Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 31
`Entered: January 31, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`V.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`Case IPR2017-01801
`Patent 8,995,433 B2
`
`Before JENNIFERS. BISK, MIRIAM L. QUINN,and
`CHARLES J. BOUDREAU,Administrative Patent Judges.
`
`QUINN,Administrative PatentJudge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. §318(a)
`
`
`Tel: 571-272-7822
`
`Paper 31
`Entered: January 31, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`V.
`
`UNILOC 2017 LLC,
`Patent Owner.
`
`Case IPR2017-01801
`Patent 8,995,433 B2
`
`Before JENNIFERS. BISK, MIRIAM L. QUINN,and
`CHARLES J. BOUDREAU,Administrative Patent Judges.
`
`QUINN,Administrative PatentJudge.
`
`FINAL WRITTEN DECISION
`35 U.S.C. §318(a)
`
`
`
`IPR2017-01801
`Patent 8,995,433 B2
`
`(
`
`I..
`
`INTRODUCTION
`
`Weinstituted this proceeding for interpartes review of claims 1-5,
`
`7-12, 14-17, 25, and 26 of U.S. Patent No. 8,995,433 B2 (Ex. 1001, “the
`
`’433 patent”), owned by Uniloc 2017 LLC (‘Patent Owner”), as requested
`by Samsung Electronics America,Inc. (“Petitioner”). We have jurisdiction
`under 35 U.S.C. § 6(c). This Final Written Decision 1s entered pursuantto
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73. For the reasonsdiscussed below,
`
`and in view ofthefull record, Petitioner has shown by a preponderance of
`
`the evidencethat claims 1-5, 7-12, 14-17, 25, and 26 of the ’433 patent are
`
`unpatentable.
`
`I.
`
`BACKGROUND
`
`A. Procedural History
`
`Petitionerfiled its Petition for interpartes review on July 20, 2017.
`
`Paper1 (“Pet.”). Upon consideration ofthe Petition and Patent Owner’s
`Preliminary Response(Paper 6), we issued, on February 6, 2018, a Decision
`on Institution. Paper 8 (“Dec.on Inst.”). We determined thatPetitioner had
`demonstrated a reasonablelikelihood of prevailing in its challenge ofall
`
`claims and all grounds. Jd. at26—27. Patent Ownerfiled a Patent Owner
`
`Response. Paper 12 (“PO Resp.”). Petitioner filed a Reply. Paper 16
`(“Reply”). Patent Ownerfurther filed a Motion to Exclude deposition
`testimony objected to as being outside the scope of permissible deposition
`topics. Paper 20 (“Motion”). Petitioner opposes the Motion. Paper 23
`(“Opp’n”).
`Before the scheduled hearingin this proceeding, we issued an Order
`giving the parties notice of claim constructionpositions of the term “instant
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`2
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`IPR2017-01801
`Patent 8,995,433 B2
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`voice message,” whichis a term recited in all claims of the ’433 patent.
`
`Paper 26. In that Order, we notified the parties that the panel expected to
`
`hearthe parties’ positions concerningthe alternative constructions under
`
`consideration in IPR2017-01427, IPR2017-01428, IPR2017-01667, and
`
`IPR2017-01668 (proceedings involving the ’433 patent and related patents
`
`also reciting the term “instant voice message”). Jd. We heard oral argument
`
`on October30, 2018, the transcript of which is entered in the record. Paper
`
`30 (“Tr.”).
`
`B. Related Matters
`
`Theparties indicate that the °433 patent is involved in multiple district
`
`court cases, including Uniloc USA,Inc. v. Samsung Electronics America,
`
`Inc., Case No. 2-16-cv-00641-JRG (E.D. Tex.). Pet. 1-5, Paper4, 2. The
`
`’433 patent also has been the subject of multiple interpartes review
`petitions, and wasthe subject of Case IPR2017-00225 (where Apple Inc.,
`Facebook,Inc., Snap Inc., and WhatsApp,Inc.constitute the Petitioner), in
`
`which weissued a Final Written Decision concluding that claims 1—6 and 8
`
`of the ’433 patent were not shownto be unpatentable. Final Written
`
`Decision, Case IPR2017-00225, Paper 29, 47 (May 23, 2018 PTAB). We
`
`have also issued Final Written Decisions concerning the °433 patent in
`
`IPR2017-01427 and IPR2017-01428, concluding that claims 1-12, 14-17,
`
`25, and 26 are unpatentable. Final Written Decision, Case IPR2017-01427,
`Paper 46 (Nov.30, 2018 PTAB)(consolidated with IPR2017-01428).'
`
`| At the time ofissuing this Final Written Decision, the appealfiled
`concerning the Final Written Decisions in IPR2017-00225, is unresolved.
`Furthermore,at the time ofissuing this Decision, it is unclear whether the
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`3
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`Ill.
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`THE’433 PATENT AND PRESENTED CHALLENGES
`
`C. The ’433 Patent
`
`The ’433 patent relates to Internet telephony, and moreparticularly, to
`
`instant voice over IP (“VoIP”) messaging over an IP network, suchas the
`
`Internet. Ex. 1001, 1:19-23. The ’433 patent acknowledges that“instant
`
`text messagingis [] known”in the VoIP and public switched telephone
`network (“PSTN’’) environments, with its server presenting the usera “list
`
`of persons whoare currently ‘online’ and ready to receive text messages on
`
`their own client terminals.” Jd. at 2:35—42. In one embodiment, such as
`
`depicted in Figure 2 (reproduced below), the system of the °433 patent
`involves an instant voice message (“IVM”) server and IVM clients. Jd. at
`
`7:21-22.
`
`Final Written Decisions in IPR2017-01427 and IPR2017-01428, also
`addressing the ’433 patent, will be appealed. Therefore, we do notapply
`collateral estoppel to the challenged claims ofthe ’433 patent. Cf
`MaxLineurInc. 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 patentaction renders the patent invalid in anylater actions
`based on the samepatent.”’) (citing Mycogen Plant Sci., Inc. v. Monsanto
`Co., 252 F.3d 1306, 1310 (Fed. Cir. 2001)).
`
`4
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`Patent 8,995,433 B2
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`216
`
`v IVM CLIENT
`
`(VoIP
`PHONE)
`
`FIG.2
`
`Figure2illustrates IVM client 206 interconnected via network 204 to
`local IVM server 202, whereIVM client 206is a VoIP telephone, and where
`legacy telephone 110 is connected to legacy switch 112 andfurther to media
`gateway 114. Id. at7:27-49. The media gateway converts the PSTN audio
`signal to packets for transmission over a packet-switched IP network,such
`as local network 204. Jd. at 7:49-53. In one embodiment, whenin “record
`
`mode,” the user of an IVM client selects one or more IVM recipients froma
`list.
`Id. at 8:2-5. The IVM clientlistensto the input audio device and
`recordsthe user’s speechinto a digitized audio file at the IVM client. Jd. at
`
`5
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`8:12-15. “Once the recording of the user’s speechis finalized, [VM client
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`208 generates a sendsignal indicating that the digitized audio file 210
`(instant voice message)is readyto be sent to the selected recipients.” Jd. at
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`8:19-22. TheIVM client transmits the digitized audiofile to the local IVM
`
`server, which,thereafter, delivers that transmitted instant voice message to
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`the selected recipients via the local IP network. Jd. at 8:25—26. Only the
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`available IVM recipients, currently connected to the [VM server,will
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`receive the instant voice message. Jd. at 8:36—38. Ifa recipient “is not
`
`currently connectedto the local IVM server 202,” the IVM server
`temporarily saves the instant voice message and delivers it to the [VM client
`whenthe IVM client connects to the local IVM server(i.e., is available). Jd.
`
`at 8:38-43.
`
`The ’433 patentalso describes an “intercom mode”of voice
`
`messaging. Id. at 11:34—37. The specificationstates that “[t]he ‘intercom
`mode’ representsreal-time instant voice messaging.” Jd. at 11:37-38. In
`this mode,“instead ofcreating an audiofile, one or more buffers of a
`predeterminedsize are generated in the IVM client(s] [] or local IVM
`servers.” Id. at 11:38-—41. Successive portions of the instant voice message
`
`are written to the one or more buffers, which asthey fill, automatically
`
`transmit their content to the [VM serverfor transmission to the one or more
`
`IVM recipients. Jd. at 11:41-46. Buffering is repeated until the entire
`
`instant voice message has been transmitted to the IVM server. Jd. at
`
`11:46-59.
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`D. Independent Claims
`
`Ofthe challenged claims, claims | and 9 are independent and are
`
`reproduced below. Each of claims 2-5, 7, 8, 10-12, 14-17, 25, and 26
`
`dependsdirectly or indirectly from claims | or 9.
`
`A system comprising:
`l.
`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 networkvia 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 apphcation includes
`a message databasestoring the instant voice message, wherem
`the instant voice message is represented by a database record
`including a uniqueidentifier; and
`wherein the instant voice messaging application includes
`a file manager system performingatleast one of storing, deleting
`and retrieving the instant voice messages from the message
`database in responseto a user request.
`9.
`A system comprising:
`an instant voice messaging application comprising:
`a client platform system for generating an instant voice
`message;
`a messaging system for transmitting the mstant voice
`message over a packet-switched network; and
`wherein the instant voice messaging application attaches
`one or morefiles to the instant voice message.
`
`Fx. 1001, 23:65-24:15, 24:60-67.
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`Patent 8,995,433 B2
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`E. Asserted Prior Art and Grounds of Unpatentability
`
`This proceedingrelies on the following priorart references:
`
`a) Griffin: U.S. Patent No. 8,150,922 B2, issued April 3, 2012,filed
`
`in the record as Exhibit 1005;
`
`b) Zydney: PCT App. Pub. No. WO 01/11824 A2, published Feb. 15,
`2001, filed in the record as Exhibit 1006;
`
`c) Clark: U.S. Patent No. US 6,725,228 B1, issued April 20, 2004,
`
`filed in the record as Exhibit 1007;
`
`d) Vddndnen:PCT App. Pub. No. WO 02/17650 A1, published
`February, 28, 2002,filed in the record as Exhibit 1008;
`
`e) Lee: U.S. Patent Application Pub. No. US 2002/0101848 Al,
`published on August, 1, 2002,filed in the record as Exhibit 1014;
`
`and
`
`a) Vuori:U.S. Patent Application Pub. No. US 2002/0146097 Al,
`published on October10, 2002,filed in the record as Exhibit 1015.
`
`This trial involves seven groundsof unpatentability based on
`35 U.S.C.§ 103(a) over Griffin and the other asserted priorart as follows.
`
`Pet. 6-7.
`
`Challenged
`Claim(s
`
`§ 103(a)
`
`§ 103(a)
`
`
`
`
`
`
`
`
`
`Griffin and Clark
`
`Griffin, Clark, and Zydney
`
`Griffin, Clark, and Vaananen
`
`.
`
`
`
`
`
`
`
`
`
`Cintmgys|Bass|References
`9, 11, 14-17, 25,
`
`and 26
`§ 103(a)
`Griffin and Zydney
`
`
`§ 103(a)
`
`Griffin, Zydney, and Vaananen
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`IPR2017-01801
`Patent 3,995,433 B2
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`
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`§ 103(a)
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`Griffin, Zydney, and Lee
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`§ 103(a)
`
`Griffin, Zydney and Vuori
`
`Petitioner supports its challenge of unpatentability with a Declaration
`of ZygmuntJ. Haas, Ph.D., filed as Exhibit 1002 (“Haas Decl.”). Patent
`Ownerrelies on a Declaration of William C. Easttom II (Exhibit 2001,
`“Easttom Decl.”). A transcript of the deposition of Mr. Easttom specifically
`addressing the 433 patentis filed in the record as Exhibit 1041.
`
`TV. ANALYSIS
`
`A. Claim Construction
`
`In an interpartes review,claim terms in an unexpired patentare given
`their broadest reasonable constructionin light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b) (2017); Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144-46 (2016) (upholding the use of
`the broadest reasonable interpretation standard as the claim interpretation
`standard to be applied in an interpartes review proceeding).* Under the
`
`2 A recent amendmenttothis rule doesnot apply here becausethePetition
`wasfiled before November 13, 2018. See Changes to the Claim
`Construction Standardfor Interpreting Claimsin Trial Proceedings Before
`the Patent Trialand Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11, 2018) (to
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`broadest reasonable interpretation standard, claim termsgenerally are given
`their ordinary and customary meaning,as would be understoodby 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 termsthat are in controversy needto 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.3d795, 803 (Fed. Cir.
`
`1999).
`
`In our Decision onInstitution we did not construe any terms. Dec. on
`Inst. 7. Duringtrial, Patent Owner attemptedto distinguish the prior art
`based onthe scopeof“instant” voice message. PO Resp. 9-12. According
`to Patent Owner,Petitioner applied the term “instant voice message”as
`requiring a transmissionin realtime, but not receiving the message in “real
`time” also. Id. at 9. Toresolvethis dispute, we construe the term “instant”
`of “instant voice message.” Wealso analyze the scopeof anotherclaim
`term thatis in dispute: claim 9’s “attaches oneor morefiles to the instant
`voice message.” See PO Resp. 24-31 (PO arguing that noneofthe asserted
`prior art teachesattachinga file to an audio file or the data message itself).
`
`1. Instant Voice Message
`Patent Owner argues that the prior art does not disclose an “instant
`voice message” because real-time communication requires the capability of
`receiving in real time. PO Resp. 9. Patent Owner challenges Petitioner’s
`assertion that a voice messageis “instant” becauseit is a voice message
`
`be codified at 37 C.F.R.pt. 42).
`
`10
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`Patent 8,995,433 B2
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`transmitted in real time to an available recipient. Jd. Petitioner arguesthat
`the Specification does not support Patent Owner’s contention because ofan
`embodiment in which the instant voice messageis stored at the central
`
`server for delivery when the recipient becomesavailable. Reply 6.
`Weagree with Patent Owner that merely transmitting the “instant
`voice message”in realtime is insufficient to define the “instant” feature of
`an “instant voice message.” The Backgroundofthe Invention purposely
`
`distinguishes a voice mail message from an “instant” text message.
`Ex. 1001, 2:23-47. Inthe voice mail message example, the Specification
`describes the drawbacksofdialing a telephone number, and after a few more
`steps, finally “recording the message for laterpickup bythe recipient.” Jd.
`at 2:27—33 (emphasis added). In contrast, for an “instant” text message,a
`serverpresents the user with “a list of persons whoare currently ‘online’ and
`ready to receive text messages on their own client terminals.” Jd. at 2:39-42
`(emphasis added). “The text message [will be] sent immediately via the text
`messaging serverto the selected one or more personsandis displayed on
`their respective client terminals.” Id. at 2:45—47. Thatis, with a voice mail
`message, a person onthe receiving end, who admittedly wasnot ready to
`engage in a direct voice conversation, must take an active step to retrieve the
`recorded message, regardless of when the message wasrecorded. In
`contrast, the “instant” text message is immediately transmitted to the
`recipient, whichis ready to receiveit, thus, ensuring a speedy arrival. Thus,
`the Specification distinguishes a voice mail message from the“instant” text
`messagein that, although both messages are recordedandtransmitted, only
`the “instant” text message, as the word“instant” implies, confers immediacy
`
`11
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`to its receipt by a ready recipient. The “instant”in the “instant voice
`
`message” imparts the same speedyreceipt.
`Our conclusionthat an “instant” voice message must involvethis
`
`immediate transmission and,likewise, speedy reception of the messageis
`not diminished by embodimentsthat store the message at the serverforlater
`delivery. See id. at 8:39-43 (“[I]f a recipient IVM clientis not currently
`connected to the local IVM server202 (i.e., is unavailable), the [VM server
`temporarily saves the instant voice message and delivers it to theVM client
`whenthe IVM client connectsto the local IVM server 202(i.e., is
`available).””). Neither the sender nor the recipients can have any expectation
`with regard to the timing of the message’s receipt whenthe recipients are not
`online, and thus, not available to receive the message. Indeed, this same
`
`embodimentcarries out the “instant” capability by delivering the message
`stored at the serverto the client, when the client connects to the server, thus,
`becomingavailable to receive it. Consequently, we determine that an
`“instant voice message”is onethatis transmitted in real time and received
`accordingly, when the recipientis available.
`
`2. Attaches One or MoreFiles to the Instant Voice Message
`Theparties also dispute what it meansto attachafile to the instant
`voice message. PO Resp. 24-31. In our Decision onInstitution, we noted
`that Patent Owner’s argumentsraised an issue of claim constructionthat
`needed further development. Dec. on Inst. 21-22. Duringtrial, Patent
`Ownerarguedthe distinction between the data content and a container
`including the data content (PO Resp. 27), and proposed as support that the
`claimed “instant voice message,”in “all the challenged claims is recorded in
`the audio file and is not an encapsulating transport package” (PO Resp.30).
`
`12
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`Patent Ownerimplies that claim 9’s recitation of “instant voice message”
`has an ordinary meaning, as those words would be normally usedin thefield
`of the invention at the time of the invention. Jd. at 31 (citing Alloc, Inc.v.
`
`U.S. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed. Cir. 2003)).
`
`Since our Decision on Institution, we have had occasionto revisit the
`
`claim language regarding the “attaching” issue. Ina set of related inter
`partes reviews, we expressly construed the terms “instant voice message”
`and “attaching”to resolvethe dispute of whether attaching one or morefiles
`to an instant voice message wasdifferent from attaching one or morefiles to
`an audio file. See Facebook, Inc. v. Uniloc 2017 LLC, Case IPR2017-
`01428,slip op. at 12-21 (PTAB November 30, 2018) (Paper 40). Part of
`that analysis is relevant here also, and where appropriateis included below.°
`Claim9recites “‘wherein the instant voice message application
`
`attaches one or morefiles to the instant voice message.” Ex. 1001,
`
`24:66-67. Also relevant to our analysis is the language of claim 14 of the
`’433 patent, which dependsfrom claim 9 andrecites “wherein the instant
`voice messaging application invokes a document handlerto create a link
`betweentheinstant voice message and the one or morefiles.” Jd. at
`
`25:14-17. Although these claimsofthe ’433 patent require attaching one or
`morefiles to the “instant voice message,”wenote that related patents recite
`
`3 We previously construed “instant voice message” as data content including
`a representation of an audio message. Facebook, Inc. v. Uniloc 2017 LLC,
`Case IPR2017-01428,slip op. at 12-18 (P-LAB November30, 2018) (Paper
`40). The actualdispute in this proceeding, however, concerns the scope of
`“attaching” one or morefiles to an instant voice message. Accordingly, we
`need not incorporate here ourprevious construction of “instant voice
`message”as “data content.”
`
`13
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`attaching one or morefiles to an “audio file” instead. Forinstance, 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 audiofile.” Similarly, in claim | of related U.S. Patent
`No. 8,199,747, generating an “instant voice message”includes“attaching
`one or morefiles to the audio file.” We include the above claim language in
`our discussion to highlight the challenge of achieving consistency in
`construing “attaching”or“attached”to both an “instant voice message” and
`an “audio file,” notwithstanding the difference in claim terms.
`As noted above,the claims of the ’433 patent require attachmentof
`
`one or morefiles to the instant voice message. From claim 14, we
`understandthat the “attachment” may be performedbycreating a link
`
`betweenthe instant voice message and the one or morefiles. The
`Specification also describes “attachment”by linking:
`The attachmentof one or.morefiles 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 morefiles and flags the
`messaging system 320 thatthe instant voice message also has
`the attached one or morefiles.
`
`Ex. 1001, 13:35—40. This passage also describesthat, in addition to making
`linkages, flags alert the messaging system in theclient device that the instant
`voice message hasan attachment. Thus,“attaching” creates an association
`between the oneor morefiles and the instant voice messageso that the
`system, once alerted, maytransmit the instant voice message with the
`associated one or morefiles. This passage describes the attachmentoffiles
`to an instant voice messagein the “record mode,”i.e., when the “instant
`
`14
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`voice message”is recordedin an audiofile. Jd. at 13-35 (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 howto attacha file to an “instant voice
`message”in either the “record mode”or“intercom mode.” It seems
`reasonable, therefore,that, inreciting attachmentto an “instant voice
`message,” when dealing with the audio file form of the message,the
`Specification supports that attachmentto an “audiofile” is synonymous with
`attachmentto an “instant voice message,” because thoseclaims would be
`
`referring to the “record mode.”
`Thediscussion abovebrings usto the issue Patent Ownerraisesof
`whether attachment must be to the data messageitself. PO Resp. 26
`(arguing that Zydneydoesnotattach one or morefiles to the data message
`itself). Patent Ownerseeksto construe the “attachmentto” phrase (and its
`variants) very narrowly,as in the sense of a physical appendageorthe
`joining togetherof items. For instance, Patent Owner argues that attaching
`to the message datais different than attachingto a structurethatis used to
`transport the message,i.e. voice container.
`/d. (arguing that Zydney,
`instead, attachesfiles to only the encapsulating package). Because the
`Specification describes“attaching” broadly, however, as making linkages
`and flagging, we are not persuadedthat the “attachment”language recited in
`certain claims of the ’433 patentis confined to attachmentto the message
`data (or audiofile) itselfas Patent Ownerargues. See id. (arguing that
`Grittin does notdisclose attachingafile to an audio file, and neither does
`
`Zydney).
`
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`Rather, the Specification discloses “attachment” to an instant voice
`messagebroadly,irrespective ofthe structure or contentof that instant voice
`message. TheSpecification’s linkage andflagging cause the system to
`handlethe oneor morefiles as attachments ofthe “instant voice message.”
`The tangible difference between an “instant voice message” with an
`attachmentand one without seemsto be in whether the documenthandler
`has sufficiently linked the attachment and whetherthe flags inform theclient
`system to associate the attachmentfor effective transmission to the server.
`Thus,as longasthe client has sufficient information that the “instant voice
`message” hasan attachment,the recited “attachment”is performed. The
`particular mannerof associating the one or morefiles with the instant voice
`messageis irrelevant, such as whetherlinks, flags, or otherlike information
`is used, as suchdetails are not recited expressly in the independentclaim.
`Based on ourreview ofthe claim language, the Specification, and the
`parties’ arguments on claim construction, we determine that Patent Owner
`has not shown that the Specification supports its narrow position that the
`recited attachmentto an “instant voice message”involvesa direct
`attachmentto only the content. Giving the term its plain and ordinary
`meaning in the context of the Specification, as explained above, we construe
`“attaches... to the instant voice message”(andits variants in related
`patents) to meanindicating that anotherfile (orfiles) 1s associated with the
`“instant voice message.”
`
`B. Legal Principles
`A claim is unpatentable for obviousness under 35 U.S.C.§ 103(a) if
`the differences between the claimed subject matter and the priorart are
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`
`“such that the subject matter, asa whole, would have been obviousat the
`time the invention was madeto a person having ordinary skill in the art to
`which said subject matter pertains.” KSR Int'l Co. v. Teleflex Inc., 550U.S.
`398, 406 (2007). The question ofobviousnessis resolvedon the basis of
`underlying factual determinations, including (1) the scope and content of the
`priorart; (2) any differences between the claimed subject matter and the
`prior art; (3) the levelof skill in the art; and (4) whenin evidence, objective
`indicia of non-obviousness(i.e., secondary considerations).* Grahamv.
`John Deere Co., 383 U.S. 1, 17-18 (1966). Additionally, the obviousness
`inquiry typically requires an analysis of “whetherthere was an apparent
`reason to combine the knownelementsin the fashion claimedby the patent
`at issue.” KSR,550U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed.
`Cir. 2016) (requiring “articulated reasoning with somerational underpinning
`to support the legal conclusion of obviousness”’)).
`To prevail on its challenges, Petitioner must demonstrate bya
`preponderanceofthe evidencethat the claims are unpatentable. 35 U.S.C.
`§ 316(e); 37 C.F.R. § 42.1(d). “Inan[interpartes review], the petitioner has
`the burden from the onset to show with particularity why the patentit
`challenges is unpatentable.” HarmonicInc. v. Avid Tech., Inc. 815 F.3d
`1356, 1363 (Fed. Cir. 2016)(citing 35 U.S.C. § 312(a)(3) (requiring inter
`partes review petitionsto identify “with particularity.. . the evidencethat
`supports the groundsfor the challenge to each claim’’)). This burden never
`shifts to Patent Owner. See Dynamic Drinkware, LLC.v. Nat'l Graphics,
`
`4 Theparties do not address secondary considerations, which therefore do
`not constitute part of our analysis.
`
`17
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`Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (citing Tech. Licensing Corp.v.
`Videotek, Inc.,545 F.3d 1316, 1326-27 (Fed. Cir. 2008)) (discussing the
`burdenofproofin interpartes review). Furthermore,Petitioner doesnot
`satisfy its burden of proving obviousness by employing “mere conclusory
`statements,” but “must instead articulate specific reasoning, based on
`evidenceof record, to support the legal conclusion of obviousness.” /n re
`Magnum OilTools Int'l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`
`C. Level ofOrdinary Skillin the Art
`
`Citing Dr. Haas’s testimony,Petitioner proposesa level of ordinary
`skill in the art as follows: bachelor’s degree in computer science, computer
`engineering, electrical engineering, or the equivalent andatleast two years
`of experiencein the relevantfield, e.g., network communication systems.
`Pet. 9 (citing Haas Decl. J] 15-16). Petitioner furtherstates that more
`education can substitute for practical experience and vice versa. Jd. 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 and2 years of experience with network communication
`technology, or 4 years of experience withouta baccalaureate degree. PO
`Resp. 6—7 (citing Easttom Decl. { 16).
`Theprincipal difference between the parties’ proposed qualifications
`is that, as an alternative to an undergraduate degree and twoyears of
`relevant work experience, Patent Owner’s proposalallows for a specific
`numberofyearsof experience as a substitute for an undergraduate degree,
`while Petitioner’s proposalis vague in this regard. Based on our review of
`the ’433 patent andtheprior art of record, wefind that Patent Owner’s
`
`18
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`IPR2017-01801
`Patent 8,995,433 B2
`
`proposalis more preciseasit takes into accounta level of experience of four
`years with network communication technology without the undergraduate
`degree. We, therefore, adopt Patent Owner’s expressionofthe level ofskill
`in the art, which encompassesbothalternative sets of qualifications.
`
`D. Overview ofAsserted Prior Art
`
`Wediscuss more fully certain disclosures in the asserted references in
`our analysis below. A discussion of those referencesfollows.
`
`1. Griffin
`Griffin, titled “Voice and Text Group Chat Display Management
`Techniques for Wireless Mobile Terminals,”relates to a techniqueof
`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 shownin Figure 1, reproduced below.
`
`
`
`FIG. 1
`
`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 elementsvisible), navigation rocker 105 (which
`
`19
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`IPR2017-01801
`Patent 8,995,433 B2
`
`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
`allowsthe userto 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.
`Jd.at
`
`3:49-51.
`
`Mobile
`Terminal 4
`
`Mobile
`
`Terminal2
`
`| Mobile
`. Terminal 3
`
`100
`
`100
`
`100
`
`160
`
`
`
`
`202
`
`203
`
`Cit
`
`202
`
`
` Server
`Complex
`
`
`
`
`
`
`
`Mobile
`} Terminal 4
`
`FIG. 2
`
`Figure 2, above,illustrates wireless carrier infrastructures 202, which
`support wireless communications with mobile terminals 100, suchthat the
`mobile terminals wirelessly transmit data to a correspondinginfrastructure
`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-basednetwork,
`[which] may comprise a public network such as the Internet or World Wide
`
`20
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`Patent 8,995,433 B2
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`Web,a private network such as a corporate intranet, or some combination of
`public andprivate network elements.” Jd. at 3:61-65.
`Griffin’s chat server complex 204 receives encoded data comprising
`text, speech, and/or graphical messages (or some combination thereof),
`whenaplurality of users chat together (i.e., send chat messages from one
`terminal 100 to another). Id. at4:11—15, 4:62—65. An outbound chat
`message, for example, is decomposedto locatethelist ofrecipients, and the
`recipient’s current status is determined. Jd. at 5:9-15. Griffin describes
`presencestatus 702 as “an indicator of whetherthe recipient is ready to
`receive the particular type of message, speech and/ortext messagesonly,
`etc.).” Id. “When presencestatus 702 changes, the presence manager 302
`[of server complex 204] sendsa buddylist update message 600 to all the
`subscriberslisted in the subscriberidentifier field 706 of the corresponding
`
`presence record 700.” Jd. at 5:27-30.
`Griffin provides a buddylist display illustrated in Figure 9,
`reproduced below. Jd. at 8:15—16.
`
`21
`
`
`
`a 3 o x
`
`“<3
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`IPR2017-01801
`Patent 8,995,433 B2
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`904
`
`906
`
`903
`
`G * 3 o
`
`
`
`902
`
`909
`
`Figure 9, above,depicts title bar 901, where inbound chat message
`indicator 905 is an icon accompaniedby an audible sound whenthe iconis
`first displayed, indicating to the userthatthereis at least one unheard or
`unread inbound chat messagethat has arrived at terminal 100. Jd. at
`8:17-18, 8:28-32. Left softkey 910,labeled “Select,” permits selection of a
`particular buddyfor chatting, which selection is indicated with selection
`indicator 906. Id. at 8:45—-52, 8:60—67, 9:1—-5. “Ifthe user pushes-to-talk,
`the display switchesto the chat history, and the useris able to record and
`transmit a speech message and consequently start a new threadwith the
`
`selected buddies.” Jd. 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 andvoice distribution betweenusers of computer networks.
`
`22
`
`901
`— 905
`
`
`nickname
`
`
`
`nickname 3 (sn3)
`hickname 4 (sn4)
`nickname 5 (sn5)
`
`nickname6 (sn6)
`
`nickname 7 (sn7)
`nickname 8 (sn8)
`
`
`
`h
`
`
`yo
`
`nickname 9 (sn9)
`vorteriattcaa Om CURLS)
`r
`908
`
`
` nickname 11 (sn11)
`nickname 12 (sn12)
`
`
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`IPR2017-01801
`Patent 8,995,433 B2
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`Ex. 1006,[54], [57], 1:4-5. While acknowledgingthat e-mail and instant
`messaging systems were well-knowntext-based communication systems
`utilized by users of on-line services andthatit was possible to attachfiles for
`the transfer ofnon-text formats via those systems, Zydneystates that the
`latter technique “lack{ed] a method for convenient recording, storing,
`exchanging, responding andlistening to voices between one or moreparties,
`independentof whetheror not they are logged in to their
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