Trials@uspto.gov
`571.272.7822
`
`Paper No. 40
`
` Filed: January 31, 2019
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`
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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.
`
`____________
`
`Case IPR2017-01799
`Patent 8,199,747 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
`
`
`
`I.
`
`INTRODUCTION
`
`Samsung Electronics America, Inc. (“Petitioner”) filed a Petition
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`requesting inter partes review of claims 1–3, 12, and 13 (“challenged
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`claims”) of U.S. Patent No. 8,199,747 B2 (Ex. 1001, “the ’747 patent”).
`
`
`
`
`
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`571.272.7822
`
`Paper No. 40
`
` Filed: January 31, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`____________
`
`Case IPR2017-01799
`Patent 8,199,747 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
`
`
`
`I.
`
`INTRODUCTION
`
`Samsung Electronics America, Inc. (“Petitioner”) filed a Petition
`
`requesting inter partes review of claims 1–3, 12, and 13 (“challenged
`
`claims”) of U.S. Patent No. 8,199,747 B2 (Ex. 1001, “the ’747 patent”).
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`IPR2017-01799
`Patent 8,199,747 B2
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`Paper 1 (“Pet.”). Uniloc 2017, LLC (“Patent Owner”) filed a Preliminary
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`Response. Paper 7 (“Prelim. Resp.”). We instituted this review as to all
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`challenged claims. Paper 9 (“Inst. Dec.”) (instituting claims 2 and 12);
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`Paper 16 (“Post-SAS Order”) (modifying the institution decision to include
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`all challenged claims).
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`Subsequent to institution, Patent Owner filed a Patent Owner
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`Response. Paper 21 (“PO Resp.”). Petitioner filed a Reply. Paper 24
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`(“Reply”). Patent Owner also filed a Motion to Exclude (Paper 28),
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`Petitioner opposed (Paper 31), and Patent Owner filed a Reply (Paper 32).
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`A transcript of the oral hearing held on October 30, 2018, has been entered
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`into the record as Paper 39 (“Tr.”).
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`This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
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`For the reasons that follow, Petitioner has demonstrated by a preponderance
`
`of the evidence that claims 1–3, 12, and 13 of the ’747 patent are
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`unpatentable.
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`A. Related Matters
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`
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`Petitioner represents that the ’747 patent is the subject of numerous
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`ongoing actions before the U.S. District Court for the Eastern District of
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`Texas, including an action filed against Petitioner (Case No. 2-16-cv-
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`00638). Pet. 1–5; see Paper 3, 2–3; Paper 14, 1; Paper 15, 1; Paper 26, 1–2.
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`Before the Office, the ’747 patent also was the subject of Cases
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`IPR2017-01257 and IPR2017-02085, in which we denied institution, and
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`Case IPR2018-00748, in which we terminated the Petition prior to a decision
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`on institution. IPR2017-01257, Paper 8 (Dec. 4, 2017); IPR2017-02085,
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`Paper 11 (April 16, 2018); IPR2018-00748, Paper 13 (Sept. 7, 2018).
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`B. The ’747 Patent
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`The ’747 patent, titled “System and Method for Instant VoIP
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`Messaging,” relates to Internet telephony, and more particularly, to instant
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`voice over IP (“VoIP”) messaging over an IP network, such as the Internet.
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`Ex. 1001, [54], 1:14–18. The ’747 patent acknowledges that “[v]oice
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`messaging” and “instant text messaging” in both the VoIP and public
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`switched telephone network environments were previously known. Id. at
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`2:18–42. In prior art instant text messaging systems, according to the ’747
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`patent, a server would present a user of a client terminal with a “list of
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`persons who are currently ‘online’ and ready to receive text messages,” the
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`user would “select one or more” recipients and type the message, and the
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`server would immediately send the message to the respective client
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`terminals. Id. at 2:30–42. According to the ’747 patent, however, “there is
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`still a need in the art for . . . a system and method for providing instant VoIP
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`messaging over an IP network,” such as the Internet. Id. at 2:43–47. The
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`invention of the ’747 patent is thus directed to such a system and method.
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`Id. at 1:15–18, 6:43–45.
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`In one embodiment, the ’747 patent discloses local instant voice
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`messaging (“IVM”) system 200, depicted in Figure 2 below. Id. at 6:18–20.
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`As illustrated in Figure 2, local packet-switched IP network 204,
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`which may be a local area network (“LAN”), “interconnects” IVM
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`clients 206, 208 and legacy telephone 110 to local IVM server 202. Id.
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`at 6:46–65; see id. at 7:19–20, 7:57–61. Local IVM server 202 enables IVM
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`functionality over network 204. Id. at 7:57–61.
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`In “record mode,” IVM client 208 “displays a list of one or more IVM
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`recipients,” provided and stored by local IVM server 202, and the user
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`selects recipients from the list. Id. at 7:53–55, 7:61–67. IVM client 208
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`then transmits the selections to IVM server 202 and “records the user’s
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`speech into . . . digitized audio file 210 (i.e., an instant voice message).” Id.
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`at 8:1–7.
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`When the recording is complete, IVM client 208 transmits audio
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`file 210 to local IVM server 202, which delivers the message to the selected
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`recipients via local IP network 204. Id. at 8:1125. “[O]nly the available
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`IVM recipients, currently connected to . . . IVM server 202, will receive the
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`instant voice message.” Id. at 8:2930. IVM server 202 “temporarily saves
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`the instant voice message” for any IVM client that is “not currently
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`connected to . . . local IVM server 202 (i.e., is unavailable)” and “delivers
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`it . . . when the IVM client connects to . . . local IVM server 202 (i.e., is
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`available).” Id. at 8:30–35; see id. at 9:13–17. Upon receiving the instant
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`voice message, the recipients can audibly play the message. Id. at 8:25–28.
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`C. Illustrative Claims
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`Of the challenged claims, claims 1–3 are independent. Those claims
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`are reproduced below:
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`1. A method for instant voice messaging over a
`packet-switched network, the method comprising:
`generating an instant voice message, wherein generating
`includes recording the instant voice message in an audio file
`and attaching one or more files to the audio file;
`transmitting the instant voice message having one or more
`recipients;
`receiving an instant voice message when a recipient is
`available; and
`receiving a temporarily stored instant voice message when a
`recipient becomes available, wherein the instant voice message
`is temporarily stored when at least one recipient is unavailable.
`
`2. A method for instant voice messaging over a
`packet-switched network, the method comprising:
`receiving a list of nodes within the packet-switched network,
`the list of nodes including a connectivity status of each node,
`said connectivity status being available and unavailable,
`wherein a node within the list is adapted to be selected as a
`recipient of an instant voice message;
`displaying said list of nodes;
`transmitting the instant voice message having one or more
`recipients;
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`receiving an instant voice message when a recipient is
`available; and
`receiving a temporarily stored instant voice message when a
`recipient becomes available, wherein the instant voice message
`is temporarily stored when at least one recipient is unavailable.
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`3. A method for instant voice messaging over a packet-switched
`network, the method comprising:
`generating an instant voice message; and
`controlling a method of generating the instant voice message
`based upon a connectivity status each recipient;
`transmitting the instant voice message having one or more
`recipients;
`receiving an instant voice message when a recipient is
`available; and
`receiving a temporarily stored instant voice message when a
`recipient becomes available, wherein the instant voice message
`is temporarily stored when at least one recipient is unavailable.
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`Ex. 1001, 23:55–24:29.
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`D. Evidence of Record
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`The Petition relies upon the following asserted prior art references:
`
`U.S. Patent No. 8,150,922 B2 (issued April 3, 2012) (Ex. 1005,
`“Griffin”);
`
`International Application Publication No. WO 01/11824 A2 (published
`Feb. 15, 2001) (Ex. 1006, “Zydney”);
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`In addition, Petitioner supports its contentions with the Declaration of
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`Dr. Zygmunt J. Haas. Ex. 1002. In response, Patent Owner proffers the
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`Declaration of Mr. William C. Easttom II. Ex. 2001.
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`E. Asserted Grounds of Unpatentability
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`Petitioner challenges the patentability of claims 1–3, 12, and 13 under
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`35 U.S.C. § 103 over the combination of Griffin and Zydney. Pet. 6.
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`II. ANALYSIS
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`A. Level of Ordinary Skill
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`Citing Dr. Haas’s testimony, Petitioner proposes that a “person of
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`ordinary skill in the art at the time of the alleged invention . . . would have
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`had at least a bachelor’s degree in computer science, computer engineering,
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`electrical engineering, or the equivalent and at least two years of experience
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`in the relevant field, e.g., network communication systems.” Pet. 7–8 (citing
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`Ex. 1002 ¶¶ 15–16). Petitioner further states that “[m]ore education can
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`substitute for practical experience and vice versa.” Id. Patent Owner’s
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`declarant, Mr. Easttom, similarly testifies that a person of ordinary skill in
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`the art is “someone with a baccalaureate degree related to computer
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`technology and 2 years of experience with network communication
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`technology, or 4 years of experience without a baccalaureate degree.” PO
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`Resp. 4 (citing Ex. 2001 ¶ 16).
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`The principal difference between the parties’ proposed qualifications
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`is that, as an alternative to an undergraduate degree and two years of
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`relevant work experience, Patent Owner’s proposal allows for a specific
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`number of years of experience as a substitute for an undergraduate degree,
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`while Petitioner’s proposal is vague in this regard. Based on our review of
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`the ’747 patent and the prior art of record, we find that Patent Owner’s
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`proposal is more precise as it takes into account a level of experience of four
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`years with network communication technology without the undergraduate
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`degree. We, therefore, adopt Patent Owner’s expression of the level of skill
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`in the art, which encompasses both alternative sets of qualifications.
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`B. Claim Construction
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`The Board interprets claim terms of an unexpired patent using the
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`broadest reasonable construction in light of the specification of the patent.
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`37 C.F.R. § 42.100(b) (2017).1
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`In the Institution Decision, we adopted a construction of the term
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`“node” as encompassing a “potential recipient.” Inst. Dec. 7–9. We also
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`noted that we did not “understand Petitioner’s contentions of unpatentability
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`in this case to be based on a reading of a ‘potential recipient’—and hence a
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`‘node’—to be ‘a person.’” Id. at 9 (citing Pet. 45–57). During trial, Patent
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`Owner renews its arguments relating to the construction of the term “node.”
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`PO Resp. 5–8. Patent Owner also raises a dispute concerning the scope of
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`the term “instant voice message.” Id. at 8, 30–33. We address each of these
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`issues in turn.
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`1. Node
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`Claim 2 recites “nodes” that are “within the packet-switched
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`network,” and that have a connectivity status of available and unavailable.
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`Ex. 1001, 24:3–6. Patent Owner proposes that a “node” is a device within
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`the packet-switched network, given the clear claim language that the nodes
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`are “within the packet-switched network.” PO Resp. 6–7. Patent Owner
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`also proffers a dictionary definition of “node,” in the computer network
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`1 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).
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`context, as a “terminal in a computer network.” Id. at 8 (citing Ex. 2003, 3).
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`Patent Owner contends that we must determine whether the “node” is a
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`device, because, according to Patent Owner, Petitioner has mapped claim 1’s
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`“nodes” to “persons,” instead of devices. Id. Petitioner asserts that no
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`construction is necessary to explicitly require a device. Reply 1.
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`Given Patent Owner’s insistence that Petitioner identified “persons”
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`as “nodes,” we construe the term “node” to be a device, not a person. The
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`plain and ordinary meaning of the claim is paramount to our conclusion that
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`the “node” is a device. The language refers to “nodes within the packet-
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`switched network.” Ex. 1001, 24:34. This unambiguously puts the “node”
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`in the environment of a network, where devices communicate with each
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`other. See Ex. 2003, 3 (defining node, in the computer science sense, as “A
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`terminal in a computer network.”). Accordingly, Patent Owner is correct
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`that a “node” is a “device.”
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`2. Instant Voice Message
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`“instant”
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`Patent Owner argues that the “instant voice message” is “instant”
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`because there is an “expectation” that “a person on the receiving end of an
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`‘instant voice message’” will receive it in real time. PO Resp. 32. Patent
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`Owner challenges Petitioner’s assertion that a voice message is “instant”
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`because it is a voice message transmitted in real time to an available
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`recipient. Id. at 30–33 (citing Pet. 19). Petitioner argues that the
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`Specification does not support Patent Owner’s contention because of an
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`embodiment in which the instant voice message is stored at the central
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`server for delivery, when the recipient becomes available. Reply 5–6.
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`We agree with Patent Owner that merely transmitting the “instant
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`voice message” in real time is insufficient to define the “instant” feature of
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`an “instant voice message.” As noted by Patent Owner, the Background of
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`the Invention purposely distinguishes a voice mail message from an
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`“instant” text message. Ex. 1001, 2:1842. In the voice mail message
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`example, the Specification describes the drawbacks of dialing a telephone
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`number, and after a few more steps, finally “recording the message for later
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`pickup by the recipient.” Id. at 2:2228 (emphasis added). In contrast, for
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`an “instant” text message, a server presents the user with “a list of persons
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`who are currently ‘online’ and ready to receive text messages on their own
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`client terminals.” Id. at 2:3437 (emphasis added). “The text message is
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`sent 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. at
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`2:4042. That is, with a voice mail message, a person on the receiving end,
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`who admittedly was not ready to engage in a direct voice conversation, must
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`take an active step to retrieve the recorded message, regardless of when the
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`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 message 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 Ex. 1001, 8:3035 (“[I]f a recipient IVM client is not
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`currently connected to the local IVM server 202 (i.e., is unavailable), the
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`IVM server temporarily saves the instant voice message and delivers it to the
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`IVM client when the IVM client connects to the local IVM server 202 (i.e.,
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`is available).”). Neither the sender nor the recipients can have any
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`expectation with regard to the timing of the message’s receipt when the
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`recipients are not online, and thus, not available to receive the message.
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`Indeed, this same embodiment carries out the “instant” capability by
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`delivering the message stored at the server to the client, when the client
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`connects to the server, thus becoming available to receive it. Consequently,
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`we agree with Patent Owner that an “instant voice message” is one that is
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`transmitted in real time and received accordingly, when the recipient is
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`available.
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`“attaching”
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`Patent Owner makes another argument concerning the scope of
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`“instant voice message,” the issue revolves around what it means to attach a
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`file to an audio file. PO Resp. 2226. Patent Owner’s argument relies on
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`the portion of the Board’s Institution Decision where we determined, for
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`claim 1, that Petitioner had not shown a reasonable likelihood of prevailing
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`in its challenge of unpatentability because the claim requires an attachment
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`to the audio file, rather than attachment to the instant voice message. Id.
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`Our Institution Decision did not provide a construction for either “instant
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`voice message” or the “attaching” claim limitation. Inst. Dec. 6–9. We note
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`here that our discussion of claim 1 in our Institution Decision is not binding,
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`and we may change our view after review of the full record. “[T]he Board is
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`not bound by any findings made in its Institution Decision. At that point, the
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`Board is considering the matter preliminarily without the benefit of a full
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`record. The Board is free to change its view of the merits after further
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`development of the record, and should do so if convinced its initial
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`inclinations were wrong.” TriVascular, Inc. v. Samuels, 812 F.3d 1056,
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`1068 (Fed. Cir. 2016).
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`Since our institution determination, we have had occasion to revisit
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`the claim language regarding the “attaching” issue, and have found that the
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`scope of the word is broader than our initial assessment. In a set of related
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`inter partes reviews, we expressly construed the terms “instant voice
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`message” and “attaching” to resolve the dispute of whether attaching one or
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`more files to an instant voice message was different from attaching one or
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`more files to an audio file. See Final Written Decision, Facebook, Inc., v.
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`Uniloc 2017 LLC, Case IPR2017-01428, Paper 40, *1221 (PTAB
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`November 30, 2018). Part of that analysis is relevant here also, and where
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`appropriate is included below.2
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`Claim 1 of the ’747 patent recites that generating an instant voice
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`message includes “attaching one or more files to the audio file.” Ex. 1001,
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`23:59. Although this claim requires attaching one or more files to “an audio
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`file,” we note that related patents recite attaching one or more files to an
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`“instant voice message” instead. For instance, claim 9 of U.S. Patent No.
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`2 We also previously construed “instant voice message” as data content
`including a representation of an audio message. Facebook, Inc., v. Uniloc
`2017 LLC, Case IPR2017-01428, slip op. at 1218, (PTAB November 30,
`2018) (Paper 40). There is no dispute in this proceeding concerning the
`content or structure of the “instant voice message,” save for the issue of how
`an attachment of one or more files is accomplished. Accordingly, we need
`not incorporate here our previous construction of “instant voice message” as
`“data content.”
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`8,995,433, which shares the same disclosure with the ’747 patent, recites
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`that “instant voice message application attaches one or more files to the
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`instant voice message.” We include this claim language in our discussion to
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`highlight that the words “attaching” or “attached” are recited with respect to
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`both an “instant voice message” and an “audio file.”
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`We start with the claim language. As noted above, the claims of the
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`’747 patent require attachment of one or more files to an audio file. No
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`other claim of the ’747 patent recites “attaching” or informs us as to the
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`scope of that word. As to the Specification, “attachment” is described as
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`follows:
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`is enabled
`The attachment of one or more files
`conventionally via a methodology such as “drag-and-drop”
`and the like, which invokes the document handler 306 to
`make the appropriate linkages to the one or more files and
`flags the messaging system 320 that the instant voice
`message also has the attached one or more files.
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`Ex. 1001, 13:2833. This passage also describes that, in addition to making
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`linkages, flags alert the messaging system in the client device that the instant
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`voice message has an attachment. Thus, “attaching” creates an association
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`between the one or more files and the instant voice message so that the
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`system, once alerted, may transmit the instant voice message with the
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`associated one or more files. This passage describes the attachment of files
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`to an instant voice message in the “record mode,” i.e., when the “instant
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`voice message” is recorded in an audio file. Id. at 13:528 (describing how
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`the audio file is recorded and processed before transmission, including
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`giving the user options to attach documents). The Specification provides no
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`other detailed description of how to attach a file to either an “instant voice
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`message” or an “audio file.” It seems reasonable, therefore, that, in reciting
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`attachment to an “instant voice message,” when dealing with the audio file
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`form of that message, the Specification supports that attachment to an “audio
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`file” is synonymous with attachment to an “instant voice message,” because
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`those claims would be referring to the “record mode.” Claim 1, in contrast,
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`recites attaching to an “audio file.” Thus, this claim is directed to an “instant
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`voice message” that is in the form of an “audio file.”
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`The Specification passage identified above describes “attachment” of
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`one or more files to an instant voice message that, in “record mode,” is an
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`audio file, and also describes that the “attachment” is made by providing
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`some indication (e.g., linkages) that another file (or files) is associated with
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`the instant voice message or the audio file. This conclusion –that
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`“attaching” is associating—is also confirmed by credible expert testimony
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`on a person of ordinary skill in the art’s understanding of the conventional
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`methods of effecting “attachments” at the time of the invention. See Ex.
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`1040, 135:9137:13, 139:519. For instance, Mr. Easttom testified that,
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`under conventional methods, two files would be considered “attached” if the
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`recipient device knows that those two documents are associated or where
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`“additional information” that indicates the association (that “they go
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`together”) is added to the attachment and the message. Id.
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`The discussion above brings us to the issue Patent Owner raises of
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`whether attachment must be to the audio file itself. PO Resp. 30. Patent
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`Owner urges us to construe the “attached to” phrase (and its variants) very
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`narrowly. For example, Patent Owner argues that attaching to the audio file
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`is different than attaching to a structure that is used to transport that audio
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`file. Id. at 23 (arguing that attaching a file to a data container is
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`distinguishable from attaching one or more files to an audio file). The
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`argument implies that an “attachment” requires some direct physical
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`appendage or some particular joining of the one or more files and the audio
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`file. The Specification describes “attaching” broadly, however, as making
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`appropriate linkages to the one or more files (the attachments), not the audio
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`file. There is no disclosure of any appendage to the audio file, no alteration
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`of the audio file to include additional data, and no particular information
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`provided to the messaging system to carry out the attachment to the audio
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`file itself. Rather, the Specification describes generally the use of linking
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`and the flags as the means by which the system handles the one or more files
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`as attachments of the “instant voice message,” which is in the form of an
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`audio file, in the embodiment encompassed by claim 1. The tangible
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`difference between an audio file with an attachment and one without seems
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`to be in whether the document handler has sufficiently linked the attachment
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`and whether the flags inform the client system to associate the attachment
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`for effective transmission to the server. Thus, as long as the client has
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`sufficient information that the audio file has an attachment, the recited
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`“attachment” is performed. The particular manner of associating the one or
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`more files with the audio file—such as whether links, flags, or other like
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`information is used—is irrelevant, as such details are not recited expressly.
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`Based on our review of the claim language, the Specification, and the
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`parties’ arguments on claim construction, we determine that under the plain
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`and ordinary meaning in the context of the Specification, as explained
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`above, “one or more files attached to an audio file” means indicating that
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`another file (or files) is associated with the audio file.
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`15
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`C. Alleged Obviousness over Griffin and Zydney
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`Petitioner argues Griffin and Zydney render obvious claims 1–3, 12,
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`and 13. Pet. 17–70.
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`1. Overview of Griffin
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`
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`Griffin, titled “Voice and Text Group Chat Display Management
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`Techniques for Wireless Mobile Terminals,” relates to a technique of
`
`managing the display of “real-time speech and text conversations (e.g., chat
`
`threads) on limited display areas.” Ex. 1005, [54], 1:9−11. Griffin discloses
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`a wireless mobile terminal as shown in Figure 1, reproduced below.
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`
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`Figure 1, above, depicts mobile terminal 100 comprising speaker 103,
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`which renders signals such as received speech audible; display 102 for
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`rendering text and graphical elements visible; navigation rocker 105, which
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`allows a user to navigate a list or menu displayed on the screen; microphone
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`107, for capturing the user’s speech; and push-to-talk button 101, which
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`allows the user to initiate recording and transmission of audio. Id. at
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`16
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`3:14−30. Griffin also describes, in connection with Figure 2, reproduced
`
`below, the overall system architecture of a wireless communication system
`
`where the mobile terminals communicate with a chat server complex. Id. at
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`3:49−51.
`
`
`
`Figure 2, above, illustrates wireless carrier infrastructures 202, which
`
`support wireless communications with mobile terminals 100, such that the
`
`mobile terminals wirelessly transmit data to a corresponding infrastructure
`
`202 for sending the data packets to communication network 203, which
`
`forwards the packets to chat server complex 204. Id. at 3:49−61.
`
`Communication network 203 is described as a “packet-based network,
`
`[which] may comprise a public network such as the Internet or World Wide
`
`Web, a private network such as a corporate intranet, or some combination of
`
`public and private network elements.” Id. at 3:61−65.
`
`Griffin’s chat server complex 204 receives encoded data comprising
`
`text, speech, and/or graphical messages (or some combination thereof),
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`when a plurality of users chat together (i.e., send chat messages from one
`
`
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`17
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`terminal 100 to another). Id. at 4:11−15, 4:62−65. An outbound chat
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`message, for example, is decomposed to locate the list of recipients, and the
`
`recipient’s current status is determined. Id. at 5:9−15. Griffin describes
`
`presence status 702 as “an indicator of whether the recipient is ready to
`
`receive the particular type of message, speech and/or text messages only,
`
`etc.).” Id. “When presence status 702 changes, the presence manager 302
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`[of server complex 204] sends a buddy list update message 600 to all the
`
`subscribers listed in the subscriber identifier field 706 of the corresponding
`
`presence record 700.” Id. at 5:27−30.
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`Griffin provides a buddy list display illustrated in Figure 9,
`
`reproduced below. Id. at 8:15−16.
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`
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`Figure 9, above, depicts title bar 901, where inbound chat message
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`indicator 905 is an icon accompanied by an audible sound when the icon is
`
`first displayed, indicating to the user that there is at least one unheard or
`
`unread inbound chat message that has arrived at terminal 100. Id. at
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`8:17−19, 8:28−32. Left softkey 910 labeled “Select” permits selection of a
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`particular buddy for chatting, selection of which is indicated with selection
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`18
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`indicator 906. Id. at 8:45−52, 8:60−67, 9:1−5. “If the user pushes-to-talk,
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`the display switches to the chat history, and the user is able to record and
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`transmit a speech message and consequently start a new thread with the
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`selected buddies.” Id. at 9:27−31.
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`2. Overview of Zydney
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`Zydney, titled “Method and System for Voice Exchange and Voice
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`Distribution,” relates to packet communication systems that provide for
`
`voice exchange and voice distribution between users of computer networks.
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`Ex. 1006, [54], [57], 1:4–5. While acknowledging that e-mail and instant
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`messaging systems were well-known text-based communication systems
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`utilized by users of online services and that it was possible to attach files for
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`the transfer of non-text formats via those systems, Zydney states that the
`
`latter technique “lack[ed] a method for convenient recording, storing,
`
`exchanging, responding and listening to voices between one or more parties,
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`independent of whether or not they are logged in to their network.” Id. at
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`1:7–17. Zydney thus describes a method in which “voice containers”—i.e.,
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`“container object[s] that . . . contain[ ] voice data or voice data and voice
`
`data properties”—can be “stored, transcoded and routed to the appropriate
`
`recipients instantaneously or stored for later delivery.” Id. at 1:19–22, 12:6–
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`8. Figure 1 of Zydney is reproduced below.
`
`
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`19
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`Figure 1, above, illustrates a high-level functional block diagram of
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`Zydney’s system for voice exchange and voice distribution. Id. at 10:19–20.
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`Referring to Figure 1, system 20 allows software agent 22, with a user
`
`interface, in conjunction with central server 24 to send messages using voice
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`containers, illustrated by transmission line 26, to another software agent 28,
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`as well as to receive and store such messages, in a “pack and send” mode of
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`operation. Id. at 10:20–11:1. Zydney explains that a pack and send mode of
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`operation “is one in which the message is first acquired, compressed and
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`then stored in a voice container 26 which is then sent to its destination(s).”
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`Id. at 11:1–3. The system has the ability to store messages both locally and
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`centrally at server 24 whenever the recipient is not available for a prescribed
`
`period of time. Id. at 11:3–6.
`
`In the use of Zydney’s system and method, the message originator
`
`selects one or more intended recipients from a list of names that have been
`
`previously entered into the software agent. Ex. 1006, 14:16–18. The agent
`
`permits distinct modes of communication based on the status of the
`
`
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`20
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`IPR2017-01799
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`recipient, including the “core states” of whether the recipient is online or
`
`offline and “related status information” such as whether the recipient does
`
`not want to be disturbed. Id. at 14:19–15:1. Considering the core states, the
`
`software agent offers the originator alternative ways to communicate with
`
`the recipient, the choice of which can be either dictated by the originator or
`
`automatically selected by the software agent, according to stored rules. Id.
`
`at 15:3–7. If the recipient is online, the originator can either begin a real-
`
`time “intercom” call, which simulates a telephone call, or a voice instant
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`messaging session, which allows for an interruptible conversation. Id. at
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`15:8–10. If the recipient is offline, “the originator can either begin a voice
`
`mail conversation that will be delivered the next time the recipient logs in or
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`can be delivered to the recipient’s e-[m]ail as a digitally encoded
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`[Multipurpose Internet Mail Extension (“MIME”)] attachment.” Id. at
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`15:15–17. Zydney explains that the choice of the online modes “depe
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