Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 34
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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.
`____________
`
`Case IPR2017-01800
`Patent 8,243,723 B2
`____________
`
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
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`
`
`
`
`
`
`Paper 34
`
`
`
` Entered: 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 IPR2017-01800
`Patent 8,243,723 B2
`____________
`
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a)
`
`
`
`
`
`
`
`IPR2017-01800
`Patent 8,243,723 B2
`
`
`I.
`
`INTRODUCTION
`
`We instituted this proceeding for inter partes review of claims 13 of
`
`U.S. Patent No. 8,243,723 B2 (Ex. 1001, “the ’723 patent”), owned by
`
`Uniloc 2017 LLC (“Patent Owner”), as requested by Samsung Electronics
`
`America, Inc. (“Petitioner”). 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, and in view of the full
`
`record, Petitioner has shown by a preponderance of the evidence that claims
`
`13 of the ’723 patent are unpatentable.
`
`II. BACKGROUND
`
`A. Procedural History
`
`Petitioner filed its Petition for inter partes review on July 20, 2017.
`
`Upon consideration of the Petition and Patent Owner’s Preliminary
`
`Response (Paper 6), we issued on February 6, 2018, a Decision on
`
`Institution, which partially granted the Petition. Paper 8 (“Dec. on Inst.”).
`
`We determined that Petitioner had demonstrated a reasonable likelihood of
`
`prevailing in its challenge of claims 1 and 3, but not of claim 2. Id. at 24.
`
`On April 24, 2018, the Supreme Court held that a decision to institute under
`
`35 U.S.C. § 314 may not institute on fewer than all claims challenged in a
`
`petition. SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018). Consistent
`
`with SAS, we modified our Decision on Institution to institute on all of the
`
`challenged claims, including claim 2, on all the grounds presented in the
`
`Petition, and we extended the deadline for Patent Owner to file its Response.
`
`Paper 12.
`
`2
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`IPR2017-01800
`Patent 8,243,723 B2
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`
`Patent Owner filed a Patent Owner Response. Paper 16 (“PO Resp.”).
`
`Petitioner filed a Reply. Paper 19 (“Reply”). Patent Owner further filed a
`
`Motion to Exclude deposition testimony objected to as being outside the
`
`scope of permissible deposition topics. Paper 23 (“Motion”). Petitioner
`
`opposes the Motion. Paper 26 (“Opp’n”).
`
`Before the scheduled hearing in this proceeding, we issued an Order
`
`giving the parties notice of claim construction positions of the term “instant
`
`voice message,” which is a term recited in all of the ’723 patent claims.
`
`Paper 29. In that Order, we notified the parties that the panel expected to
`
`hear the parties’ positions concerning the alternative constructions under
`
`consideration in IPR2017-01427, IPR2017-01428, IPR2017-01667 and
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`IPR2017-01668 (proceedings involving patents related to the ’723 patent
`
`and also reciting the term “instant voice message”). Id. We heard oral
`
`argument on October 30, 2018, the transcript of which is entered in the
`
`record. Paper 33 (“Tr.”).
`
`B. Related Matters
`
`The parties indicate that the ’723 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.). Pet. 13, Paper 4, 2. The
`
`’723 patent also has been the subject of multiple inter partes review
`
`petitions, and was the subject of Case IPR2017-00222 (where Apple Inc.,
`
`Facebook, Inc., and WhatsApp, Inc. constitute the Petitioner), in which we
`
`issued a Final Written Decision finding unpatentable claims 1 and 2, but not
`
`3
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`
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`IPR2017-01800
`Patent 8,243,723 B2
`
`finding unpatentable claims 38, of the ’723 patent. IPR2017-00222, Paper
`
`29.1
`
`III. THE ’723 PATENT AND PRESENTED CHALLENGES
`
`C. The ’723 Patent
`
`The ’723 patent relates to Internet telephony, and more particularly, to
`
`instant voice over IP (“VoIP”) messaging over an IP network, such as the
`
`Internet. Ex. 1001, 1:1418. The ’723 patent acknowledges that “instant
`
`text messaging is . . . known” in the VoIP and public switched telephone
`
`network environments, with its server presenting the user a “list of persons
`
`who are currently ‘online’ and ready to receive text messages on their own
`
`client terminals.” Id. at 2:19, 2:3037. In one embodiment, such as
`
`depicted in Figure 2 (reproduced below) the system of the ’723 patent
`
`involves an instant voice message (IVM) server and IVM clients. Id. at
`
`7:1924.
`
`
`
`1 At the time of issuing this Final Written Decision, the appeal filed
`concerning the Final Written Decision in IPR2017-00222 is unresolved.
`Therefore, we do not apply collateral estoppel to claims 1 and 2 of the
`’723 patent. Cf. MaxLinear Inc. v. CF Crespe LLC, 880 F.3d 1373, 1376
`(Fed. Cir. 2018) (“It is undisputed that as a result of collateral estoppel, a
`judgment of invalidity in one patent action renders the patent invalid in any
`later actions based on the same patent.” (citing Mycogen Plant Sci., Inc. v.
`Monsanto Co., 252 F.3d 1306, 1310 (Fed. Cir. 2001)).
`
`4
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`IPR2017-01800
`Patent 8,243,723 B2
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`
`
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`Figure 2 illustrates IVM client 206 interconnected via network 204 to
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`the local IVM server 202, where IVM client 206 is a VoIP telephone, and
`
`where legacy telephone 110 is connected to legacy switch 112 and further to
`
`media gateway 114. Id. at 7:1941. The media gateway converts the PSTN
`
`audio signal to packets for transmission over a packet switched IP network,
`
`such as local network 204. Id. at 7:4548. In one embodiment, when in
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`“record mode,” the user of an IVM client selects one or more IVM recipients
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`from a list. Id. at 7:5364. The IVM client listens to the input audio device
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`and records the user’s speech into a digitized audio file at the IVM client.
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`5
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`IPR2017-01800
`Patent 8,243,723 B2
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`Id. at 8:17. “Once the recording of the user’s speech is finalized, IVM
`
`client 208 generates a send signal indicating that the digitized audio file 210
`
`(instant voice message) is ready to be sent to the selected recipients.” Id. at
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`8:1114. The IVM client transmits the digitized audio file to the local IVM
`
`server, which, thereafter, delivers that transmitted instant voice message to
`
`the selected recipients via the local IP network. Id. at 8:125. “[O]nly the
`
`available IVM recipients, currently connected to the IVM server, will
`
`receive the instant voice message.” Id. at 8:2830. If a recipient “is not
`
`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.,
`
`is available)”. Id. at 3035.
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`The ’723 patent also describes an “intercom mode” of voice
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`messaging. Id. at 11:2629. The specification states that the ‘“intercom
`
`mode’ represents realtime instant voice messaging.” Id. at 11:2930. In this
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`mode, instead of creating an audio file, one or more buffers of a
`
`predetermined size are generated in the IVM clients or local IVM servers.
`
`Id. at 11:3033. Successive portions of the instant voice message are
`
`written to the one or more buffers. Id. at 11:3543. The content of each
`
`such buffer is, as it fills, automatically transmitted to the IVM server for
`
`transmission to the one or more IVM recipients. Id. Buffering is repeated
`
`until the entire instant voice message has been transmitted to the IVM
`
`server. Id. at 11:4852.
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`6
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`IPR2017-01800
`Patent 8,243,723 B2
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`
`D. Illustrative Claim
`
`Of the challenged claims, claim 1 is independent and is reproduced
`
`below. Each of claims 2 and 3 depends directly from claim 1.
`
`1. A method for instant voice messaging over a packet-switched
`network, the method comprising:
`
`monitoring a connectivity status of nodes within the packet-
`switched network, said connectivity status being available and
`unavailable;
`
`recording the connectivity status for each of the nodes;
`
`associating a sub-net of the nodes with a client;
`
`transmitting a signal to a client including a list of the recorded
`connectivity status for each of the nodes in the sub-set
`corresponding to the client;
`
`receiving an instant voice message having one or more
`recipients;
`
`delivering the instant voice message to the one or more recipients
`over a packet-switched network;
`
`temporarily storing the instant voice message if a recipient is
`unavailable; and
`
`delivering the stored instant voice message to the recipient once
`the recipient becomes available.
`
`Ex. 1001, 23:56–24:16.
`
`E. Asserted Prior Art and Grounds of Unpatentability
`
`This proceeding relies on the following prior art references:
`
`a) Griffin: U.S. Patent No. 8,150,922 B2, issued April 3, 2012, filed
`
`in the record as Exhibit 1005; and
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`7
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`IPR2017-01800
`Patent 8,243,723 B2
`
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`b) Zydney: PCT App. Pub. No. WO 01/11824 A2, published Feb. 15,
`
`2001, filed in the record as Exhibit 1006.
`
`This trial involves one ground of unpatentability based on 35 U.S.C.
`
`§ 103(a) over Griffin and Zydney. Pet. 56. Petitioner supports its
`
`challenge of unpatentability with a Declaration of Zygmunt J. Haas, Ph.D.,
`
`filed as Exhibit 1002 (“Haas Decl.”). Patent Owner relies on a Declaration
`
`of William C. Easttom II (Exhibit 2001, “Easttom Decl.”) and a
`
`Supplemental Declaration of William C. Easttom II (Exhibit 2009, “Suppl.
`
`Easttom Decl.”). Both experts have been the subject of cross-examination.
`
`A transcript of the deposition of Mr. Easttom specifically addressing the
`
`’723 patent is filed in the record as Exhibit 1042. A transcript of the
`
`deposition of Dr. Haas is filed in the record as Exhibit 2007.
`
`IV. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review filed before November 13, 2018, 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); 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 standard to be applied in an inter partes
`
`review proceeding). 2 Under the broadest reasonable interpretation standard,
`
`
`
`2 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
`
`8
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`IPR2017-01800
`Patent 8,243,723 B2
`
`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).
`
`Petitioner proposes constructions for the terms “node” and “signal.”
`
`Pet. 2432. At the preliminary stage, Patent Owner pointed out alleged
`
`deficiencies in Petitioner’s proposed constructions, but argued that “[n]o
`
`formal claim constructions are necessary.” Prelim. Resp. 24–25. In our
`
`Decision on Institution we determined that no claim term required
`
`construction. Dec. on. Inst. 7. During trial, Patent Owner renews its
`
`objections to Petitioner’s proposed constructions of “node,” and its related
`
`phrase “sub-set of the nodes.” PO Resp. 712. Patent Owner also raises a
`
`dispute concerning the scope of the term “instant voice message.” Id. at
`
`1214. We address each of these issues in turn.
`
`1. Node and Sub-set of the Nodes
`
`Claim 1 recites “nodes” that are “within the packet-switched
`
`network,” and that have a connectivity status that is recorded. Ex. 1001,
`
`24:14. Claim 1 further requires that “a sub-set of the nodes” is associated
`
`with a client, and that a signal includes “a list of the recorded connectivity
`
`
`
`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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`9
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`IPR2017-01800
`Patent 8,243,723 B2
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`status of each of the nodes in the sub-set corresponding to the client.” Id. at
`
`24:58. Patent Owner proposes that a “node” is a device within the packet-
`
`switched network, given the clear claim language that the nodes are “within
`
`the packet-switched network.” PO Resp. 11. Patent Owner also proffers a
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`dictionary definition of “node,” in the computer network context, as a
`
`“terminal in a computer network.” Id. at 12 (citing Ex. 2003, 3). Patent
`
`Owner contends that we must determine whether the “node” is a device,
`
`because, according to Patent Owner, Petitioner has mapped claim 1’s
`
`“nodes” to “persons,” instead of devices. Id. at 12. Petitioner asserts that no
`
`construction to explicitly require a device is necessary. Reply 1. Given
`
`Patent Owner’s insistence that Petitioner identified “persons” as “nodes,” we
`
`construe the term “node” to be a device, not a person. The plain and
`
`ordinary meaning of the claim is paramount to our conclusion that the
`
`“node” is a device. The language refers to “nodes within the packet-
`
`switched network.” Ex. 1001, 24:12. This unambiguously puts the “node”
`
`in the environment of a network, where devices communicate with each
`
`other. See Ex. 2003, 3 (defining node, in the computer science sense, as “A
`
`terminal in a computer network.”). Accordingly, Patent Owner is correct
`
`that a “node” is a “device.”
`
`As for the “sub-set of the nodes” phrase, Patent Owner contends that
`
`Petitioner erroneously interprets the “sub-set” to include, at a minimum, one
`
`node, yet the claim requires more than one node. PO Resp. 78.
`
`Notwithstanding Petitioner’s repeated use of “one or more” in connection
`
`with “a sub-set of the nodes with a client” limitation, Petitioner asserts that
`
`the Petition identifies in the prior art an association of multiple nodes to a
`
`client. Reply 1718. That is, although Petitioner does not agree that the
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`10
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`IPR2017-01800
`Patent 8,243,723 B2
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`“sub-set” of the nodes must include more than one node, whether more than
`
`one node is required is a non-issue because Petitioner has identified a “sub-
`
`set” in the prior art as including more than one node. Id.
`
`On this issue, we note that in a related inter partes review, IPR2017-
`
`00222, we construed the term “sub-set of the nodes” as requiring more than
`
`one node. See Final Written Decision, Apple Inc. v. Uniloc Luxembourg
`
`S.A., Case IPR2017-00222 (PTAB May 23, 2018) (Paper 29). By way of
`
`summary, we determined that the word “nodes” is undeniably plural, and
`
`that the phrase “a sub-set of the nodes,” in the context of surrounding claim
`
`language, refers to more than one node. The surrounding claim language we
`
`focused on recites transmitting a “list . . . for each of the nodes in the sub-set
`
`corresponding to the client.” Id. at 13. We concluded that the word “each”
`
`would be meaningless if the “sub-set” corresponding to the client included
`
`only one node. Id. Notwithstanding our previous determination concerning
`
`the “sub-set of the nodes” language, there is no need for us to construe
`
`expressly that phrase (or, rather, apply that previous construction) here
`
`because Petitioner alleges that its Petition is not limited to a single node
`
`when it addresses the “sub-set of the nodes.” Accordingly, we proceed to
`
`analyze the Petition on the basis of Petitioner’s identification of more than
`
`one node in the prior art.
`
`Based on the foregoing, we construe the word “nodes” to refer to
`
`devices, and we do not construe further the “sub-set of the nodes.”
`
`2. Instant Voice Message
`
`Patent Owner raises two disputes concerning the term “instant voice
`
`message.” First, Patent Owner argues that the “instant voice message” is
`
`“instant” because there is an “expectation” that “a person on the receiving
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`11
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`IPR2017-01800
`Patent 8,243,723 B2
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`end of an ‘instant voice message’” will receive it in real time. PO Resp.
`
`1314. 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 1213 (citing Pet. 17). Petitioner argues that the
`
`Specification does not support Patent Owner’s contention because of an
`
`embodiment in which the instant voice message is stored at the central
`
`server for delivery, when the recipient becomes available. Reply 5.
`
`On this first issue, we agree with Patent Owner that merely
`
`transmitting the “instant voice message” in real time is insufficient to define
`
`the “instant” feature of an “instant voice message.” As noted by Patent
`
`Owner, the Background of the Invention purposely distinguishes a voice
`
`mail message from an “instant” text message. Ex. 1001, 2:1842. In the
`
`voice mail message example, the Specification describes the drawbacks of
`
`dialing a telephone number, and after a few more steps, finally “recording
`
`the message for later pickup by the recipient.” Id. at 2:2228 (emphasis
`
`added). In contrast, for an “instant” text message, a server presents the user
`
`with “a list of persons who are currently ‘online’ and ready to receive text
`
`messages on their own client terminals.” Id. at 2:3437 (emphasis added).
`
`“The text message is sent immediately via the text messaging server to the
`
`selected one or more persons and is displayed on their respective client
`
`terminals.” Id. at 2:4042. That is, with a voice mail message, a person on
`
`the receiving end, who admittedly was not ready to engage in a direct voice
`
`conversation, must take an active step to retrieve the recorded message,
`
`regardless of when the message was recorded. In contrast, the “instant” text
`
`message is immediately transmitted to the recipient, which is ready to
`
`receive it, thus ensuring a speedy arrival. Thus, the Specification
`
`12
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`IPR2017-01800
`Patent 8,243,723 B2
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`distinguishes a voice mail message from the “instant” text message in that,
`
`although both messages are recorded and transmitted, only the “instant” text
`
`message, as the word “instant” implies, confers immediacy to its receipt by a
`
`ready recipient. The “instant” in the “instant voice message” imparts the
`
`same speedy receipt.
`
`Our conclusion that an “instant” voice message must involve this
`
`immediate transmission and, likewise, speedy reception of the message is
`
`not diminished by embodiments that store the message at the server for later
`
`delivery. See 8:3035 (“[I]f a recipient IVM client is not currently
`
`connected to the local IVM server 202 (i.e., is unavailable), the IVM server
`
`temporarily saves the instant voice message and delivers it to the IVM client
`
`when the IVM client connects to the local IVM server 202 (i.e., is
`
`available).”). Neither the sender nor the recipients can have any expectation
`
`with regard to the timing of the message’s receipt when the recipients are not
`
`online, and thus, not available to receive the message. Indeed, this same
`
`embodiment carries out the “instant” capability by delivering the message
`
`stored at the server to the client, when the client connects to the server, thus
`
`becoming available to receive it. Consequently, we agree with Patent Owner
`
`that an “instant voice message” is one that is transmitted in real time and
`
`received accordingly, when the recipient is available.
`
`As to Patent Owner’s second argument concerning the scope of
`
`“instant voice message,” the issue revolves around what it means to attach a
`
`file to an audio file. PO Resp. 3033. Patent Owner’s argument relies on
`
`the portion of the Board’s Decision on Institution where we determined, for
`
`claim 2, that Petitioner had not shown a reasonable likelihood of prevailing
`
`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 Decision on Institution did not provide a construction for either “instant
`
`voice message” or the “attaching” claim limitation. Dec. on Inst. 2123.
`
`Rather, we noted that our analysis was guided by the need for consistency
`
`across pending proceedings that addressed the same issue in related patents.
`
`Id. at 22 (citing IPR2017-01799, which addresses U.S. Patent no. 8,199,747
`
`claims specifically addressing “attaching one or more files to the audio
`
`file”). We note here that our discussion of claim 2 in our Decision on
`
`Institution is not binding, and we may change our view after review of the
`
`full record. “[T]he Board is not bound by any findings made in its
`
`Institution Decision. At that point, the Board is considering the matter
`
`preliminarily without the benefit of a full record. The Board is free to
`
`change its view of the merits after further development of the record, and
`
`should do so if convinced its initial inclinations were wrong.” TriVascular,
`
`Inc. v. Samuels, 812 F.3d 1056, 1068 (Fed. Cir. 2016).
`
`Since our institution determination we have had occasion to revisit the
`
`claim language regarding the “attaching” issue, and have concluded that the
`
`scope of the word is broader than our initial assessment. In a set of related
`
`inter partes reviews, we expressly construed the terms “instant voice
`
`message” and “attaching” to resolve the dispute of whether attaching one or
`
`more files to an instant voice message was different from attaching one or
`
`more files to an audio file. See Final Written Decision, Facebook, Inc., v.
`
`Uniloc 2017 LLC, Case IPR2017-01428, slip op. at 1221 (PTAB
`
`14
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`November 30, 2018) (Paper 40). Part of that analysis is relevant here also,
`
`and where appropriate is included below.3
`
`Claim 2 of the ’723 patent recites that the “instant voice message
`
`includes one or more files attached to an audio file.” Ex. 1001, 24:1720.
`
`Although this claim requires attaching one or more files to “an audio file,”
`
`we note that related patents recite attaching one or more files to an “instant
`
`voice message” instead. For instance, claim 9 of U.S. Patent No. 8,995,433,
`
`which shares the same disclosure with the ’723 patent, recites that “instant
`
`voice message application attaches one or more files to the instant voice
`
`message.” We include this claim language in our discussion to highlight that
`
`the words “attaching” or “attached” are recited with respect to both an
`
`“instant voice message” and an “audio file.”
`
`We start with the claim language. As noted above, the claims of the
`
`’723 patent require attachment of one or more files to an audio file. No
`
`other claim of the ’723 patent recites “attaching” or informs us as to the
`
`scope of that word. As to the Specification, “attachment” is described as
`
`follows:
`
`The attachment of one or more files is enabled 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
`
`
`
`3 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.”
`
`15
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`IPR2017-01800
`Patent 8,243,723 B2
`
`
`messaging system 320 that the instant voice message also has
`the attached one or more files.
`
`Ex. 1001, 13:2833. This passage also describes that, in addition to making
`
`linkages, flags alert the messaging system in the client device that the instant
`
`voice message has an attachment. Thus, “attaching” creates an association
`
`between the one or more files and the instant voice message so that the
`
`system, once alerted, may transmit the instant voice message with the
`
`associated one or more files. This passage describes the attachment of files
`
`to an instant voice message in the “record mode,” i.e., when the “instant
`
`voice message” is recorded in an audio file. Id. at 13:528 (describing how
`
`the audio file is recorded and processed before transmission, including
`
`giving the user options to attach documents). The Specification provides no
`
`other detailed description of how to attach a file to either an “instant voice
`
`message” or an “audio file.” It seems reasonable, therefore, that, in reciting
`
`attachment to an “instant voice message,” when dealing with the audio file
`
`form of that message, the Specification supports that attachment to an “audio
`
`file” is synonymous with attachment to an “instant voice message,” because
`
`those claims would be referring to the “record mode.” Claim 2, in contrast,
`
`recites attaching to an “audio file.” Thus, this dependent claim is directed to
`
`an “instant voice message” that is in the form of an “audio file.”
`
`The Specification passage identified above describes “attachment” of
`
`one or more files to an instant voice message that, in “record mode,” is an
`
`audio file, and also describes that the “attachment” is made by providing
`
`some indication (e.g., linkages) that another file (or files) is associated with
`
`the instant voice message or the audio file. This conclusion—that
`
`“attaching” is associating—is also confirmed by credible expert testimony
`
`16
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`IPR2017-01800
`Patent 8,243,723 B2
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`on a person of ordinary skill in the art’s understanding of the conventional
`
`methods of effecting “attachments” at the time of the invention. See
`
`Ex. 1040, 135:9137:13, 139:519. For instance, Mr. Easttom testified that,
`
`under conventional methods, two files would be considered “attached” if the
`
`recipient device knows that those two documents are associated or where
`
`“additional information” that indicates the association (that “they go
`
`together”) is added to the attachment and the message. Id.
`
`The discussion above brings us to the issue Patent Owner raises of
`
`whether attachment must be to the audio file itself. PO Resp. 30. Patent
`
`Owner urges us to construe the “attached to” phrase (and its variants) very
`
`narrowly. For example, Patent Owner argues that attaching to the audio file
`
`is different than attaching to a structure that is used to transport that audio
`
`file. Id. at 31 (arguing that attaching a file to a data container is
`
`distinguishable from attaching one or more files to an audio file). The
`
`argument implies that an “attachment” requires some direct physical
`
`appendage or some particular joining of the one or more files and the audio
`
`file. The Specification describes “attaching” broadly, however, as making
`
`appropriate linkages to the one or more files (the attachments), not the audio
`
`file. There is no disclosure of any appendage to the audio file, no alteration
`
`of the audio file to include additional data, and no particular information
`
`provided to the messaging system to carry out the attachment to the audio
`
`file itself. Rather, the Specification describes generally the use of linking
`
`and the flags as the means by which the system handles the one or more files
`
`as attachments of the “instant voice message,” which is in the form of an
`
`audio file, in the embodiment encompassed by claim 2. The tangible
`
`difference between an audio file with an attachment and one without seems
`
`17
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`IPR2017-01800
`Patent 8,243,723 B2
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`to be in whether the document handler has sufficiently linked the attachment
`
`and whether the flags inform the client system to associate the attachment
`
`for effective transmission to the server. Thus, as long as the client has
`
`sufficient information that the audio file has an attachment, the recited
`
`“attachment” is performed. The particular manner of associating the one or
`
`more files with the audio file, such as whether links, flags, or other like
`
`information is used, is irrelevant, as such details are not recited expressly.
`
`Based on our review of the claim language, the Specification, and the
`
`parties’ arguments on claim construction, we determine that under the plain
`
`and ordinary meaning in the context of the Specification, as explained
`
`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.
`
`B. Legal 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
`
`“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
`
`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.
`
`
`
`4 The parties do not address secondary considerations, which therefore do
`not constitute part of our analysis.
`
`18
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`IPR2017-01800
`Patent 8,243,723 B2
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`John Deere Co., 383 U.S. 1, 17–18 (1966). Additionally, the obviousness
`
`inquiry typically requires an analysis of “whether there was an apparent
`
`reason to combine the known elements in the fashion claimed by the patent
`
`at issue.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed.
`
`Cir. 2016) (requiring “articulated reasoning with some rational underpinning
`
`to support the legal conclusion of obviousness”)).
`
`To prevail on its challenges, Petitioner must demonstrate by a
`
`preponderance of the evidence that the claims are unpatentable. 35 U.S.C.
`
`§ 316(e); 37 C.F.R. § 42.1(d). “In an [inter partes review], the petitioner has
`
`the burden from the onset to show with particularity why the patent it
`
`challenges is unpatentable.” Harmonic Inc. v. Avid Tech., Inc. 815 F.3d
`
`1356, 1363 (Fed. Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter
`
`partes review petitions to identify “with particularity . . . the evidence that
`
`supports the grounds for the challenge to each claim”)). This burden never
`
`shifts to Patent Owner. See Dynamic Drinkware, LLC. v. Nat’l Graphics,
`
`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp. v.
`
`Videotek, Inc., 545 F.3d 1316, 1326–27 (Fed. Cir. 2008)) (discussing the
`
`burden of proof in inter partes review). Furthermore, Petitioner does not
`
`satisfy its burden of proving obviousness by employing “mere conclusory
`
`statements,” but “must instead articulate specific reasoning, based on
`
`evidence of record, to support the legal conclusion of obviousness.” In re
`
`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`
`C. Level of Ordinary Skill in the Art
`
`Petitioner proposes a level of ordinary skill in the art as follows:
`
`bachelor’s degree in computer science, computer engineering, electrical
`
`19
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`IPR2017-01800
`Patent 8,243,723 B2
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`engineering, or the equivalent and at least two years of experience in the
`
`relevant field, e.g., network communication systems. Pet. 67 (citing Haas
`
`Decl. ¶¶ 1516). Petitioner also proffers through its declarant that more
`
`education can substitute for practical experience and vice versa. Id. Patent
`
`Owner proposes a slightly different level of ordinary skill in the art:
`
`someone with a baccalaureate degree related to computer technology and 2
`
`years of experience with network
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