Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 31
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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 IPR2017-01801
`Patent 8,995,433 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 31
`
`
`
` 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 IPR2017-01801
`Patent 8,995,433 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)
`
`
`
`
`
`
`
`IPR2017-01801
`Patent 8,995,433 B2
`
`
`I.
`
`INTRODUCTION
`
`We instituted this proceeding for inter partes review of claims 15,
`
`712, 1417, 25, and 26 of U.S. Patent No. 8,995,433 B2 (Ex. 1001, “the
`
`’433 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 15, 712, 1417, 25, and 26 of the ’433 patent are
`
`unpatentable.
`
`II. BACKGROUND
`
`A. Procedural History
`
`Petitioner filed its Petition for inter partes review on July 20, 2017.
`
`Paper 1 (“Pet.”). Upon consideration of the Petition and Patent Owner’s
`
`Preliminary Response (Paper 6), we issued, on February 6, 2018, a Decision
`
`on Institution. Paper 8 (“Dec. on Inst.”). We determined that Petitioner had
`
`demonstrated a reasonable likelihood of prevailing in its challenge of all
`
`claims and all grounds. Id. at 2627. Patent Owner filed a Patent Owner
`
`Response. Paper 12 (“PO Resp.”). Petitioner filed a Reply. Paper 16
`
`(“Reply”). Patent Owner further filed a Motion to Exclude deposition
`
`testimony objected to as being outside the scope of permissible deposition
`
`topics. Paper 20 (“Motion”). Petitioner opposes the Motion. Paper 23
`
`(“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
`
`2
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`IPR2017-01801
`Patent 8,995,433 B2
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`voice message,” which is a term recited in all claims of the ’433 patent.
`
`Paper 26. 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
`
`IPR2017-01668 (proceedings involving the ’433 patent and related patents
`
`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
`
`30 (“Tr.”).
`
`B. Related Matters
`
`The parties indicate that the ’433 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. 15, Paper 4, 2. The
`
`’433 patent also has been the subject of multiple inter partes review
`
`petitions, and was the subject of Case IPR2017-00225 (where Apple Inc.,
`
`Facebook, Inc., Snap Inc., and WhatsApp, Inc. constitute the Petitioner), in
`
`which we issued a Final Written Decision concluding that claims 16 and 8
`
`of the ’433 patent were not shown to be unpatentable. Final Written
`
`Decision, Case IPR2017-00225, Paper 29, 47 (May 23, 2018 PTAB). We
`
`have also issued Final Written Decisions concerning the ’433 patent in
`
`IPR2017-01427 and IPR2017-01428, concluding that claims 112, 1417,
`
`25, and 26 are unpatentable. Final Written Decision, Case IPR201701427,
`
`Paper 46 (Nov. 30, 2018 PTAB) (consolidated with IPR2017-01428).1
`
`
`
`1 At the time of issuing this Final Written Decision, the appeal filed
`concerning the Final Written Decisions in IPR2017-00225, is unresolved.
`Furthermore, at the time of issuing this Decision, it is unclear whether the
`
`3
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`IPR2017-01801
`Patent 8,995,433 B2
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`
`III. THE ’433 PATENT AND PRESENTED CHALLENGES
`
`C. The ’433 Patent
`
`The ’433 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, 1:1923. The ’433 patent acknowledges that “instant
`
`text messaging is [] known” in the VoIP and public switched telephone
`
`network (“PSTN”) 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 2:3542. In one embodiment, such as
`
`depicted in Figure 2 (reproduced below), the system of the ’433 patent
`
`involves an instant voice message (“IVM”) server and IVM clients. Id. at
`
`7:2122.
`
`
`
`Final Written Decisions in IPR2017-01427 and IPR2017-01428, also
`addressing the ’433 patent, will be appealed. Therefore, we do not apply
`collateral estoppel to the challenged claims of the ’433 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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`IPR2017-01801
`Patent 8,995,433 B2
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`
`
`
`Figure 2 illustrates IVM client 206 interconnected via network 204 to
`
`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 7:2749. 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 7:4953. In one embodiment, when in “record
`
`mode,” the user of an IVM client selects one or more IVM recipients from a
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`list. Id. at 8:25. The IVM client listens to the input audio device and
`
`records the user’s speech into a digitized audio file at the IVM client. Id. at
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`5
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`
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`IPR2017-01801
`Patent 8,995,433 B2
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`8:1215. “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
`
`8:1922. 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 8:2526. Only the
`
`available IVM recipients, currently connected to the IVM server, will
`
`receive the instant voice message. Id. at 8:3638. If a recipient “is not
`
`currently connected to the local IVM server 202,” 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 (i.e., is available). Id.
`
`at 8:3843.
`
`The ’433 patent also describes an “intercom mode” of voice
`
`messaging. Id. at 11:3437. The specification states that “[t]he ‘intercom
`
`mode’ represents real-time instant voice messaging.” Id. at 11:3738. In
`
`this mode, “instead of creating an audio file, one or more buffers of a
`
`predetermined size are generated in the IVM client[s] [] or local IVM
`
`servers.” Id. at 11:3841. Successive portions of the instant voice message
`
`are written to the one or more buffers, which as they fill, automatically
`
`transmit their content to the IVM server for transmission to the one or more
`
`IVM recipients. Id. at 11:4146. Buffering is repeated until the entire
`
`instant voice message has been transmitted to the IVM server. Id. at
`
`11:4659.
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`6
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`IPR2017-01801
`Patent 8,995,433 B2
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`
`D. Independent Claims
`
`Of the challenged claims, claims 1 and 9 are independent and are
`
`reproduced below. Each of claims 25, 7, 8, 1012, 1417, 25, and 26
`
`depends directly or indirectly from claims 1 or 9.
`
`1.
`
`A system comprising:
`
`an instant voice messaging application including a client
`platform system for generating an instant voice message and a
`messaging system for transmitting the instant voice message
`over a packet-switched network via a network interface;
`
`wherein the instant voice messaging application displays
`a list of one or more potential recipients for the instant voice
`message;
`
`wherein the instant voice messaging application includes
`a message database storing the instant voice message, wherein
`the instant voice message is represented by a database record
`including a unique identifier; and
`
`wherein the instant voice messaging application includes
`a file manager system performing at least one of storing, deleting
`and retrieving the instant voice messages from the message
`database in response to a user request.
`
`9.
`
`A system comprising:
`
`an instant voice messaging application comprising:
`
`a client platform system for generating an instant voice
`message;
`
`a messaging system for transmitting the instant voice
`message over a packet-switched network; and
`
`wherein the instant voice messaging application attaches
`one or more files to the instant voice message.
`
`Ex. 1001, 23:6524:15, 24:6067.
`
`
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`7
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`IPR2017-01801
`Patent 8,995,433 B2
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`
`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;
`
`b) Zydney: PCT App. Pub. No. WO 01/11824 A2, published Feb. 15,
`
`2001, filed in the record as Exhibit 1006;
`
`c) Clark: U.S. Patent No. US 6,725,228 B1, issued April 20, 2004,
`
`filed in the record as Exhibit 1007;
`
`d) Väänänen: PCT App. Pub. No. WO 02/17650 A1, published
`
`February, 28, 2002, filed in the record as Exhibit 1008;
`
`e) Lee: U.S. Patent Application Pub. No. US 2002/0101848 A1,
`
`published on August, 1, 2002, filed in the record as Exhibit 1014;
`
`and
`
`a) Vuori: U.S. Patent Application Pub. No. US 2002/0146097 A1,
`
`published on October 10, 2002, filed in the record as Exhibit 1015.
`
`This trial involves seven grounds of unpatentability based on
`
`35 U.S.C. § 103(a) over Griffin and the other asserted prior art as follows.
`
`Pet. 67.
`
`Challenged
`Claim(s)
`
`Basis
`
`References
`
`13, 8
`
`§ 103(a)
`
`Griffin and Clark
`
`4 and 7
`
`§ 103(a)
`
`Griffin, Clark, and Zydney
`
`5
`
`§ 103(a)
`
`Griffin, Clark, and Väänänen
`
`8
`
`
`
`IPR2017-01801
`Patent 8,995,433 B2
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`
`Challenged
`Claim(s)
`9, 11, 1417, 25,
`and 26
`
`12
`
`10
`
`26
`
`Basis
`
`References
`
`§ 103(a)
`
`Griffin and Zydney
`
`§ 103(a)
`
`Griffin, Zydney, and Väänänen
`
`§ 103(a)
`
`Griffin, Zydney, and Lee
`
`§ 103(a)
`
`Griffin, Zydney and Vuori
`
`
`
`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.”). A transcript of the deposition of Mr. Easttom specifically
`
`addressing the ’433 patent is filed in the record as Exhibit 1041.
`
`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); 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
`
`
`
`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
`the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (to
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`9
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`IPR2017-01801
`Patent 8,995,433 B2
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`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 our Decision on Institution we did not construe any terms. Dec. on
`
`Inst. 7. During trial, Patent Owner attempted to distinguish the prior art
`
`based on the scope of “instant” voice message. PO Resp. 912. According
`
`to Patent Owner, Petitioner applied the term “instant voice message” as
`
`requiring a transmission in real time, but not receiving the message in “real
`
`time” also. Id. at 9. To resolve this dispute, we construe the term “instant”
`
`of “instant voice message.” We also analyze the scope of another claim
`
`term that is in dispute: claim 9’s “attaches one or more files to the instant
`
`voice message.” See PO Resp. 2431 (PO arguing that none of the asserted
`
`prior art teaches attaching a file to an audio file or the data message itself).
`
`1. Instant Voice Message
`
`Patent Owner argues that the prior art does not disclose an “instant
`
`voice message” because real-time communication requires the capability of
`
`receiving in real time. PO Resp. 9. Patent Owner challenges Petitioner’s
`
`assertion that a voice message is “instant” because it is a voice message
`
`be codified at 37 C.F.R. pt. 42).
`
`
`
`10
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`IPR2017-01801
`Patent 8,995,433 B2
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`transmitted in real time to an available recipient. Id. 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 6.
`
`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.” The Background of the Invention purposely
`
`distinguishes a voice mail message from an “instant” text message.
`
`Ex. 1001, 2:2347. 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 2:2733 (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 2:3942
`
`(emphasis added). “The text message [will be] sent immediately via the text
`
`messaging server to the selected one or more persons and is displayed on
`
`their respective client terminals.” Id. at 2:4547. 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 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
`
`11
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`IPR2017-01801
`Patent 8,995,433 B2
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`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 id. at 8:39–43 (“[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 determine that an
`
`“instant voice message” is one that is transmitted in real time and received
`
`accordingly, when the recipient is available.
`
`2. Attaches One or More Files to the Instant Voice Message
`
`The parties also dispute what it means to attach a file to the instant
`
`voice message. PO Resp. 24–31. In our Decision on Institution, we noted
`
`that Patent Owner’s arguments raised an issue of claim construction that
`
`needed further development. Dec. on Inst. 2122. During trial, Patent
`
`Owner argued the distinction between the data content and a container
`
`including the data content (PO Resp. 27), and proposed as support that the
`
`claimed “instant voice message,” in “all the challenged claims is recorded in
`
`the audio file and is not an encapsulating transport package” (PO Resp. 30).
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`12
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`Patent Owner implies that claim 9’s recitation of “instant voice message”
`
`has an ordinary meaning, as those words would be normally used in the field
`
`of the invention at the time of the invention. Id. at 31 (citing Alloc, Inc. v.
`
`U.S. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003)).
`
`Since our Decision on Institution, we have had occasion to revisit the
`
`claim language regarding the “attaching” issue. 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 Facebook, Inc. v. Uniloc 2017 LLC, Case IPR2017-
`
`01428, slip op. at 12–21 (PTAB November 30, 2018) (Paper 40). Part of
`
`that analysis is relevant here also, and where appropriate is included below. 3
`
`Claim 9 recites “wherein the instant voice message application
`
`attaches one or more files to the instant voice message.” Ex. 1001,
`
`24:6667. Also relevant to our analysis is the language of claim 14 of the
`
`’433 patent, which depends from claim 9 and recites “wherein the instant
`
`voice messaging application invokes a document handler to create a link
`
`between the instant voice message and the one or more files.” Id. at
`
`25:1417. Although these claims of the ’433 patent require attaching one or
`
`more files to the “instant voice message,” we note that related patents recite
`
`
`
`3 We 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). The actual dispute in this proceeding, however, concerns the scope of
`“attaching” one or more files to an instant voice message. Accordingly, we
`need not incorporate here our previous construction of “instant voice
`message” as “data content.”
`
`13
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`Patent 8,995,433 B2
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`attaching one or more files to an “audio file” instead. For instance, claim 2
`
`of U.S. Patent No. 8,243,723, which shares the same disclosure with the
`
`’433 patent, recites that “the instant voice message includes one or more
`
`files attached to an audio file.” Similarly, in claim 1 of related U.S. Patent
`
`No. 8,199,747, generating an “instant voice message” includes “attaching
`
`one or more files to the audio file.” We include the above claim language in
`
`our discussion to highlight the challenge of achieving consistency in
`
`construing “attaching” or “attached” to both an “instant voice message” and
`
`an “audio file,” notwithstanding the difference in claim terms.
`
`As noted above, the claims of the ’433 patent require attachment of
`
`one or more files to the instant voice message. From claim 14, we
`
`understand that the “attachment” may be performed by creating a link
`
`between the instant voice message and the one or more files. The
`
`Specification also describes “attachment” by linking:
`
`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
`messaging system 320 that the instant voice message also has
`the attached one or more files.
`
`Ex. 1001, 13:3540. 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
`
`14
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`voice message” is recorded in an audio file. Id. at 1335 (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 an “instant voice
`
`message” in either the “record mode” or “intercom mode.” It seems
`
`reasonable, therefore, that, in reciting attachment to an “instant voice
`
`message,” when dealing with the audio file form of the 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.”
`
`The discussion above brings us to the issue Patent Owner raises of
`
`whether attachment must be to the data message itself. PO Resp. 26
`
`(arguing that Zydney does not attach one or more files to the data message
`
`itself). Patent Owner seeks to construe the “attachment to” phrase (and its
`
`variants) very narrowly, as in the sense of a physical appendage or the
`
`joining together of items. For instance, Patent Owner argues that attaching
`
`to the message data is different than attaching to a structure that is used to
`
`transport the message, i.e. voice container. Id. (arguing that Zydney,
`
`instead, attaches files to only the encapsulating package). Because the
`
`Specification describes “attaching” broadly, however, as making linkages
`
`and flagging, we are not persuaded that the “attachment” language recited in
`
`certain claims of the ’433 patent is confined to attachment to the message
`
`data (or audio file) itself as Patent Owner argues. See id. (arguing that
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`Griffin does not disclose attaching a file to an audio file, and neither does
`
`Zydney).
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`Patent 8,995,433 B2
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`Rather, the Specification discloses “attachment” to an instant voice
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`message broadly, irrespective of the structure or content of that instant voice
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`message. The Specification’s linkage and flagging cause the system to
`
`handle the one or more files as attachments of the “instant voice message.”
`
`The tangible difference between an “instant voice message” with an
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`attachment and one without seems 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.
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`Thus, as long as the client has sufficient information that the “instant voice
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`message” has an attachment, the recited “attachment” is performed. The
`
`particular manner of associating the one or more files with the instant voice
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`message is irrelevant, such as whether links, flags, or other like information
`
`is used, as such details are not recited expressly in the independent claim.
`
`Based on our review of the claim language, the Specification, and the
`
`parties’ arguments on claim construction, we determine that Patent Owner
`
`has not shown that the Specification supports its narrow position that the
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`recited attachment to an “instant voice message” involves a direct
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`attachment to only the content. Giving the term its plain and ordinary
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`meaning in the context of the Specification, as explained above, we construe
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`“attaches . . . to the instant voice message” (and its variants in related
`
`patents) to mean indicating that another file (or files) is associated with the
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`“instant voice message.”
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`B. Legal Principles
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`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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`Patent 8,995,433 B2
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`“such that the subject matter, as a whole, would have been obvious at the
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`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.
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`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
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`indicia of non-obviousness (i.e., secondary considerations).4
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` Graham v.
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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.
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`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,
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`
`
`4 The parties do not address secondary considerations, which therefore do
`not constitute part of our analysis.
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`17
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`Patent 8,995,433 B2
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`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
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`Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`
`C. Level of Ordinary Skill in the Art
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`Citing Dr. Haas’s testimony, Petitioner proposes a level of ordinary
`
`skill in the art as follows: bachelor’s degree in computer science, computer
`
`engineering, electrical engineering, or the equivalent and at least two years
`
`of experience in the relevant field, e.g., network communication systems.
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`Pet. 9 (citing Haas Decl. ¶¶ 1516). Petitioner further states that more
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`education can substitute for practical experience and vice versa. Id. Patent
`
`Owner’s declarant, Mr. Easttom, similarly testifies that a person of ordinary
`
`skill in the art is someone with a baccalaureate degree related to computer
`
`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. 67 (citing Easttom Decl. ¶ 16).
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`The principal difference between the parties’ proposed qualifications
`
`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
`
`number of years of experience as a substitute for an undergraduate degree,
`
`while Petitioner’s proposal is vague in this regard. Based on our review of
`
`the ’433 patent and the prior art of record, we find that Patent Owner’s
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`Patent 8,995,433 B2
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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
`
`in the art, which encompasses both alternative sets of qualifications.
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`D. Overview of Asserted Prior Art
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`
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`We discuss more fully certain disclosures in the asserted references in
`
`our analysis below. A discussion of those references follows.
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`1. Griffin
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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
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`managing the display of “real-time speech and text conversations (e.g., chat
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`threads) on limited display areas.” Ex. 1005, [54], 1:911. Griffin discloses
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`a wireless mobile terminal as shown in Figure 1, reproduced below.
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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
`
`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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`3:1430. Griffin also describes, in connection with Figure 2, reproduced
`
`below, the overall system architecture of a wireless communication system
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`where the mobile terminals communicate with a chat server complex. Id. at
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`3:4951.
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`
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`Figure 2, above, illustrates wireless carrier infrastructures 202, which
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`support wireless communications with mobile terminals 100, such that the
`
`mobile terminals wirelessly transmit data to a corresponding infrastructure
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`202 for sending the data packets to communication network 203, which
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`forwards the packets to chat server complex 204. Id. at 3:4961.
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`Communication network 203 is described as a “packet-based network,
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`[which] may comprise a public network such as the Internet or World Wide
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`Web, a private network such as a corporate intranet, or some combination of
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`public and private network elements.” Id. at 3:6165.
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`Griffin’s chat server complex 204 receives encoded data comprising
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`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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`terminal 100 to another). Id. at 4:1115, 4:6265. An outbound chat
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`message, for example, is decomposed to locate the list of recipients, and the
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`recipient’s current status is determined. Id. at 5:915. Griffin describes
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`presence status 702 as “an indicator of whether the recipient is ready to
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`receive the particular type of message, speech and/or text messages only,
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`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
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`subscribers listed in the subscriber identifier field 706 of the corresponding
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`presence record 700.” Id. at 5:2730.
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`Griffin provides a buddy list display illustrated in Figure 9,
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`reproduced below.
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