Trials@uspto.gov
`Tel: 571-272-7822
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` Paper 8
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` Entered: February 6, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01802
`Patent 7,535,890 B2
`____________
`
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 8
`
`
`
` Entered: February 6, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01802
`Patent 7,535,890 B2
`____________
`
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2017-01802
`Patent 7,535,890 B2
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`
`INTRODUCTION
`I.
`Samsung Electronics America, Inc. (Petitioner or “Samsung”) 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 (Ex. 1001, “the ’890 patent”). Paper 1 (“Pet.”). Uniloc Luxembourg
`S.A. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim.
`Resp.”).
`We have authority to determine whether to institute inter partes
`review under 35 U.S.C. § 314. Upon considering the record developed thus
`far, for reasons discussed below, we institute inter partes review of the
`challenged claims of the ’890 patent.
`
`A. Related Matters
`The parties indicate that the ’890 patent is involved in a multitude of
`district court cases, including Uniloc USA, Inc. v. Samsung Electronics
`America, Inc., Case No. 2-16-cv-00641-JRG (E.D. Tex.). Pet. 1−3, Paper 4,
`2−3. The ’890 patent also has been the subject of multiple inter partes
`review petitions, and is the subject of Case IPR2017-00221 (filed by Apple
`Inc.), in which we instituted inter partes review on May 25, 2017.
`
`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
`client terminal with a “list of persons who are currently ‘online’ and ready to
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`receive text messages,” the user “select[s] one or more” recipients and types
`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,
`“there is still a need in the art for . . . a system and method for providing
`instant VoIP messaging over an IP network,” such as the Internet.
`Id. at 1:6–11, 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.
`
`
`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
`instant voice messaging functionality over network 204. Id. at 7:53–55.
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`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. Id. at 7:47–49, 7:55–61. IVM client 208 then transmits the
`selections to IVM server 202 and “records the user’s speech into . . .
`digitized audio file 210 (i.e., an instant voice message).” Id. at 7:61–8:1.
`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
`instant voice message.” Id. at 8:23−25. IVM server 202 “temporarily saves
`the instant voice message” for any IVM client that is “not currently
`connected to . . . local IVM server 202 [(i.e., is unavailable)]” and “delivers
`it . . . when the IVM client connects to . . . local IVM server 202 [(i.e., is
`available)].” Id. at 8:24–29; see id. at 9:7–11. Upon receiving the instant
`voice message, the recipients can audibly play the message. Id. at 8:19–22.
`In another embodiment, the ’890 patent discusses global IVM
`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
`system 502, with global IVM clients 506, 508. Id. at 15:25–33. Both the
`local and global IVM systems are connected to “packet-switched
`network 102 (i.e., Internet)” to enable the local and global IVM clients to be
`able to exchange instant voice messages with one another. Id. at 15:25–38.
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`C. Independent Claims
`Of the challenged claims, claims 1, 14, 40, and 51of the ’890 patent
`are independent. Claims 1 and 14 reproduced below, are 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
`recipient is unavailable and delivering the stored instant
`voice message to the selected recipient once the selected
`recipient becomes available.
`14. An instant voice messaging system for delivering instant
`messages over a plurality of packet-switched networks, the system
`comprising:
`a client connected to a local network, the client selecting one or
`more recipients connected to an external network outside
`the local network, generating an instant voice message
`therefor, and transmitting the selected recipients and the
`instant voice message therefor over the local network and
`the external network; and
`a server connected to the external 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 external network, the selected
`recipients being enabled to audibly play the instant voice
`message, and the server temporarily storing the instant voice
`message if a selected recipient is unavailable and delivering
`the stored instant voice message to the selected recipient
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`once the selected recipient becomes available.
`Id. at 23:55–24:3, 27:6–28.
`
`D. 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; and
`
`c) Malik: U.S. Patent No. 7,123,695 B2, issued Oct. 17, 2006, filed
`in the record as Exhibit 1012
`
`Petitioner asserts two grounds of unpatentability as follows (Pet. 6−7):
`
`Basis
`
`References
`
`Challenged
`Claim(s)
`1, 3−6, 9, and
`40−43
`2, 14, 15, 17−20,
`23, 51−54, and 57
`
`Petitioner supports its challenge of unpatentability with a Declaration
`of Dr. Zygmunt J. Haas, filed as Exhibit 1002 (“Haas Declaration”).
`
`§ 103(a)
`
`Griffin and Zydney
`
`§ 103(a)
`
`Griffin, Zydney, and Malik
`
`II. DISCUSSION
`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); Cuozzo Speed Techs.,
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`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). Under the
`broadest reasonable interpretation standard, claim terms generally are given
`their ordinary and customary meaning, as would be understood by one of
`ordinary skill in the art in the context of the entire disclosure. See In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We note that
`only those claim terms that are in controversy need to be construed, and only
`to the extent necessary to resolve the controversy. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017);
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999).
`Petitioner asserts that “the Board need not construe the challenged
`claims to resolve the underlying controversy.” Pet. 8–9. Patent Owner
`proffers claim constructions as follows (Prelim. Resp. 20−28):
`Claim term/phrase
`Patent Owner’s Proposal
`
`transmitting the selected recipients
`and the instant voice message
`therefor over the network
`
`transmitting of the selected
`recipients and the instant voice
`message are done separately
`
`receiving the selected recipients and
`the instant voice message
`
`receiving the selected recipients and
`separately receiving the instant
`voice message
`
`delivering the instant voice message
`to the selected recipients
`
`delivering the instant voice message
`(from the server) to (a subset of) the
`selected recipients that are
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`determined by the server to be
`available
`
`storing the instant voice message if
`a selected recipient is unavailable
`
`storing the instant voice message for
`a selected recipient determined by
`the server to be unavailable
`
`
`Patent Owner’s arguments for the first two terms focus on whether the
`
`list of recipients and the instant voice message are separately transmitted or
`received. We address both terms together below as the analysis is the same
`for both terms. As for the remaining two terms, Patent Owner focuses on
`clarifying further the plain meaning of the claims. We do not address these
`remaining terms further, because at this juncture, the added explanations that
`Patent Owner proffers do not appear necessary under the plain meaning of
`the claim and are not needed in order for us to determine whether to institute
`inter partes review.
`
`Transmitting/Receiving the Selected
`Recipients and the Instant Voice Message
`Claim 1 recites “the client . . . transmitting the selected recipients and
`the instant voice message therefor,” and “the server receiving the selected
`recipients and the instant voice message therefor.” Ex. 1001, 23:58−64.
`Challenged independent claims 14, 40, and 51 recite similar limitations.1
`Patent Owner argues that the ’890 patent Specification provides the context
`necessary for construing these limitations. Particularly, Patent Owner relies
`on the ’890 patent description of how the user selects the intended
`
`
`1 Ex. 1001, 25:27−28, 25:30−32, 28:27−28, 28:30−31, 30:16−17, 30:19−20.
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`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 list [and t]he
`user selection is transmitted to the IVM server 202.” 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 the send signal to the local
`IVM server 202.” Id. at 8:11–12. 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. Prelim. Resp. 21–22.
`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 22–23 (indicating that claims 8 and 45 recite
`buffering that does not mention the indication of one or more intended
`recipients). Patent Owner reasons that the omission from the dependent
`claims of the transmission 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 reasons
`analogous to those presented concerning the “transmitting” limitation, the
`“receiving” limitation “requires that the receiving of the selected recipients
`and the IVM are performed separately.” Id. at 24. 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 25. According to
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`Patent Owner, “it is only logical that the server must receive the IVM for
`both the available and unavailable recipients.” Id.
`“[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 provides 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
`embodiment appearing in the written description may not be read into a
`claim when the claim language is broader than the embodiment.”). The
`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 that limits the claim language
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`to the timing of the transmissions to the server or the reception at the server
`in these embodiments. Accordingly, for purposes of this Decision, 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.2
`
`B. Overview of Asserted Prior Art
`We discuss more fully certain disclosures in the asserted references in
`
`our analysis below. A discussion of those references follows.
`
`1. 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.
`
`
`2 This analysis tracks the preliminary claim construction provided for similar
`terms of U.S. Patent No. 8,995,433, involved in IPR2017-01428. See
`Decision, Case IPR2017-01428, slip. op. 8−10 (PTAB Dec. 4, 2017) (Paper
`8) (“IPR 1428”)
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`Figure 1, above, depicts mobile terminal 100 comprising speaker 103
`(which renders signals, such as received speech, audible), display 102 (for
`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.
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`Figure 2, above, illustrates wireless carrier infrastructures 202, which
`support wireless communications with mobile terminals 100, such that the
`mobile terminals wirelessly transmit data to a corresponding infrastructure
`202 for sending the data packets to communication network 203, which
`forwards the packets to chat server complex 204. Id. at 3:49−61.
`Communication network 203 is described as a “packet-based network,
`[which] may comprise a public network such as the Internet or World Wide
`Web, a private network such as a corporate intranet, or some combination of
`public and private network elements.” Id. at 3:61−65.
`Griffin’s chat server complex 204 receives encoded data comprising
`text, speech, and/or graphical messages (or some combination thereof),
`when a plurality of users chat together (i.e., send chat messages from one
`terminal 100 to another). Id. at 4:11−15, 4:62−65. An outbound chat
`message, for example, is decomposed to locate the list of recipients, and the
`recipient’s current status is determined. Id. at 5:9−15. Griffin describes
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`presence status 702 as “an indicator of whether the recipient is ready to
`receive the particular type of message, speech and/or text messages only,
`etc.” Id. “When presence status 702 changes, the presence manager 302 [of
`server complex 204] sends a buddy list update message 600 to all the
`subscribers listed in the subscriber identifier field 706 of the corresponding
`presence record 700.” Id. at 5:27−30.
`Griffin provides a buddy list display illustrated in Figure 9,
`reproduced below. Id. at 8:15−16.
`
`
`Figure 9, above, depicts title bar 901, where inbound chat message
`indicator 905 is an icon accompanied by an audible sound when the icon is
`first displayed, indicating to the user that there is at least one unheard or
`unread inbound chat message that has arrived at terminal 100. Id. at
`8:17−18, 8:28−32. Left softkey 910, labeled “Select,” permits selection of a
`particular buddy for chatting, which selection 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,
`the display switches to the chat history, and the user is able to record and
`transmit a speech message and consequently start a new thread with the
`selected buddies.” Id. at 9:27−31.
`
`2. Zydney
`Zydney, titled “Method and System for Voice Exchange and Voice
`Distribution,” relates to packet communication systems that provide for
`voice exchange and voice distribution between users of computer networks.
`Ex. 1006, [54], [57], 1:4–5. While acknowledging that e-mail and instant
`messaging systems were well-known text-based communication systems
`utilized by users of on-line services and that it was possible to attach files for
`the transfer of non-text formats via those systems, Zydney states that the
`latter technique “lack[ed] a method for convenient recording, storing,
`exchanging, responding and listening to voices between one or more parties,
`independent of whether or not they are logged in to their network.” Id. at
`1:7–17. Zydney thus describes a method in which “voice containers”—i.e.,
`“container object[s] that . . . contain[] voice data or voice data and voice data
`properties”—can be “stored, transcoded and routed to the appropriate
`recipients instantaneously or stored for later delivery.” Id. at 1:19–22, 12:6–
`8. Figure 1 of Zydney is reproduced below.
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`Figure 1, above, illustrates a high level functional block diagram of
`Zydney’s system for voice exchange and voice distribution. Id. at 10:19–20.
`Referring to Figure 1, system 20 allows software agent 22, with a user
`interface, in conjunction with central server 24 to send messages using voice
`containers illustrated by transmission line 26 to another software agent 28,
`as well as to receive and store such messages, in a “pack and send” mode of
`operation. Id. at 10:20–11:1. Zydney explains that a pack and send mode of
`operation “is one in which the message is first acquired, compressed and
`then stored in a voice container 26 which is then sent to its destination(s).”
`Id. at 11:1–3. The system has the ability to store messages both locally and
`centrally at server 24 whenever the recipient is not available for a prescribed
`period of time. Id. at 11:3–6.
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`Zydney discloses that the voice container also has the ability to have
`other data types attached to it. Id. at 19:6–7. Formatting the container using
`MIME format, for example, “allows non-textual messages and multipart
`message bodies attachments [sic] to be specified in the message headers.”
`Id. at 19:7–10.
`Figure 3 of Zydney is reproduced below.
`
`
`Figure 3, above, illustrates an exemplary embodiment of Zydney’s
`voice container structure, including voice data and voice data properties
`components. Id. at 2:19, 23:1–2. Referring to Figure 3, voice container
`components include:
`[O]riginator’s code 302 (which is a unique identifier), one or
`more recipient’s code 304, originating time 306, delivery
`time(s) 308, number of “plays” 310, voice container source 312
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`which may be a PC, telephone agent, non-PC based appliance, or
`other, voice container reuse restrictions 314 which may include
`one
`time and destroy 316, no forward 318, password
`retrieval 320, delivery priority 322, session values 324, session
`number 326, sequence number for partitioned sequences[] 328,
`repeating information 330, no automatic repeat 332, repeat
`times 334, and a repeat schedule 336.
`Id. at 23:2–10.
`
`3. Malik
`Malik explains that in many prior art instant-messaging (“IM”)
`systems, including Jabber, when an instant message is sent to a user that is
`not present on the network, servers have the capability to hold the message
`in a queue and deliver it “to the user as soon as the user is present.”
`Ex. 1007, 2:40–41, 2:60–67, 3:16–23. Figure 2 of Malik is reproduced
`below.
`
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`Figure 2 depicts a prior art IM network using the Jabber “client-
`server” architecture, which contains “distributed network servers,” namely
`local Jabber servers 215–217, and Jabber clients 200–205. Id. at 2:49–3:1,
`3:66–67. Clients 200–205 send and receive messages, and Jabber servers
`215–217 deliver the messages in “real time.” Id. at 2:56–67. “Each local
`Jabber server 215–217 performs two main functions: listening for and
`communicating directly with Jabber client applications 200–205, and
`communicating with other Jabber servers 215–217” that are “connected to
`the Internet.” Id. at 3:5–12; see id. at 2:58–59.
`
`C. Petitioner’s Contentions
`Petitioner points to Griffin as disclosing all the claim 1 limitations,
`except that it relies on three aspects of Zydney:
`a) Zydney’s disclosure of agents 22, 28 and server 24 as being
`“directly connected to a packet-switched network (e.g., Internet)”;
`b) Zydney’s disclosure of a central server tracking and maintaining
`the status of all software agents, where the server is adapted to
`detect whether an agent is on-line and off-line;
`c) Zydney’s disclosure of storing messages both locally and centrally
`at the server when the recipient is not available for a prescribed
`period of time;
`Pet. 21, 26, 48. For dependent claims 6, 20, 43, and 54, Petitioner argues
`that Griffin does not explicitly disclose that the speech in the speech chat
`message is an audio file. See, e.g., id. at 39 (“a POSA at the time of the
`alleged invention [would] modify Griffin’s system/process such that the
`speech is a digitized audio file (e.g., MP3) in view of the teachings of
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`Zydney”). Petitioner, thus, relies on Zydney’s disclosure of “MP3” as the
`voice message format. Id. at 40 (citing, inter alia, Ex. 1006, 39:16).
`Further, for dependent claims 23 and 57, Petitioner acknowledges that
`Griffin does not describe attaching one or more files to a speech message.
`Id. at 42. Petitioner, thus, argues that it would have been obvious for a
`person of ordinary skill in the art to modify Griffin to include this feature,
`and alternatively, relies on Zydney’s disclosure of attachments to the voice
`container as disclosing the limitations further recited in claims 23 and 57
`(“attach one or more files to the instant voice message”). Id. at 43−45.
`Finally with regard to the ground based on Malik, Petitioner argues
`that neither Griffin nor Zydney explicitly recites that its network is a local
`network, as recited in claims 2, 14, 15, and 51. Petitioner relies on Malik’s
`disclosure of a “closed network” and the “Jabber” IM system architecture.
`Id. at 50−51 (citing Ex. 1012, 1:59−2:39, 2:40−3:31, 3:35−53, 4:42−47, Fig.
`2). Where claims recite both a local network and an external network,
`Petitioner relies on Malik also as disclosing both of these networks. See,
`e.g., id. at 59 (labeling Jabber Server 215 and Jabber Clients 200−201 an
`“External Network” and labeling Jabber Server 216 and Jabber Clients
`202−204 a “Local Network”).
`We now evaluate the information in the Petition in light of Patent
`Owner’s argument and evidence. We note that Patent Owner supports its
`arguments against institution with a Declaration of William C. Easttom II.
`Ex. 2001 (“Easttom Declaration”).
`
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`D. Determination of Reasonable Likelihood
`We have reviewed the Petition and the evidence cited in support
`thereof, and are persuaded that, at this juncture, Petitioner has established a
`reasonable likelihood of prevailing in its contention that claims 1−6, 9, 14,
`15, 17−20, 23, 40−43, 51−54, and 57 of the ’890 patent are unpatentable as
`obvious over Griffin and Zydney or Griffin, Zydney, and Malik, as asserted.
`Patent Owner’s arguments presented on the current record have not
`persuaded us to the contrary. Specifically, Patent Owner has not persuaded
`us that the following arguments are supported by facts sufficient to
`overcome the evidence presented in the Petition:
`a) Griffin’s purpose, of including a server that delivers only the
`messages the server determines technically feasible, would be
`frustrated (Prelim. Resp. 33−39);
`b) Griffin would not have been combined with Zydney (id. at 33−40);
`c) The combination of Griffin and Zydney does not disclose
`transmitting/receiving the instant voice message and selected
`recipients, separately (id. at 43−47);
`d) No disclosure of delivering the instant voice message to the
`selected recipients over the network and storing the instant voice
`message if a selected recipient is unavailable (id. at 48−50); and
`e) The downloaded instant voice message is not the same message
`sent by the sending device (id. at 50, 55−56).
`With regard to the “frustration of purpose” argument, Patent Owner
`focuses on Griffin describing “queuing” an inbound speech message, and on
`the difference between Zydney and Griffin regarding where the
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`determination of sending the message lies. Id. at 33−39. For instance,
`Patent Owner argues that Zydney’s sending device initiates sending the
`communication directly to the receiving device where the sending device
`determined that the communication is “technically feasible.” Id. at 34−35.
`In contrast, Griffin’s terminal prepares a list of recipients without
`determining whether or not the targeted recipient terminals are “technically
`able to receive the particular type of message.” Id. at 33−34. Accordingly,
`Patent Owner reasons that “including Zydney in the system described by
`Griffin would frustrate the purpose of Griffin,” because Zydney’s terminals,
`not the server, independently determine whether the message will be
`delivered, while in Griffin, the server sends all messages it determines to be
`delivered, subject to later queuing. Id. at 35.
`The argument is unpersuasive at this juncture because it addresses a
`“substitution” that Petitioner does not appear to make. As we understand the
`Petition, the focus is not on the incorporation of Zydney’s availability
`determination at the terminal into Griffin’s server-based determination.
`Rather, the Petition relies on Zydney’s disclosure of whether, for example,
`the “available” status (meaning that the user is online) would suggest that
`Griffin’s current status 702 of recipients being “available” would also take
`that meaning. See Pet. 23 (arguing the modification of Griffin based on
`Zydney’s connectivity status so that “status 702 indicates whether terminal
`100 is “available” or “unavailable” for messaging based on whether terminal
`100 is currently connected to server 204). Patent Owner’s arguments take
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`Petitioner’s contention too far into a bodily incorporation position that
`appears untenable at this juncture.3
`As for Patent Owner’s arguments focused on Griffin’s “queuing,” we
`are not persuaded that Patent Owner is correct. Griffin explains that
`notwithstanding “queuing,” the message is received at the terminal, and the
`queuing is only for automatic playback. Ex. 1005 at 11:50−67. In other
`words, on the present record we do not agree with Patent Owner’s
`characterization that “Griffin doesn’t know and doesn’t care whether a
`recipient is actually online (which in Griffin, is really whether the recipient
`currently has the chat history displayed).” See Prelim. Resp. 36 (arguing
`that “available” status does not result in the terminal receiving the message
`because of “queuing”). Consequently, we are not persuaded by Patent
`Owner’s arguments that the proposed combination of Griffin and Zydney
`would frustrate the purpose of Griffin.
`Now we address Patent Owner’s challenge to the asserted
`combinability of Griffin and Zydney. The premise of Patent Owner’s
`arguments is that the availability status in Griffin is different from the
`availability status in Zydney. Prelim. Resp. 41−42. According to Patent
`Owner, Zydney routes all messages to the appropriate recipients
`instantaneously or stores the message for later delivery. Id. at 41. In
`contrast, Patent Owner characterizes Griffin as delivering the message only
`
`
`3 “The test for obviousness is not whether the features of a secondary
`reference may be bodily incorporated into the structure of the primary
`reference . . . . Rather, the test is what the combined teachings of the
`references would have suggested to those of ordinary skill in the art.” In re
`Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted).
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`if the user has the “chat history display” visible on the user interface, and
`even then only the most recently received speech message is available. Id. at
`41−42. This discrepancy, Patent Owner reasons, would render the
`combination inoperable as it result in Zydney’s messages being lost and the
`principle of operation would have to be changed for at least one of both
`Zydney or Griffin. Id. at 41−43. As stated above, h
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