Trials@uspto.gov
`571.272.7822
`
`Paper No. 31
`
` Filed: 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 IPR2017-01802
`Patent 7,535,890 B2
`____________
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C § 318(a) and 37 C.F.R. § 42.73
`
`
`
`I.
`
`INTRODUCTION
`
`Samsung Electronics America, Inc. (“Petitioner”) filed a Petition
`
`requesting inter partes review of claims 1–6, 9, 14, 15, 17–20, 23, 40–43,
`
`51–54, and 57 (“challenged claims”) of U.S. Patent No. 7,535,890 B2
`
`
`
`
`
`

`

`IPR2017-01802
`Patent 7,535,890 B2
`
`(Ex. 1001, “the ’890 patent”). Paper 1 (“Pet.”). Uniloc 2017, LLC (“Patent
`
`Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). We
`
`instituted this review as to all challenged claims. Paper 8 (“Inst. Dec.”).
`
`Subsequent to institution, Patent Owner filed a Patent Owner
`
`Response. Paper 12 (“PO Resp.”). Petitioner filed a Reply. Paper 16
`
`(“Reply”). Patent Owner also filed a Motion to Exclude (Paper 20), and
`
`Petitioner opposed (Paper 23). A transcript of the oral hearing held on
`
`October 30, 2018, has been entered into the record as Paper 30 (“Tr.”).
`
`This Final Written Decision is entered pursuant to 35 U.S.C. § 318(a).
`
`For the reasons that follow, Petitioner has demonstrated by a preponderance
`
`of the evidence that claims 1–6, 9, 14, 15, 17–20, 23, 40–43, 51–54, and 57
`
`of the ’890 patent are unpatentable.
`
`A. Related Matters
`
`
`
`Petitioner represents that the ’890 patent is the subject of numerous
`
`ongoing actions before the U.S. District Court for the Eastern District of
`
`Texas, including an action filed against Petitioner (Case No. 2-16-cv-
`
`00638). Pet. 1–5; see Paper 4, 2–3; Paper 10, 1; Paper 11, 1; Paper 18, 1–2.
`
`Before the Office, the ’890 patent also is the subject of Cases
`
`IPR2017-00220, IPR2017-01523, IPR2017-01524, IPR2017-01082,
`
`IPR2017-02082, IPR2017-02083, and IPR2017-02084 in which we denied
`
`institution. Case IPR2017-00220, Paper 9 (May 25, 2017); Case IPR2017-
`
`01523, Paper 7 (Dec. 4, 2017); Case IPR2017-01524, Paper 7 (Dec. 4,
`
`2017); Case IPR2017-01082, Paper 8 (Feb. 6, 2018); Case IPR2017-02082,
`
`Paper 10 (Mar. 29, 2018); Case IPR2017-02083, Paper 10 (Mar. 29, 2018);
`
`IPR2017-02084, Paper 10 (Mar. 29, 2018). In addition, in Case IPR2017-
`
`00221 we instituted review (Paper 9) and issued a final written decision
`
`
`
`2
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`

`

`IPR2017-01802
`Patent 7,535,890 B2
`
`finding claims 1–6, 14, 15, 17–20, 28, 29, 31–34, 40–43, 51–54, 62–65, and
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`68 of the ’890 patent unpatentable as obvious over references not at issue in
`
`this case. IPR2017-00221, Paper 33 (May 23, 2018). IPR2017-00221 is
`
`currently pending appeal to the Federal Circuit.1 IPR2017-00221, Paper 37.
`
`B. The ’890 Patent
`
`The ’890 patent explains that “[v]oice messaging” and “instant text
`
`messaging” in both the Voice over Internet Protocol (“VoIP”) and public
`
`switched telephone network environments are known. Ex. 1001, 2:11–35.
`
`In prior art instant text messaging systems, a server presents a user of a
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`client terminal with a “list of persons who are currently ‘online’ and ready to
`
`receive text messages,” the user “select[s] one or more” recipients and types
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`the message, and the server immediately sends the message to the respective
`
`client terminals. Id. at 2:23–35. According to the ’890 patent, however,
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`“there is still a need in the art for . . . a system and method for providing
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`instant VoIP messaging over an IP network,” such as the Internet.
`
`Id. at 1:6–11, 2:36–48, 6:37–39.
`
`In one embodiment, the ’890 patent discloses local instant voice
`
`messaging (“IVM”) system 200, depicted in Figure 2 below. Id. at 6:12–14.
`
`
`1 At the time of issuing this Final Written Decision, the appeal filed
`concerning the Final Written Decision in IPR2017-00221 is unresolved.
`Therefore, we do not apply collateral estoppel to claims 1–6, 14, 15, 17–20,
`40–43, and 51–54 of the ’890 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))).
`
`
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`3
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`IPR2017-01802
`Patent 7,535,890 B2
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`
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`As illustrated in Figure 2, local packet-switched IP network 204, which may
`
`be a local area network (“LAN”), “interconnects” IVM clients 206, 208 and
`
`legacy telephone 110 to local IVM server 202. Id. at 6:40–61; see id.
`
`at 7:13–14, 7:51–55. Local IVM server 202 enables IVM functionality over
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`network 204. Id. at 7:53–55.
`
`
`
`In “record mode,” IVM client 208, exemplified as a VoIP softphone
`
`in Figure 2, “displays a list of one or more IVM recipients,” provided and
`
`stored by local IVM server 202, and the user selects recipients from the list.
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`Id. at 7:47–49, 7:55–61. IVM client 208 then transmits the selections to
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`IVM server 202 and “records the user’s speech into . . . digitized audio
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`file 210 (i.e., an instant voice message).” Id. at 7:61–8:1.
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`When the recording is complete, IVM client 208 transmits audio
`
`file 210 to local IVM server 202, which delivers the message to the selected
`
`recipients via local IP network 204. Id. at 8:519. “[O]nly the available
`
`IVM recipients, currently connected to . . . IVM server 202, will receive the
`
`
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`4
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`IPR2017-01802
`Patent 7,535,890 B2
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`instant voice message.” Id. at 8:2325. IVM server 202 “temporarily saves
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`the instant voice message” for any IVM client that is “not currently
`
`connected to . . . local IVM server 202 (i.e., is unavailable)” and “delivers it
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`. . . when the IVM client connects to . . . local IVM server 202 (i.e., is
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`available).” Id. at 8:24–29; see id. at 9:7–11. Upon receiving the instant
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`voice message, the recipients can audibly play the message. Id. at 8:19–22.
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`In another embodiment, the ’890 patent discusses global IVM
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`system 500. Id. at 15:24–28, Fig. 5. Global IVM system 500 includes a
`
`local IVM system, such as local IVM system 200, and global IVM server
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`system 502, with global IVM clients 506, 508. Id. at 15:25–33. Both the
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`local and global IVM systems are connected to “packet-switched
`
`network 102 (i.e., Internet)” to enable the local and global IVM clients to
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`exchange instant voice messages with one another. Id. at 15:25–38.
`
`C. Illustrative Claims
`
`Of the challenged claims, claims 1, 14, 40, and 51 of the ’890 patent
`
`are independent. Claim 1, reproduced below, is illustrative of the recited
`
`subject matter:
`
`1. An instant voice messaging system for delivering instant
`messages over a packet-switched network,
`the system
`comprising:
`a client connected to the network, the client selecting one or
`more recipients, generating an instant voice message
`therefor, and transmitting the selected recipients and the
`instant voice message therefor over the network; and
`a server connected to the network, the server receiving the
`selected recipients and the instant voice message therefor,
`and delivering the instant voice message to the selected
`recipients over the network, the selected recipients enabled
`to audibly play the instant voice message, and the server
`temporarily storing the instant voice message if a selected
`
`
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`IPR2017-01802
`Patent 7,535,890 B2
`
`
`recipient is unavailable and delivering the stored instant
`voice message to the selected recipient once the selected
`recipient becomes available.
`
`Id. at 23:55–24:3.
`
`D. Evidence of Record
`
`The Petition relies upon the following asserted prior art references:
`
`U.S. Patent No. 8,150,922 B2 (issued Apr. 3, 2012) (Ex. 1005,
`“Griffin”);
`
`International Application Publication No. WO 01/11824 A2 (published
`Feb. 15, 2001) (Ex. 1006, “Zydney”);
`
`U.S. Patent No. 7,123,695 B2 (issued Oct. 17, 2006) (Ex. 1011,
`“Malik”).
`
`In addition, Petitioner supports its contentions with the Declaration of
`
`Dr. Zygmunt J. Haas. Ex. 1002. In response, Patent Owner proffers the
`
`Declaration of Mr. William C. Easttom II. Ex. 2001.
`
`E. Asserted Grounds of Unpatentability
`
`We instituted inter partes review on the following grounds of
`
`unpatentability under 35 U.S.C. § 103.2 Inst. Dec. 28.
`
`Challenged Claim(s)
`
`Basis
`
`References
`
`1, 3–6, 9, and 40–43
`
`§ 103 Griffin and Zydney
`
`2, 14, 15, 17–20, 23, 51–54, and
`57
`
`§ 103 Griffin, Zydney, and
`Malik
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29,
`125 Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103, effective March 16,
`2013. Because the patent application resulting in the ’890 patent was filed
`before the effective date of the relevant section of the AIA, we refer to the
`pre-AIA version of § 103 throughout this decision.
`
`
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`IPR2017-01802
`Patent 7,535,890 B2
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`
`II. ANALYSIS
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`A. Level of Ordinary Skill
`
`Citing Dr. Haas’s testimony, Petitioner proposes that a “person of
`
`ordinary skill in the art at the time of the alleged invention . . . would have
`
`had at least a 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.” Pet. 8 (citing
`
`Ex. 1002 ¶¶ 15–16). Petitioner further states that “[m]ore 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
`
`technology, or 4 years of experience without a baccalaureate degree.” PO
`
`Resp. 2 (citing Ex. 2001 ¶ 16).
`
`The principal difference between the parties’ proposed qualifications
`
`is that, as an alternative to an undergraduate degree and two years of
`
`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 ’747 patent and the prior art of record, we find that Patent Owner’s
`
`proposal is more precise as it takes into account a level of experience of four
`
`years with network communication technology without the undergraduate
`
`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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`IPR2017-01802
`Patent 7,535,890 B2
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`B. Claim Construction
`
`The Board interprets claim terms of an unexpired patent using the
`
`broadest reasonable construction in light of the specification of the patent.
`
`37 C.F.R. § 42.100(b) (2017).3
`
`1. “transmitting” / “receiving” the “selected recipients and the instant
`voice mail message”
`
`
`
`Claim 1 recites “the client . . . transmitting the selected recipients and
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`the instant voice message therefor” (the “transmitting limitation”) and “the
`
`server receiving the selected recipients and the instant voice message
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`therefor” (the “receiving limitation”). Ex. 1001, 23:58–64. Challenged
`
`independent claims 14, 40, and 51 recite similar limitations.4
`
`Patent Owner argues that the transmitting and receiving limitations
`
`require the one or more intended recipients to be transmitted or received
`
`separately from the IVM. PO Resp. 7–13. Petitioner does not agree and
`
`contends that nothing in the limitations requires separate transmission or
`
`receipt. Reply 2–4.
`
`In our Institution Decision, we considered Patent Owner’s proposed
`
`construction, but we did not adopt a requirement that the intended recipients
`
`and the IVM be transmitted or received separately. Inst. Dec. 8–11. We
`
`have considered Patent Owner’s further arguments in their Response, but,
`
`for the reasons discussed below, we continue to adopt a broader construction
`
`
`3 A recent amendment to this rule does not apply here, because the Petition
`was filed before November 13, 2018. See “Changes to the Claim
`Construction Standard for Interpreting Claims in Trial Proceedings Before
`the Patent Trial and Appeal Board,” 83 Fed. Reg. 51,340 (Oct. 11, 2018) (to
`be codified at 37 C.F.R. pt. 42).
`
`4 Ex. 1001, 25:27–30, 28:27–31, 30:16–21.
`8
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`IPR2017-01802
`Patent 7,535,890 B2
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`for the transmitting and receiving limitations, which includes acting on both
`
`the selected recipients and the IVM simultaneously.
`
`As support for its construction of the transmitting limitation, Patent
`
`Owner relies on the ’890 patent description of how the user selects the
`
`intended recipients: “The IVM client 208 displays a list of one or more IVM
`
`recipients on its display 216, provided and stored by the local IVM
`
`server 202 . . . . The user operates the IVM client 208 by using the input
`
`device 218 to indicate a selection of one or more IVM recipients from the
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`list [and t]he user selection is transmitted to the IVM server 202.” PO Resp.
`
`8 (quoting Ex. 1001, 7:55–61). After the user’s speech is recorded, the IVM
`
`client generates a send signal and “transmits the digitized audio file 210 and
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`the send signal to the local IVM server 202.” Id. at 9 (quoting Ex. 1001,
`
`8:5–8). According to Patent Owner, the ’890 patent Specification
`
`consistently describes the selection of one or more intended recipients to be
`
`transmitted first, separately from the transmission of the instant voice
`
`message. PO Resp. 9–10.
`
`Patent Owner also argues that some dependent claims address the
`
`transmission of the instant voice message without mention of the list of
`
`selected recipients. Id. at 10 (indicating that claims 8 and 45 recite buffering
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`performed with respect to the IVM, but not the selected recipients). Patent
`
`Owner reasons that the omission from the dependent claims of the buffering
`
`of selected recipients indicates that the claims contemplate that the intended
`
`recipient’s selection has already been communicated to the server. Id.
`
`For the receiving limitation, Patent Owner argues that for reasons
`
`analogous to those presented concerning the transmitting limitation, the
`
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`9
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`IPR2017-01802
`Patent 7,535,890 B2
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`receiving limitation “requires that the receiving of the selected recipients and
`
`the IVM are performed separately.” Id. at 12.5
`
`“[A] claim construction analysis must begin and remain centered on
`
`the claim language itself . . . .” Innova/Pure Water, Inc. v. Safari Water
`
`Filtration Sys., Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004). The disputed
`
`claim language recites that a server receives two things: the instant voice
`
`message and the selected recipients. The claim’s focus, thus, is on what a
`
`server receives, not when a server receives them. The claim language itself
`
`does not contain the separateness requirement featured in Patent Owner’s
`
`proposed construction. Rather, Patent Owner’s proposed construction
`
`repeats the claim language and adds the language “separately transmitting”
`
`or “separately receiving.” Notably, the patentee could have included this
`
`language and, thus, a separateness requirement in these claims—but did not.
`
`We do not limit further the scope of the claim merely because
`
`embodiments in the Specification provide additional detail on the timing of
`
`the transmissions to the server. See SuperGuide Corp. v. DirecTV Enters.,
`
`Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (citing Electro Med. Sys. S.A. v.
`
`Cooper Life Sci., Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994) (“Though
`
`understanding the claim language may be aided by the explanations
`
`contained in the written description, it is important not to import into a claim
`
`limitations that are not a part of the claim. For example, a particular
`
`
`5 Patent Owner further argues that the claims require receiving at the server
`“all of the selected recipients,” because claim 1 recites that the server
`temporarily stores the instant voice message if the recipient is unavailable.
`Id. at 12–13. According to Patent Owner, “it is only logical that the server
`must receive the IVM for both the available and unavailable recipients.” Id.
`at 12. This aspect of the construction is not at issue in this proceeding, and
`we, therefore, decline to opine on this aspect of the receiving limitation.
`
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`IPR2017-01802
`Patent 7,535,890 B2
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`embodiment appearing in the written description may not be read into a
`
`claim when the claim language is broader than the embodiment.”)). The
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`language of claims 1, 14, 40, and 51 is broader than the embodiments Patent
`
`Owner proffers as support for its proposed construction. Moreover, Patent
`
`Owner points to nothing in the Specification, including the dependent
`
`claims, that limits the claim language to the timing of the transmissions to
`
`the server or the reception at the server in these embodiments.
`
`Accordingly, we do not adopt Patent Owner’s proposed construction
`
`to require that the instant voice message and the selected recipients are either
`
`transmitted to or received at the server separately.6
`
`2. “delivering the instant voice message to the selected recipients” and
`“temporarily storing the instant voice message if a selected recipient
`is unavailable”
`
`Claim 1 recites “a server . . . delivering the instant voice message to
`
`the selected recipients” (“the delivering IVM limitation”) and “a server . . .
`
`temporarily storing the instant voice message if a selected recipient is
`
`unavailable” (“the temporarily storing limitation”). Ex. 1001, 23:62–24:1.
`
`Challenged independent claims 14, 40, and 51 recite similar limitations. 7
`
`Patent Owner argues that the delivering IVM and temporarily storing
`
`limitations of claims 1, 14, 40, and 51 require that “the server, not the client,
`
`delivers [and temporarily stores] the IVM to those selected recipients that
`
`are determined, by the server, to be available.” PO Resp. 14–15 (emphasis
`
`
`6 This analysis tracks the claim construction provided for similar terms of
`U.S. Patent No. 8,995,433, involved in IPR2017-01428. See
`Case IPR2017-01428, slip. op. at 23–25 (PTAB Nov. 30, 2018) (Paper 40)
`(“IPR 1428”).
`7 Ex. 1001, 25:30–37, 28:32–36, 30:22–25.
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`IPR2017-01802
`Patent 7,535,890 B2
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`added). Petitioner appears to agree that the server, not the client,
`
`temporarily stores and delivers the IVM, but does not agree that the
`
`limitations require the availability of the recipients be determined by the
`
`server or preclude other system components from making that
`
`determination. Reply 5–6.
`
`Because it was not necessary for purposes of determining the issues
`
`presented at institution, we did not adopt an express construction for these
`
`limitations in the Institution Decision. Inst. Dec. 7–8. For the reasons
`
`discussed below, we agree with Petitioner that the claims do not require that
`
`the availability of selected recipients be determined by the server.
`
`Patent Owner argues that “[i]n order for the server to deliver the IVM
`
`to available selected recipients and store the IVM for unavailable selected
`
`recipients, the server must determine which of the selected recipients are
`
`unavailable.” PO Resp. 13. As support for this contention, Patent Owner
`
`points to Petitioner’s expert testimony, in addressing the prior art, that
`
`“Griffin does not explicitly disclose temporarily storing a message if a
`
`recipient is unavailable, as determined based on status 702 [at the server]
`
`and delivering the stored message to the recipient once the recipient
`
`becomes available, as determined based on 702 [at the server].” Id. at 14
`
`(quoting Ex. 1002, 69), 15.
`
`Nothing in Patent Owner’s argument points to any evidence, in the
`
`claims themselves, elsewhere in the Specification, or in Petitioner’s expert
`
`testimony, supporting a finding that the claims require that the server, and no
`
`other component of the system, make the availability determination. The
`
`claims state that the server delivers the IVM to the selected recipients and
`
`also stores the IVM if a selected recipient is unavailable. The claims,
`
`
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`12
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`IPR2017-01802
`Patent 7,535,890 B2
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`however, do not address whether the server itself makes this determination,
`
`or if it is alerted, by another system component, as to the availability of
`
`selected recipients. We, therefore, do not limit the claims such that the
`
`server must make the availability determination.
`
`3. “delivering the stored instant voice message to the selected recipient
`once the selected recipient becomes available”
`
`Claim 1 recites “delivering the stored instant voice message to the
`
`selected recipient once the selected recipient becomes available” (the
`
`“delivering stored IVM limitation”). Ex. 1001, 24:1–3. Challenged
`
`independent claims 14, 40, and 51 recite similar limitations.8
`
`Patent Owner argues that the word “temporarily” that modifies the
`
`temporarily storing limitation of claims 1, 14, 40, and 51 should be
`
`construed such that the delivering stored IVM limitation means “the IVM is
`
`temporarily stored until the IVM is later delivered to the selected recipient”
`
`and not that the IVM is stored for any amount of time “less than forever.”
`
`PO Resp. 16. Petitioner disagrees with Patent Owner’s proposed
`
`construction, but explains that because Patent Owner does not dispute that
`
`the delivering stored IVM limitation is not disclosed by the asserted prior
`
`art, this particular dispute need not be resolved in this Decision. Reply 6–7.
`
`Because it was not necessary for purposes of determining the issues
`
`presented at institution, we did not adopt an express construction for these
`
`limitations in the Institution Decision. Inst. Dec. 7–8. Moreover, for
`
`purposes of this Decision, we agree with Petitioner that this dispute need not
`
`be resolved.
`
`
`8 Ex. 1001, 25:37–39, 28:36–38, 30:26–27.
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`IPR2017-01802
`Patent 7,535,890 B2
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`
`C. Alleged Obviousness over Griffin and Zydney9
`
`Petitioner argues Griffin and Zydney render obvious claims 1, 3–6, 9,
`
`and 40–43. Pet. 9–49.
`
`1. Overview of Griffin
`
`
`
`Griffin, titled “Voice and Text Group Chat Display Management
`
`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
`
`a wireless mobile terminal as shown in Figure 1, reproduced below.
`
`
`
`Figure 1, above, depicts mobile terminal 100 comprising speaker 103,
`
`which renders signals such as received speech audible; display 102 for
`
`
`9 Patent Owner reiterates its arguments, post-institution, that Zydney and
`Malik are duplicative of prior art cited during prosecution and that we
`should “reject” these grounds as cumulative under § 325(d). PO Resp. 17–
`21. We considered this argument when making our decision on institution,
`but found it unpersuasive. Inst. Dec. 28. Nothing in Patent Owner’s
`Response persuades us to change that decision.
`
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`rendering text and graphical elements visible; navigation rocker 105, which
`
`allows a user to navigate a list or menu displayed on the screen;
`
`microphone 107, for capturing the user’s speech; and push-to-talk button
`
`101, which allows the user to initiate recording and transmission of audio.
`
`Id. at 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 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 2:49−61.
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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 2:61−65.
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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 4:11−15, 4:62−65. An outbound chat
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`message, for example, is decomposed to locate the list of recipients, and the
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`recipient’s current status is determined. Id. at 5:9−15. 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 5:27−30.
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`Griffin provides a buddy list display illustrated in Figure 9,
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`reproduced below. Id. at 8:15−16.
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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
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`first displayed, indicating to the user that there is at least one unheard or
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`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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`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
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`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
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`latter technique “lack[ed] a method for convenient recording, storing,
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`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
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`data properties”—can be “stored, transcoded and routed to the appropriate
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`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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`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
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`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
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`period of time. Id. at 11:3–6.
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`In the use of Zydney’s system and method, the message originator
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`selects one or more intended recipients from a list of names that have been
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`previously entered into the software agent. Ex. 1006, 14:16–18. The agent
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`permits distinct modes of communication based on the status of the
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`recipient, including the “core states” of whether the recipient is online or
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`offline and “related status information” such as whether the recipient does
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`not want to be disturbed. Id. at 14:19–15:1. Considering the core states, the
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`software agent offers the originator alternative ways to communicate with
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`the recipient, the choice of which can be either dictated by the originator or
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`automatically selected by the software agent, according to stored rules. Id.
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`at 15:3–7. If the recipient is online, the originator can either begin a
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`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
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`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 “depends on
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`the activities of both parties, the intended length of conversation and the
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`quality of the communications path between the two individuals, which is
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`generally not controlled by either party.” Id. at 15:10–14, 15:17–19.
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`Zydney also explains that the choice of the offline delivery options “is based
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`on the interests of both parties and whether the recipient is sufficiently
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`mobile that access to the registered computer is not always available.” Id.
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`Once the delivery mode has been selected, the originator digitally
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`records messages for one or more recipients using a microphone-equipped
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`device and the software agent. Ex. 1006, 16:1–3. The software agent
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`compresses the voice and stores the file temporarily on the PC if the voice
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`will be delivered as an entire message. Id. at 16:3–4. If the real-time
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`“intercom” mode has been invoked, a small portion of the digitized voice is
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`stored to account for the requirements of the Internet protocols for
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`retransmission and then transmitted before the entire conversation has been
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`completed. Id. at 16:4–7. Based on status information received from the
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`central server, the agent then decides whether to transport the voice
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`container to a central file system and/or to send it directly to another
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`software agent using the IP address previously stored in the software agent.
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`Id. at 16:7–10. If the intended recipient has a compatible active software
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`agent online after log on, the central server downloads the voice recording
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`almost immediately to the recipient. Id. at 16:10–12. The voice is
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`uncompressed and the recipient can hear the recording through the speakers
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`or headset attached to its computer. Id. at 16:12–14. The recipient can reply
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`in a complementary way, allowing for near real-time communications. Id. at
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`16:14–15. If the recipient’s software agent is not online, the voice recording
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`is stored in the central server until the recipient’s software agent is active.
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`Id. at 16:15–17. “In both cases, the user is automatically notified of
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`available messages once the voice recordings have been downloaded to
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`storage on their computer.” Id. at 16:17–19. The central server coordinates
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`with software agents on all computers continuously, updating addresses,
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`uploading and downloading files, and selectively retaining voice r