Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 11
`
`
`
`Entered: November 30, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC., WHATSAPP INC., and LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01427 (Patent 8,995,433 B2)
`__________________________________________
`
`
`
`
`
`FACEBOOK, INC., WHATSAPP INC., LG ELECTRONICS, INC., and
`HUAWEI DEVICE CO., LTD.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01428 (Patent 8,995,433 B2)
`____________
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318
`
`
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 11
`
`
`
`Entered: November 30, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC., WHATSAPP INC., and LG ELECTRONICS, INC.,
`Petitioner,
`
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01427 (Patent 8,995,433 B2)
`__________________________________________
`
`
`
`
`
`FACEBOOK, INC., WHATSAPP INC., LG ELECTRONICS, INC., and
`HUAWEI DEVICE CO., LTD.,
`Petitioner,
`
`v.
`
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01428 (Patent 8,995,433 B2)
`____________
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318
`
`
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`
`IPR2017-01427
`IPR2017-01428
`Patent 8,995,433 B2
`
`
`I.
`INTRODUCTION
`We instituted inter partes review pursuant to 35 U.S.C. § 314 to
`review claims 112, 1417, 25, and 26 of U.S. Patent No. 8,995,433 B2
`(“the ’433 patent”), owned by Uniloc 2017 LLC. 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,
`Petitioners have shown by a preponderance of the evidence that claims
`112, 1417, 25, and 26 of the ’433 patent are unpatentable.
`
`
`II. CONSOLIDATION OF PROCEEDINGS
`The two captioned proceedings (IPR2017-01427 and IPR2017-01428)
`involve the ’433 patent. Although each proceeding challenges the
`patentability of a different set of claims, there are disputed claim terms
`across the challenged claims and the primary prior art is identical. For
`instance, all the claims recite the term “instant voice message,” which we
`construe below, and the “Zydney” reference (identified with particularity
`below) is asserted as prior art in both proceedings. Consolidation is
`appropriate where, as here, the Board can more efficiently handle the
`common issues and evidence and also remain consistent across proceedings.
`Under 35 U.S.C. § 315(d) the Director may determine the manner in which
`these pending proceedings may proceed, including “providing for stay,
`transfer, consolidation, or termination of any such matter or proceeding.”
`See also 37 C.F.R. § 42.4(a) (“The Board institutes the trial on behalf of the
`Director.”). There is no specific Board Rule that governs consolidation of
`cases. But 37 C.F.R. § 42.5(a) allows the Board to determine a proper
`
`2
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`Patent 8,995,433 B2
`
`course of conduct in a proceeding for any situation not specifically covered
`by the rules and to enter non-final orders to administer the proceeding.
`Therefore, on behalf of the Director under § 315(d), and for a more efficient
`administration of these proceedings, we consolidate IPR2017-01427 and
`IPR2017-01428 for purposes of rendering this Final Written Decision in
`which we construe the term “instant voice message” and determine whether
`the asserted prior art teaches the properly construed “instant voice message.”
`
`III. PROCEDURAL BACKGROUND
`Facebook, Inc., and WhatsApp Inc. filed the Petitions in the captioned
`proceedings on the same day, May 11, 2017. IPR2017-01427, Paper 2
`(“1427 Petition” or “1427 Pet.”); IPR201701428, Paper 2 (“1428 Petition”
`or “1428 Pet.”). Each proceeding challenges a different set of claims, as
`follows:
`
`Proceeding
`
`IPR2017-01427
`IPR2017-01428
`
`Claim Set of the
`’433 Patent
`18
`912, 1417, 25,
`and 26
`
`
`See 1427 Pet. 5; 1428 Pet. 5. After considering Patent Owner’s Preliminary
`Responses, the Board instituted trial in each of these proceedings. IPR2017-
`01427, Paper 8, Decision on Institution (“1427 Dec. on Inst.”); IPR2017-
`01428, Paper 8, Decision on Institution (“1428 Dec. on Inst.”). The
`Decision on Institution in IPR2017-01428 noted, in particular, that Patent
`Owner’s arguments raised an issue of claim construction of the term “instant
`
`3
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`voice message” that was underdeveloped at that stage of the proceeding.
`1428 Dec. on Inst. 1112.
`During the pendency of the proceedings, LG Electronics, Inc., filed a
`Petition and Motion for Joinder requesting to join IPR2017-01427, which
`we granted. IPR2017-01427, Paper 9. Similarly, LG Electronics, Inc. and
`Huawei Device Oc., Ltd., filed a Petition and Motion for Joinder requesting
`to join IPR2017-01428, which we also granted. IPR2017-01428, Paper 9.
`In each proceeding, Patent Owner filed a Response. IPR2017-01427,
`Paper 23 (“1427 PO Resp.”); IPR2017-01428, Paper 21 (“1428 PO Resp.”).
`And Petitioner filed a Reply. IPR2017-01427, Paper 33 (“1427 Reply”);
`IPR2017-01428, Paper 29 (“1428 Reply”). We held Oral Arguments in both
`proceedings on August 30, 2018, the transcripts of which are in the record.
`IPR2017-01427, Paper 40 (“1427 Tr.”); IPR2017-01428, Paper 34 (“1428
`Tr.”).
`At the hearing, we alerted the parties to continuing concerns about the
`construction for the term “instant voice message.” 1428 Tr. 9:1212:13.
`Subsequent to the Oral Arguments we issued an order authorizing additional
`briefing on claim construction of the term “instant voice message” and its
`applicability to the asserted prior art. IPR2017-01427, Paper 41 (“1427
`Order on Claim Constr.”); see IPR2017-01428, Paper 35 (identical order).
`The parties simultaneously filed initial claim construction briefs and
`responsive claim construction briefs, in accordance with that order.
`
`A. Related Matters
`The parties indicate that the ’433 patent is involved in Uniloc USA,
`Inc. v. Facebook, Inc. and Uniloc USA, Inc. v. WhatsApp Inc., Case Nos.
`
`4
`
`
`
`IPR2017-01427
`IPR2017-01428
`Patent 8,995,433 B2
`
`2-16-cv-00728-JRG (E.D. Tex.) and 2:16-cv-00645-JRG (E.D. Tex.),
`respectively. Pet. 12. The ’433 patent was also the subject of Case
`IPR2017-00225 (filed by Apple Inc.), in which we issued a Final Written
`Decision finding claims 1–6 and 8 not unpatentable. IPR2017-00225, slip
`op. at 2 (PTAB May 23, 2018) (Paper 29) (noting that Facebook, Inc. and
`WhatsApp, Inc. joined that proceeding).1
`
`IV. THE ’433 PATENT AND PRESENTED CHALLENGES
`A. The ’433 Patent, Exhibit 10012
`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
`
`
`
`1 The parties in IPR2017-01427 briefed the issue of estoppel under 35
`U.S.C. § 315(e)(1) based on Facebook and WhatsApp obtaining a Final
`Written Decision of claims 1–6 and 8 of the ’433 patent in IPR2017-
`00225. See IPR2017-01427, Papers 11, 12. We issued an order dismissing
`Facebook and WhatsApp with regard to those claims. IPR2017-01427,
`Paper 30. We reiterate here that, although Facebook and WhatsApp are
`listed in the caption of IPR2017-01427, they are estopped under 35 U.S.C.
`§ 315(e)(1) as to claims 1–6, and 8, but not as to claim 7. Id.
`
` Reference to the ’433 patent is always to the exhibit number in IPR2017-
`01427.
`
` 2
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`5
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`
`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.
`
`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
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`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
`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
`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 the “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 clients 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
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`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.
`
`B. Independent Claims
`Of the challenged claims, claim 1, 6, and 9 are independent and are
`reproduced below. Each of claims 25, 7, 8, 1912, 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.
`
`
`A system comprising:
`
`6.
`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;
`
`
`
`
`8
`
`
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`IPR2017-01427
`IPR2017-01428
`Patent 8,995,433 B2
`
`
`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 a message
`database in response to a user request; and
`wherein the instant voice messaging application includes
`a compression/decompression system for compressing the
`instant voice messages
`to be
`transmitted over
`the
`packet-switched network and decompressing the instant voice
`messages received over the packet-switched network.
`
`A system comprising:
`9.
`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, 24:3351, 24:6067.
`
`C. Asserted Prior Art and Instituted Grounds of Unpatentability
`These proceedings rely on the following prior art references:
`
`a) Zydney: PCT App. Pub. No. WO 01/11824 A2, published Feb. 15,
`2001, filed in the IPR2017-01427 record as Exhibit 1003 (with line
`numbers added by Petitioner);
`
`b) Appelman: U.S. Patent No. US 6,750,881 B1, issued June 15,
`2004, filed in the IPR2017-01427 record as Exhibit 1004;
`
`c) Clark: U.S. Patent No. US 6,725,228 B1, issued Apr. 20, 2004,
`
`9
`
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`IPR2017-01428
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`
`
`filed in the IPR2017-01427 record as Exhibit 1008;
`
`d) Greenlaw: RAYMOND GREENLAW & ELLEN HEPP, INTRODUCTION
`TO THE INTERNET FOR ENGINEERS 125 (1999), filed in the
`IPR2017-01428 record as Exhibit 1110; and
`
`e) Newton: HARRY NEWTON, NEWTON’S TELECOM DICTIONARY (18th
`ed. 2002), filed in the IPR2017-01428 record as Exhibit 1106.
`
`The following grounds of unpatentability are at issue:
`
`Challenged
`Claim(s)
`16, 8
`
`Basis
`
`Reference(s)
`
`§ 103(a)
`
`Zydney and Clark
`
`7
`
`§ 103(a)
`
`Zydney, Clark, and Appelman
`
`9, 12, 14, 17, 25,
`and 26
`
`§ 103(a)
`
`Zydney
`
`11, 15, and 16
`
`§ 103(a)
`
`Zydney and Greenlaw
`
`10
`
`§ 103(a)
`
`Zydney and Newton
`
`Each Petition also cites declaration testimony as follows: Declaration
`of Tal Lavian, Ph.D., filed as Exhibit 1002 in IPR2017-01427 (“1427 Lavian
`Decl.”); and Declaration of Tal Lavian, Ph.D., filed as Exhibit 1102 in
`IPR2017-01428 (“1428 Lavian Decl.”).
`Patent Owner cites declaration testimony in support of its arguments
`of patentability as follows: Declaration of Val DiEuliis, Ph.D., Exhibit 2001
`in IPR2017-01427 (“1427 DiEuliis Decl.”); and Declaration of Val DiEuliis,
`Ph.D., Exhibit 2001 in IPR2017-01428 (“1428 DiEuliis Decl.”).
`
`10
`
`
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`IPR2017-01427
`IPR2017-01428
`Patent 8,995,433 B2
`
`
`V. ANALYSIS
`
`A. Claim Construction
`In this 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) (2012); 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 inter partes reviews). 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).
`In both Petitions, the terms “instant voice message application” and
`“client platform system” were identified for claim construction. 1427 Pet.
`915; 1428 Pet. 915. We did not construe these terms in our Decisions on
`Institution. 1427 Dec. on Inst. 8; 1428 Dec. on Inst. 7. We did construe the
`term “receiving the instant voice message and an indication of one or more
`intended recipients” (claim 17) in the Decision on Institution in the 1428
`case, because Patent Owner raised the issue in the Preliminary Response in
`that case. 1428 Dec. on Inst. 710. Furthermore, as stated above, we
`
`11
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`
`authorized the parties to file additional briefing regarding the claim
`construction of “instant voice message.” IPR2017-01427, Paper 41;
`IPR2017-01428, Paper 35. We turn to determining the construction of that
`claim term.
`
`1. Instant Voice Message
`All the independent challenged claims recite the term “instant voice
`message.” In particular, claims 1 and 6 recite a client platform system for
`“generating an instant voice message and a messaging system for
`transmitting the instant voice message.” Claims 1 and 6 further require
`storing the “instant voice message” and, depending on the claim, performing
`certain actions, such as retrieving, deleting, compressing, and decompressing
`the “instant voice message.” Claim 9 also recites generating and
`transmitting the “instant voice message,” but adds that “the instant voice
`message application attaches one or more files to the instant voice message.”
`The Decision on Institution in the 1428 case noted Patent Owner’s
`arguments regarding the “instant voice message” centered on the scope of
`the term. 1428 Dec. on Inst. 11. Patent Owner had argued an implied
`construction in which “instant voice message” encompasses only the voice
`message. Id. The parties were invited to brief the claim construction during
`trial. Id. at 1112. Because the arguments were particularly directed to
`whether the prior art attaches a file to the “instant voice message,” a
`requirement of claim 9, the parties presented their claim construction
`arguments in the trial briefs in the IPR2017-01428 case. For completeness,
`we summarize below the arguments presented in the Patent Owner Response
`and Petitioner’s Reply filed in the 1428 case.
`
`12
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`
`In its Response, Patent Owner proposed that an “instant voice
`message” is “an audio file recording voice data.” 1428 PO Resp. 67. In
`particular, Patent Owner relied on the Specification’s use of “i.e.” to indicate
`lexicography in equating the “instant voice message” to audio file 210. Id.
`at 7 (citing various portions of the Specification that state “the digitized
`audio file 210 (i.e., instant voice message)”).
`Petitioner, on the other hand, argued in Reply that the “instant voice
`message” is not synonymous with an audio file recording voice data because
`a related patent (having the same Specification as the ’433 patent) has a
`claim that recites “recording the instant voice message in an audio file.”
`1428 Reply 3 (citing U.S. Patent No. 8,199,747, claim 1). According to
`Petitioner, if an “instant voice message” is an “audio file” then the language
`of that claim requiring the recording of the instant voice message in an audio
`file would be superfluous. Id. More importantly, Petitioner also argued that
`the “audio file” is one of two disclosed embodiments of the “instant voice
`message.” Id. at 45. Specifically, the ’433 patent describes that instead of
`taking the form of an audio file, the instant voice message is generated in
`real time by buffering successive portions of the instant voice message.
`Ex. 1001, 11:3560. If we were to adopt Patent Owner’s proposed
`construction of an audio file, according to Petitioner, we would exclude a
`preferred embodiment where the instant voice message is described as
`buffered successive portions. 1428 Reply 5 (citing Epos Techs. Ltd. v.
`Pegasus Techs. Ltd., 766 F.3d 1338, 1347 (Fed. Cir. 2014)). After
`persuasively arguing against Patent Owner’s proposed construction,
`Petitioner proposed no alternative construction, arguing instead that “instant
`
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`voice message” “can be left to its plain and ordinary meaning, encompassing
`the instant voice messages disclosed by Zydney.” 1428 Reply 5.
`At oral argument, we renewed the concern for the appropriate scope
`of the term “instant voice message” in light of the record developed to that
`point. See Order on CC Briefing. We entered in the record a dictionary
`definition of “instant messaging.” See id. (explaining Exhibit 3001). And
`we subsequently ordered the parties to brief their respective positions. Id.
`After reviewing the parties’ briefs, we construe “instant voice
`message” to mean “data content including a representation of an audio
`message.” This accords with Patent Owner’s position that the ’433 patent
`Specification consistently refers to the “instant voice message” as content.
`IPR2017-01428, Paper 36, 24 (“PO Supplemental Br.”). In particular, we
`are persuaded that the Specification describes the “instant voice message” as
`content in three different embodiments. First, in the “record mode”
`embodiment, by describing the “instant voice message” as an audio file
`(Ex 1001, 433 patent, 8:11–15, 8:21, 10:1, 10:42–43, 10:50, 12:42–43,
`16:24, 17:25–26, 18:8–9, 18:60, 18:66–67, 19:49, 19:54), the ’433 patent
`Specification focuses on the digitized audio file itself being the “instant
`voice message.” See PO Supplemental Br. 3. The digitized audio file is the
`user’s speech that the client records. See Ex. 1001, 8:1215. Second, in the
`“intercom mode,” the Specification describes buffering “successive portions
`of the instant voice message,” referring thusly to portions of the user’s
`speech that are written to a buffer. Id. at 11:3746. Again, the “instant
`voice message” includes the digitized audio. In a third embodiment, the
`Specification describes a “message object” with an object field in this
`
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`manner: “The content of the object field is a block of data being carried by
`the message object, which may be, for example, a digitized instant voice
`message.” Id. at 14:3942. These embodiments, thus, paint a picture of the
`“instant voice message” as first and foremost being the content of the
`message, or the user’s speech, in some digitized form. Although the manner
`in which the data content is partitioned, stored, and delivered may vary from
`embodiment to embodiment (such as from audio file to digitized audio in a
`buffer), what is important is that the “instant voice message” always refers to
`the digitized audio message.
`Patent Owner argues that lexicography mandates the equivalence of
`content with “instant voice message.” In particular, Patent Owner argues
`that in describing the “record mode” the Specification uses the abbreviation
`“i.e.” to consistently define the “instant voice message” as voice data
`content. See PO Supplemental Br. 3. The use of “i.e.” has been held to
`signal an intent of the inventor to define the word to which it refers.
`Edwards Lifesciences LLC v. Cook Inc., 582 F.3d 1322, 1334 (Fed. Cir.
`2009). The use of “i.e.,” alone, however, is not conclusive of an intent to
`define the term. The Specification must use the term “instant voice
`message” consistently as an audio file for the use of “i.e.” to be accorded
`such definitional status. See SkinMedica, Inc. v. Histogen Inc., 727 F.3d
`1187, 1202 (Fed. Cir. 2013) (explaining that “i.e.” is definitional when it
`“comports with the inventors’ other uses . . . in the specification and with
`each and every other reference”).
`Although we agree that there is repeated use of “i.e.” in the
`Specification to signal an equivalency of “instant voice message” with an
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`audio file, the Specification uses “instant voice message” inconsistently by
`describing non-audio-file uses of “instant voice message.” For instance, the
`Specification describes the “intercom mode” of instant voice messaging
`distinctly from the “record mode” (audio file embodiment). Ex. 1001,
`7:6165. “In the ‘intercom mode,’ instead of creating an audio file 210, one
`or more buffers (not shown) of a predetermined size are generated in the
`IVM client 26, 208 or local IVM server 202.” Id. at 11:3841 (emphasis
`added). This alternative to creating an audio file is further described as
`buffering successive portions of the instant voice message. Id. at 11:4143.
`Thus, the use of “i.e.” is not definitional since the “instant voice message”
`may take the form of successive portions of the digitized speech that are
`buffered, instead of an audio file. Therefore, although the Specification
`consistently relates “instant voice message” to content, is does not limit that
`content to any particular form or structure (audio file or portions of digitized
`speech).
`From the description of the three embodiments identified above, we
`conclude that the “instant voice message” is data content, and more
`specifically, is data content that includes a representation of an audio
`message. In all embodiments, the “instant voice message” refers, at a
`minimum, to the digitized speech, regardless of whether it is contained in an
`audio file, successive portions stored in a buffer, or a block of data in an
`object field. For this reason, we do not agree with Petitioner’s position,
`advanced in its Supplemental Brief, that the construction of “instant voice
`message” should be “a data structure including a representation of an
`audible message.” IPR2017-01428, Paper 37, 1 (“Pet. Supplemental Br.”)
`
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`(emphasis added); see also 1428 Tr. 62:175 (Patent Owner further arguing
`that the phrase “audio message” tracks more closely the intrinsic evidence
`than the phrase “audible message”). Although we agree that the audio file
`and buffered portions form a data structure (Pet. Supplemental Br. at 12),
`we are not persuaded that referring to the “instant voice message” as a data
`structure captures what it is; but rather, such construction would place undue
`focus on the instant voice message’s form. The Specification describes three
`different data structures that may constitute the “instant voice message,”
`signifying that its structure is not what defines the “instant voice message.”
`In contrast, the word “content” is more closely associated with how
`the Specification describes the “instant voice message.” For instance, as
`noted above with regard to the third embodiment (data carried by a message
`object), the “instant voice message” is “a block of data” that is also the
`content of the object field. Ex. 1001, 14:3942. Likewise, the Specification
`describes the “intercom mode” buffers as having “content” corresponding to
`successive portions of the “instant voice message,” which content is
`transmitted to an IVM server as the buffers are filled. See, e.g., id. at
`11:4351; 12:25 (describing writing audio of a predetermined size as the
`“content of the first buffer” and processing of the “audio contents of the
`buffers” before transmission); see also 1428 Tr. 55:2156:14 (Patent Owner
`explaining that the content is binary information contained within the file or
`within the buffered data of the intercom mode, where the binary information
`may include structural information such as headers). None of the data
`structures identified in the Specification (e.g., audio file, successive portions
`of buffered data, or a block of data in an object field) clarify the essence of
`
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`the “instant voice message,” but they merely highlight that the digitized
`audio could be stored and manipulated in a variety of ways for processing
`and transmission.
`Accordingly, we construe “instant voice message” as data content
`including a representation of an audio message. This determination,
`however, does not resolve all the disputes surrounding the term because
`Patent Owner also argues that attaching files to an “instant voice message”
`must be limited to attachments to the data content itself. PO Supplemental
`Br. 45 (“This reaffirms that the limitations at issue require an attachment to
`the data content, as opposed, for example, to a distinct and separately-
`generated data structure (like Zydney’s ‘voice container’) that is used only to
`transport the data content and that is subsequently discarded.”). Therefore,
`we analyze and construe below the claim’s requirement of “attaching” files
`to the “instant voice message.”
`
`2. Attaching One or More Files to the Instant Voice Message
`Claim 9 of the ’433 patent recites that the “instant voice message
`application attaches one or more files to the instant voice message.”
`Ex. 1001, 24:6667.3 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
`
`
`3 See also U.S. Patent No. 7,535,890, claim 9 (similarly reciting “the client is
`enabled to attach one or more files to the instant voice message”).
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`more files to the “instant voice message,” we note that related patents recite
`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 we face—whether to construe
`“attaching” or “attached” to both an “instant voice message” and an “audio
`file” to require attachment to the data content, notwithstanding the
`difference in claim terms.
`We start with the claim language. 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
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`associated one or more files. This passage describes the attachment of files
`to an instant voice message in the “record mode,” i.e., when the “instant
`voice message” is recorded in an audio file. Id. at 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.” In claim 9 of the ’433 patent, however,
`because the claim recites attaching to an “instant voice message,” we are not
`concerned with what form or structure the “instant voice message” would
`have, as the claim does not require an audio file.
`The discussion above brings us to the issue Patent Owner raises of
`whether attachment must be to the data content itself. PO Supplemental
`Br. 5. 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 data conten
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