018-00579 and
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`IPR2018-00580 (filed by Apple Inc.), in which we granted motions for the
`
`petitioner’s joinder with Cases IPR2017-01667 and IPR2017-01668,
`
`4
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`

`

`IPR2017-01797 and IPR2017-01798
`Patent 8,724,622 B2
`
`respectively. We issued a consolidated Final Written Decision in Cases
`
`IPR2017-01667 and IPR2017-01668 on January 16, 2019, finding
`
`unpatentable claims 3, 6–8, 10–35, 38, and 39—but not claims 4 and 5—of
`
`the ’622 patent. IPR201701667, Paper 37; IPR2017-01668, Paper 35
`
`(“1667/1668 FD”).
`
`B. Overview of the ’622 Patent
`
`The ’622 patent, titled “System and Method for Instant VoIP
`
`Messaging,” relates to Internet telephony, and more particularly, to instant
`
`voice over IP (“VoIP”) messaging over an IP network, such as the Internet.
`
`Ex. 1001, [54], 1:18–22. The ’622 patent acknowledges that “[v]oice
`
`messaging” and “instant text messaging” in both the VoIP and public
`
`switched telephone network environments were previously known. Id.
`
`at 2:22–46. In prior art instant text messaging systems, according to the
`
`’622 patent, a server would present a user of a client terminal with a “list of
`
`persons who are currently ‘online’ and ready to receive text messages,” the
`
`user would “select one or more” recipients and type the message, and the
`
`server would immediately send the message to the respective client
`
`terminals. Id. at 2:34–46. According to the ’622 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 1:18–22, 2:47–
`
`59, 6:47–49.
`
`In one embodiment, the ’622 patent discloses local instant voice
`
`messaging (“IVM”) system 200, depicted in Figure 2 below. Ex. 1001,
`
`6:22–24.
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`5
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`

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`IPR2017-01797 and IPR2017-01798
`Patent 8,724,622 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 6:50–7:2; see id. at 7:23–24, 7:61–65. Local IVM server 202 enables
`
`instant voice messaging functionality over network 204. Id. at 7:61–65.
`
`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. Ex. 1001, 7:57–59, 7:65–8:4. 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 8:4–11.
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`6
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`

`IPR2017-01797 and IPR2017-01798
`Patent 8,724,622 B2
`
`
`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. Ex. 1001, 8:1529. “[O]nly the
`
`available IVM recipients, currently connected to . . . IVM server 202, will
`
`receive the instant voice message.” Id. at 8:3334. 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 8:34–39; see id. at 9:17–21. Upon receiving the
`
`instant voice message, the recipients can audibly play the message. Id.
`
`at 8:29–32.
`
`C. Illustrative Claim
`
`Of the challenged claims, claims 3, 24, 27, and 38 are independent.
`
`Claims 3, 24, and 27 are illustrative of the challenged claims and are
`
`reproduced below.
`
`3. A system comprising:
`a network interface connected to a packet-switched network;
`a messaging system communicating with a plurality of instant
`voice message client systems via the network interface; and
`a communication platform system maintaining connection
`information for each of the plurality of instant voice
`message client systems indicating whether there is a current
`connection to each of the plurality of instant voice message
`client systems,
`wherein the messaging system receives an instant voice
`message from one of the plurality of instant voice message
`client systems, and
`wherein the instant voice message includes an object field
`including a digitized audio file.
`
`7
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`

`IPR2017-01797 and IPR2017-01798
`Patent 8,724,622 B2
`
`
`24. A system comprising:
`a network interface connected to a packet-switched network;
`a messaging system communicating with a plurality of instant
`voice message client systems via the network interface; and
`a communication platform system maintaining connection
`information for each of the plurality of instant voice
`message client systems indicating whether there is a current
`connection to each of the plurality of instant voice message
`client systems,
`wherein the messaging system receives connection object
`messages from the plurality of instant voice message client
`systems, wherein each of the connection object messages
`includes data representing a state of a logical connection
`with a given one of the plurality of instant voice message
`client systems.
`
`27. A system comprising:
`a client device;
`a network interface coupled to the client device and connecting
`the client device to a packet-switched network; and
`an instant voice messaging application installed on the client
`device, wherein the instant voice messaging application
`includes a client platform system for generating an instant
`voice message and a messaging system for transmitting the
`instant voice message over the packet-switched network via
`the network interface,
`wherein the instant voice messaging application includes a
`document handler system for attaching one or more files to
`the instant voice message.
`
`Ex. 1001, 24:12–27, 25:59–26:8, 26:17–30.
`
`D. Evidence of Record
`
`The Petitions rely on the following asserted prior art references:
`
`a) Griffin: U.S. Patent No. 8,150,922 B2, issued Apr. 3, 2012 (filed in
`both IPR2017-01797 and IPR2017-01798 as Ex. 1005);
`
`8
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`IPR2017-01797 and IPR2017-01798
`Patent 8,724,622 B2
`
`
`b) Zydney: PCT App. Pub. No. WO 01/11824 A2, published Feb. 15,
`2001 (filed in both IPR2017-01797 and IPR2017-01798 as
`Ex. 1006);
`
`c) Aravamudan: U.S. Patent No. 6,301,609 B1, issued Oct. 9, 2001
`(filed in IPR2017-01797 as Ex. 1009);
`
`d) Vuori: U.S. Patent App. Pub. No. 2002/0146097 A1, published
`Oct. 10, 2002 (filed in IPR2017-01797 as Ex. 1015);
`
`e) Clark: U.S. Patent No. 6,725,228 B1, issued Apr. 20, 2004
`(filed in IPR2017-01798 as Ex. 1007);
`
`f) Väänänen: PCT App. Pub. No. WO 02/17650 A1, published
`Feb. 28, 2002 (filed in both IPR2017-01797 and IPR2017-01798
`as Ex. 1008); and
`
`g) Low: U.S. Patent App. Pub. No. 2003/0018726 A1, published
`Jan. 23, 2003 (filed in IPR2017-01798 as Ex. 1010).
`
`Petitioner supports its contentions with the Declaration of
`
`Dr. Zygmunt J. Haas, filed as Exhibit 1002 in both proceedings (“Haas
`
`Decl.”), and Patent Owner cites Declarations of William C. Easttom II, each
`
`filed as Exhibit 2001 in the respective proceedings (“1797 Easttom Decl.”
`
`and “1798 Easttom Decl.,” respectively). Mr. Easttom also has been the
`
`subject of cross-examination, and a transcript of his deposition addressing
`
`the ’622 patent is filed in the record of each proceeding as Exhibit 1040.
`
`E. Asserted Grounds of Unpatentability
`
`We instituted inter partes review on the following grounds of
`
`unpatentability under 35 U.S.C. § 103.2 1797 Dec. on Inst. 34–35; 1798
`
`Dec. on Inst. 42.
`
`
`
`2 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 ’622 patent was filed
`
`9
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`

`IPR2017-01797 and IPR2017-01798
`Patent 8,724,622 B2
`
`
`Challenged Claim(s)
`
`References
`
`3, 4, 6–8, 10, 11, 13, 18, 21–23,
`27, 32, 34, 35, 38, and 39
`
`Griffin and Zydney
`
`11
`
`12
`
`Griffin, Zydney, and Vuori
`
`Griffin, Zydney, and Aravamudan
`
`14–17 and 28–31
`
`Griffin, Zydney, and Clark
`
`19 and 33
`
`Griffin, Zydney, and Väänänen
`
`24–26
`
`Griffin, Zydney, and Low
`
`
`
`IV. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
`
`patent in which they appear. 37 C.F.R. § 42.100(b) (2017);3 Cuozzo Speed
`
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of
`
`the broadest reasonable interpretation standard as the claim interpretation
`
`
`
`before the effective date of the relevant section of the AIA, we refer to the
`pre-AIA version of § 103 throughout this decision.
`
`3 A recent amendment to this rule does not apply here because the Petition
`was filed before November 13, 2018. See Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018)
`(to be codified at 37 C.F.R. pt. 42).
`
`10
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`

`IPR2017-01797 and IPR2017-01798
`Patent 8,724,622 B2
`
`standard to be applied in an inter partes review proceeding). Under the
`
`broadest reasonable interpretation standard, claim terms generally are given
`
`their ordinary and customary meaning, as would be understood by one of
`
`ordinary skill in the art in the context of the entire disclosure. See In re
`
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We note that
`
`only those claim terms that are in controversy need to be construed, and only
`
`to the extent necessary to resolve the controversy. See Nidec Motor Corp. v.
`
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017);
`
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`
`1999).
`
`In the Petitions, Petitioner argued that the Board need not construe the
`
`challenged claims for resolution of the controversy in these proceedings and
`
`that the challenged claims should be given their plain and ordinary meaning
`
`under the broadest reasonable interpretation standard. 1797 Pet. 8–9; 1798
`
`Pet. 13. Neither party proposed a construction for any claim term in its
`
`pre-institution briefing, and we agreed with Petitioner that no terms required
`
`express construction for purposes of institution. 1797 Dec. on Inst. 7;
`
`1798 Dec. on Inst. 8. In its Reply briefs, Petitioner contends that Patent
`
`Owner offers implied constructions of the terms “instant voice message” and
`
`“network interface.” 1797 Reply 1–8; 1798 Reply 1–7. We address each of
`
`these terms in turn.
`
`1. Instant Voice Message
`
`Independent challenged claims 3, 27, and 38 recite the term “instant
`
`voice message.” In particular, claim 3 recites a messaging system that
`
`“receives an instant voice message” from one of a plurality of instant voice
`
`message client systems, “wherein the instant voice message includes an
`
`11
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`

`IPR2017-01797 and IPR2017-01798
`Patent 8,724,622 B2
`
`object field including a digitized audio file.” Claims 27 and 38 recite a
`
`client platform system for “generating an instant voice message and a
`
`messaging system for transmitting the instant voice message.” Claim 27
`
`further requires an “instant voice messaging application” that “includes a
`
`document handler system for attaching one or more files to the instant voice
`
`message.” Certain of the challenged dependent claims recite additional
`
`limitations concerning, for example, additional fields included in the instant
`
`voice message (claims 4, 6–8), storage, deletion, or retrieval of instant voice
`
`messages (claims 10, 14, 17, 28, 31), the generation of the instant voice
`
`messages (claims 13, 18, 32), encryption/decryption of instant voice
`
`messages (claims 19, 33), compression/decompression of instant voice
`
`messages (claim 34), effects indicating receipt of instant voice messages
`
`(claim 23, 35), and display of instant voice messages (claim 30).
`
`As mentioned above, our Decision on Institution did not provide a
`
`construction for “instant voice message.” Since our institution
`
`determination, however, we had occasion to revisit the claim term “instant
`
`voice message” in the present proceedings, as well as in related proceedings,
`
`such as IPR2017-01667 and IPR2017-01668, which, as noted above, also
`
`concern claims of the ’622 patent. In the Patent Owner Responses in the
`
`present proceedings, Patent Owner raises two implied disputes concerning
`
`the term “instant voice message.” First, Patent Owner appears to argue that
`
`the “instant voice message” must itself be an audio file. In particular,
`
`relying on testimony of Mr. Easttom that “the ‘instant voice message’ is
`
`recorded in [an] audio file” (1797 Easttom Decl. ¶ 51), Patent Owner argues
`
`that disclosure in the asserted prior art of “[i]ncluding attachments (in
`
`addition to a voice message) in a voice container . . . does not disclose or
`
`12
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`IPR2017-01797 and IPR2017-01798
`Patent 8,724,622 B2
`
`suggest ‘attaching one or more files to the instant voice message’ itself.”
`
`1797 PO Resp. 21 (citing 1797 Easttom Decl. ¶¶ 50–58). Second, Patent
`
`Owner contends that “[i]nstant (or real-time) communication requires both
`
`instant (or real-time) transmission and instant (or real-time) receipt.” Id.
`
`at 25. Patent Owner challenges Petitioner’s assertion that a voice message is
`
`“instant” because it is a voice message transmitted in real time to an
`
`available recipient. Id. at 2425 (citing 1797 Pet. 20–21).
`
`Regarding Patent Owner’s first argument, Petitioner responds that
`
`“the only reasonable reading of the disclosure of the ’622 patent is that the
`
`term [instant voice message] refers to both the message object itself and the
`
`digitized speech (i.e., audio file) contained within the message object.” 1797
`
`Reply 2. Petitioner points out that the challenged claims themselves recite
`
`various data fields included within the claimed instant voice message,
`
`including “an object field including a digitized audio file” in claim 3
`
`(Ex. 1001, 24:26–27), an “action field” in claim 4, a “source field” in claim
`
`7, and a “destination field” in claim 8. Id. Additionally, Petitioner argues,
`
`claim 18 requires “creating an audio file for the instant voice message.” Id.
`
`Based on this claim language, Petitioner contends, “[Patent Owner’s]
`
`interpretation that the audio file is the claimed [instant voice message]
`
`makes no sense.” Id. Instead, Petitioner asserts, the claimed instant voice
`
`message is a message containing audio and other data, corresponding to the
`
`description in the specification of “a ‘message object’ . . . as a message that
`
`‘comprises an action field, an ID field, a source field, a destination field, and
`
`an object field.’” Id. (quoting Ex. 1001, 14:6–7) (citing Ex. 1001, 14:7–10,
`
`14:19–21, 14:36–40). Petitioner points out that the object field itself is
`
`described in the specification as “a block of data being carried by the
`
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`IPR2017-01797 and IPR2017-01798
`Patent 8,724,622 B2
`
`message object, which may be, for example, a digitized instant voice
`
`message,” establishing that the instant voice message is not the audio file or
`
`contained within the audio file but is instead a message object that includes
`
`an audio file containing the digitized instant voice message, among other
`
`data. Id. at 2–3 (quoting Ex. 1001, 14:7–10). Thus, Petitioner proposes,
`
`“instant voice message” should be construed as “a message containing
`
`digitized speech (that is capable of being transmitted in real time to a
`
`recipient device).” Id. at 3.
`
`Having considered the parties’ respective arguments, we conclude that
`
`“instant voice message” is properly construed as “data content including a
`
`representation of an audio message,” which is the construction that we
`
`previously adopted in our consolidated Final Written Decision in
`
`IPR2017-01667 and IPR2017-01668. 1667/1668 FD 19. In those cases, we
`
`explained that we were persuaded that the specification of the ’622 patent
`
`describes the “instant voice message” as content in three different
`
`embodiments, specifically:
`
`First, in the “record mode” embodiment, by describing the
`“instant voice message” as an audio file (Ex 1001, 8:7–11, 8:26–
`27, 9:64–65, 10:38–39, 10:45–46, 12:40–41, 16:22, 17:23–24,
`18:6–7, 18:58, 18:64–65, 19:46–47, 19:53), the ’622 patent
`specification focuses on the digitized audio file itself being the
`“instant voice message.” . . . The digitized audio file is the user’s
`speech that the client records. See [id. at] 8:811. Second, in
`the “intercom mode,” the specification describes buffering
`“successive portions of the instant voice message,” referring
`thusly to portions of the user’s speech that are written to a buffer.
`Id. at 11:3544. Again, the “instant voice message” includes the
`digitized audio. In a third embodiment, the specification
`describes a “message object” with an object field in this manner:
`“The content of the object field is a block of data being carried
`by the message object, which may be, for example, a digitized
`
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`IPR2017-01797 and IPR2017-01798
`Patent 8,724,622 B2
`
`
`instant voice message.” Id. at 14:3740. These embodiments,
`thus, paint a picture of the “instant voice message” as first and
`foremost being the content of the message, or the user’s speech,
`in some digitized form. Although the manner in which the data
`content is partitioned, stored, and delivered may vary from
`embodiment to embodiment (such as from audio file to digitized
`audio in a buffer), what is important is that the “instant voice
`message” always refers to the digitized audio message. . . .
`. . . .
`
`From the description of the three embodiments identified
`above, we conclude that the “instant voice message” is data
`content, and more specifically, is data content that includes a
`representation of an audio message. In all embodiments, the
`“instant voice message” refers, at a minimum, to the digitized
`speech, regardless of whether it is contained in an audio file,
`successive portions stored in a buffer, or a block of data in an
`object field.
`
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`1667/1668 FD 15–17. We further explained, however, that the “instant
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`voice message” is not merely an audio file (i.e., not only content), because
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`the specification also describes non-audio-file uses of the term. For
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`instance, the specification describes the “intercom mode” of instant voice
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`messaging distinctly from the “record mode” (audio file embodiment).
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`Ex. 1001, 7:57–61. “In the ‘intercom mode,’ instead of creating an audio
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`file 210, one or more buffers (not shown) of a predetermined size are
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`generated in the IVM client 206, 208 or local IVM server 202.” Id.
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`at 11:3639 (emphasis added). This alternative to creating an audio file is
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`further described as buffering successive portions of the instant voice
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`message. Id. at 11:3941. Therefore, although the specification consistently
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`relates “instant voice message” to content, is does not limit that content to
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`any particular form or structure (audio file or portions of digitized speech).
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`Regarding Patent Owner’s second argument, Petitioner responds that
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`the specification and claims of the ’622 patent explain that a message can be
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`an instant voice message even if it is not received by a recipient device in
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`real time, because, for example, the specification and claims explain that, if
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`a recipient device is not available, the instant voice message may be
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`temporarily stored at a server for later delivery when the recipient becomes
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`available. 1797 Reply 4 (citing Ex. 1001, 8:32–39, 9:17–21, 10:7–11,
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`10:52–56, 16:35–40, 17:32–36, 18:19–24, 19:6–11, 19:65–20:2, 24:61–
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`25:3). According to Petitioner, these portions of the patent establish that
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`instant voice messages need not always be received in real time. Id.
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`On this second issue, we agree with Patent Owner that merely
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`transmitting the “instant voice message” in real time is insufficient to define
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`the “instant” feature of an “instant voice message.” The Background of the
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`Invention purposely distinguishes a voice mail message from an “instant”
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`text message. Ex. 1001, 2:2246. In the voice mail message example, the
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`specification describes the drawbacks of dialing a telephone number, and
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`after a few more steps, finally “recording the message for later pickup by the
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`recipient.” Id. at 2:2632 (emphasis added). In contrast, for an “instant”
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`text message, a server presents the user with “a list of persons who are
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`currently ‘online’ and ready to receive text messages on their own client
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`terminals.” Id. at 2:3841 (emphasis added). “The text message is sent
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`immediately via the text messaging server to the selected one or more
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`persons and is displayed on their respective client terminals.” Id.
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`at 2:4446. That is, with a voice mail message, a person on the receiving
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`end, who admittedly was not ready to engage in a direct voice conversation,
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`must take an active step to retrieve the recorded message, regardless of when
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`Patent 8,724,622 B2
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`the message was recorded. In contrast, the “instant” text message is
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`immediately transmitted to the recipient, which is ready to receive it, thus
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`ensuring a speedy arrival. Thus, the specification distinguishes a voice mail
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`message from the “instant” text message in that, although both messages are
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`recorded and transmitted, only the “instant” text message, as the word
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`“instant” implies, confers immediacy to its receipt by a ready recipient. The
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`“instant” in the “instant voice message” imparts the same speedy receipt.
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`Our conclusion that an “instant” voice message must involve this
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`immediate transmission and, likewise, speedy reception of the message is
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`not diminished by embodiments that store the message at the server for later
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`delivery. See id. at 8:3539 (“[I]f a recipient IVM client is not currently
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`connected to the local IVM server 202 (i.e., is unavailable), the IVM server
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`temporarily saves the instant voice message and delivers it to the IVM client
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`when the IVM client connects to the local IVM server 202 (i.e., is
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`available).”). Neither the sender nor the recipients can have any expectation
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`with regard to the timing of the message’s receipt when the recipients are not
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`online, and thus, not available to receive the message. Indeed, this same
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`embodiment carries out the “instant” capability by delivering the message
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`stored at the server to the client, when the client connects to the server, thus
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`becoming available to receive it. Consequently, we determine that an
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`“instant voice message” is one that is transmitted in real time and received
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`accordingly, when the recipient is available.
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`2. Network Interface
`
`Independent challenged claims 3 and 24 recite “a network interface
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`connected to a packet-switched network.” Similarly, independent
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`challenged claims 27 and 38 recite “a network interface coupled to [a] client
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`device and connecting the client device to a packet-switched network.”
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`Although Patent Owner does not offer a formal construction of the term
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`“network interface,” Patent Owner argues in its analysis of the prior art that
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`the recited interface in each of the independent claims must be “directly”
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`connected to the “packet-switched network.” See, e.g., 1797 PO Resp. 13–
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`19. Petitioner responds that such a reading is contrary to the disclosure of
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`the ’622 patent and Patent Owner’s expert’s deposition testimony. 1797
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`Reply 6–8. First, according to Petitioner, the claim language does not
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`recited the term “directly,” but instead merely requires the network interface
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`and the network to be “connected.” Id. at 6. Petitioner contends, “[a]s
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`confirmed by Mr. Easttom’s deposition testimony, the specification supports
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`this understanding by describing embodiments that ‘facilitat[e] instant voice
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`messaging according to the present invention’ using a legacy telephone 110
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`that has an indirect connection to a packet-switched network through a
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`[public switched telephone network] PSTN network.” Id. (quoting Ex.
`
`1001, 7:37–52) (citing Pet. 13; Ex. 1001, 1:66–2:21; Ex. 1040, 103:10–
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`104:22). Further, “[o]ther portions of the specification also use ‘connected
`
`to’ to refer to indirect connections” (id. (citing Ex. 1001, 8:32–39, 9:17–21,
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`22:67–23:3)), and “Mr. Easttom confirmed this understanding of ‘connected
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`to’ during his deposition,” testifying that IVM client 208 in Figure 5 of the
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`’622 patent “is ‘connected to’ IP Network (Internet) 102, even though Local
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`IP Network 204 is interposed between IVM client 208 and network 102” (id.
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`at 7 (citing Ex. 1040, 139:20–146:22; Ex. 1001, Fig. 5)). Similarly,
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`Petitioner contends, when discussing Griffin, Mr. Easttom agreed that a
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`network interface depicted in a figure of that reference is “connected to” a
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`router, where such connection has both a wireless carrier and a network
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`interposed. Id. at 7–8 (citing Ex. 1040, 161:7–13; Ex. 1005, Figs. 2, 3).
`
`Having considered the parties’ respective arguments, we are
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`persuaded, based on the evidence cited and reasoning articulated by
`
`Petitioner, which we hereby adopt, that the claim term “connected to” does
`
`not preclude an indirect connection. See, e.g., id. at 6–8; Ex. 1001, 7:37–52;
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`Ex. 1040, 139:20–146:22, 161:7–13. We conclude, therefore, that the
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`recited “network interface” in challenged claims 3, 24, 27, and 38 need not
`
`be directly connected to the recited packet-switched network. We do not
`
`find that any construction of that term otherwise is required for purposes of
`
`this Decision.
`
`B. Analysis of the Asserted Grounds
`
`1. General Principles
`
`A claim is unpatentable for obviousness under 35 U.S.C. § 103(a) if
`
`the differences between the claimed subject matter and the prior art are
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`“such that the subject matter, as a whole, would have been obvious at the
`
`time the invention was made to a person having ordinary skill in the art to
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`which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
`
`398, 406 (2007). The question of obviousness is resolved on the basis of
`
`underlying factual determinations, including (1) the scope and content of the
`
`prior art; (2) any differences between the claimed subject matter and the
`
`prior art; (3) the level of skill in the art; and (4) when in evidence, objective
`
`indicia of non-obviousness (i.e., secondary considerations).4
`
` Graham v.
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`
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`4 The parties do not address secondary considerations, which, therefore, do
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`Patent 8,724,622 B2
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