Trials@uspto.gov
`571.272.7822
`
` Paper No. 9
` Filed: May 25, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,1
`Patent Owner.
`____________
`
`Case IPR2017-00220
`Patent 7,535,890 B2
`____________
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BEGLEY, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`1 Patent Owner’s Mandatory Notice, filed pursuant to 37 C.F.R. § 42.8, and
`Preliminary Response identify Uniloc USA, Inc. and Uniloc Luxembourg
`S.A. as patent owners. Paper 4; Paper 6 (“Prelim. Resp.”) at caption.
`Therefore, we adjust the case caption to include Uniloc USA, Inc.
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`IPR2017-00220
`Patent 7,535,890 B2
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`
`Apple Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of claims 1–6, 14, 15, 17–20, 28, 29, 31–34, 40–43, 51–54, 62–65,
`and 68 (“challenged claims”) of U.S. Patent No. 7,535,890 B2 (Ex. 1001,
`“the ’890 patent”). Paper 2 (“Pet.”). Uniloc USA, Inc. and Uniloc
`Luxembourg S.A. (collectively, “Patent Owner”) filed a Preliminary
`Response. Prelim. Resp.
`Pursuant to 35 U.S.C. § 314(a), an inter partes review may not be
`instituted unless “the information presented in the petition . . . and any
`response . . . shows that there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” Having considered the Petition and the Preliminary Response, we
`determine that the information presented does not show that there is a
`reasonable likelihood that Petitioner would prevail in establishing the
`unpatentability of any of the challenged claims of the ’890 patent.
`Accordingly, we deny institution of an inter partes review.
`I. BACKGROUND
`A. RELATED MATTERS
`Petitioner represents that the ’890 patent is the subject of numerous
`
`ongoing actions before the U.S. District Court for the Eastern District of
`Texas, including an action filed against Petitioner (Case No. 2-16-cv-
`00638). Pet. 72–74; see Paper 4, 2. Before the Office, the ’890 patent also
`is the subject of IPR2017-00221, which Petitioner filed concurrently with
`the instant proceeding. See Pet. 2–3; Prelim. Resp. 1 & n.1.
`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
`
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`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
`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.
`
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`at 7:13–14, 7:51–55. Local IVM server 202 enables instant voice messaging
`functionality over network 204. Id. at 7:53–55.
`
`In “record mode,” IVM client 208, exemplified as a VoIP softphone
`in Figure 2, “displays a list of one or more IVM recipients,” provided and
`stored by local IVM server 202, and the user selects recipients from the list.
`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. ILLUSTRATIVE CLAIM
`Of the challenged claims, claims 1, 14, 28, 40, 51, and 62 of the
`’890 patent are independent. Claim 1, reproduced below, is illustrative of
`the recited subject matter:
`1. An instant voice messaging system for delivering instant
`messages over a packet-switched network, the system comprising:
`a client connected to the network, the client selecting one or
`more recipients, generating an instant voice message
`therefor, and transmitting the selected recipients and the
`instant voice message therefor over the network; and
`a server connected to the network, the server receiving the
`selected recipients and the instant voice message therefor,
`and delivering the instant voice message to the selected
`recipients over the network, the selected recipients enabled
`to audibly play the instant voice message, and the server
`temporarily storing the instant voice message if a selected
`recipient is unavailable and delivering the stored instant
`voice message to the selected recipient once the selected
`recipient becomes available.
`Id. at 23:55–24:3.
`
`D. EVIDENCE OF RECORD
`The Petition relies upon the following asserted prior art references:
`U.S. Patent Application Publication No. 2002/0146097 A1 (published
`Oct. 10, 2002) (Ex. 1005, “Vuori”);
`
`International Application Publication No. WO 02/17658 A1 (published
`Feb. 28, 2002) (Ex. 1008, “Väänänen”);
`
`U.S. Patent Application Publication No. 2003/0046273 A1 (published
`Mar. 6, 2003) (Ex. 1009, “Deshpande”);
`
`U.S. Patent Application Publication No. 2004/0068545 A1 (filed Dec. 19,
`2002) (published Apr. 8, 2004) (Ex. 1010, “Daniell”); and
`
`U.S. Patent Application Publication No. 2003/0147512 A1 (published
`Aug. 7, 2003) (Ex. 1015, “Abburi”).
`
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`In addition, Petitioner supports its contentions with the Declaration of
`Leonard J. Forys, Ph.D. (Ex. 1003).
`E. ASSERTED GROUNDS OF UNPATENTABILITY
`Petitioner asserts the following grounds of unpatentability under
`35 U.S.C. § 103.2 Pet. 2–3.
`Challenged Claim(s)
`1–3, 5, 14, 15, 17, 19, 28, 29,
`31, 33, 40, 42, 51, 53, 62, 64
`4, 18, 32, 41, 52, 63
`
`References
`Basis
`§ 103 Vuori and Väänänen
`
`6, 20, 34, 43, 54, 65
`68
`
`§ 103 Vuori, Väänänen, and
`Deshpande
`§ 103 Vuori, Väänänen, and Abburi
`§ 103 Vuori, Väänänen, Abburi,
`and Daniell
`
`II. ANALYSIS
`A. LEVEL OF ORDINARY SKILL
`Petitioner argues and Dr. Forys opines that a person of ordinary skill
`in the art would have had “the equivalent of a Bachelor degree in Electrical
`Engineering, Computer Science, or an equivalent field as well as at least 3−5
`years of academic or industry experience in communications systems,”
`particularly messaging systems and data networks, including VoIP and
`mobile telephony, “or comparable industry experience.” Pet. 9; Ex. 1003
`¶ 30. Patent Owner does not respond to Petitioner’s proffered level of
`ordinary skill in the art or offer a proposal of its own.
`Based on Dr. Forys’s testimony as well as our review of the
`’890 patent and the asserted prior art, including the problems and solutions
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29,
`(2011), revised 35 U.S.C. § 103, effective March 16, 2013. Because the
`application resulting in the ’890 patent was filed before the effective date of
`the relevant section of the AIA, we refer to the pre-AIA version of § 103.
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`described therein, we are persuaded, on this record, that Petitioner’s proposal
`is consistent with the level of ordinary skill reflected by the prior art of
`record. See In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995). For
`purposes of this decision, we adopt Petitioner’s proposed level of skill.
`B. CLAIM CONSTRUCTION
`The Board interprets claim terms of an unexpired patent using the
`“broadest reasonable construction in light of the specification of the patent.”
`37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2144–46 (2016). Under this standard, we presume a claim term carries its
`“ordinary and customary meaning,” which is the meaning the term would
`have to a person of ordinary skill in the art at the time of the invention. In re
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`Petitioner proposes a construction of “external network,” as recited in
`challenged claims 14, 17, 28, 31, 51, and 62 of the ’890 patent. Pet. 9–12.
`Patent Owner responds that no construction of this claim term is necessary.
`Prelim. Resp. 18–19. Patent Owner does not proffer any terms for
`construction. Based on our review of the record before us and the
`dispositive issues in our determination of whether to institute inter partes
`review, we determine that no claim terms require an express construction to
`resolve the issues presented by the patentability challenges. See Vivid
`Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
`(holding that only claim terms that “are in controversy” need to be construed
`and “only to the extent necessary to resolve the controversy”).
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`
`C. ALLEGED OBVIOUSNESS OVER VUORI AND VÄÄNÄNEN
`Petitioner argues Vuori and Väänänen render obvious claims 1–3, 5,
`14, 15, 17, 19, 28, 29, 31, 33, 40, 42, 51, 53, 62, and 64. Pet. 20–61. Patent
`Owner disputes Petitioner’s obviousness assertions. Prelim. Resp. 22–35.
`1. Overview of Vuori
`Vuori discloses a method for sending voice-type short messages using
`a short voice message (“SVM”) service. Ex. 1005, [57], ¶ 31. In Vuori,
`short voice messages “are sent as [Short Message Service (“SMS”)]
`messages, SMS-like messages, or as instant messages.” Id. ¶ 31.
`In one embodiment, a user initiates a short voice message by pressing
`a menu key on a user equipment, which prepares to receive the message and
`may emit a sound to alert the user to commence speaking. Id. ¶ 32, Figs. 1–
`2. The user equipment then receives and stores the short voice message. Id.
`Next, the user “select[s] one or more intended recipients” and initiates the
`transfer. Id. ¶ 33. The short voice message is then sent to an SVM service
`center (“SVMSC”), which “check[s]” and “determines the availability of the
`one or more intended recipients.” Id. ¶¶ 34, 50; see id. ¶ 37. The SVMSC
`sends the short voice message “immediately to the intended recipients who
`are available.” Id. ¶ 34; see id. ¶ 50. For recipients who are not available,
`however, the SVMSC “temporarily stor[es]” the message and “continue[s]
`attempting to send [the message] . . . until the[ recipients] become available
`or until a time out occurs.” Id. ¶¶ 34, 50. Upon delivery of the short voice
`message, the recipient may play back the message. Id. ¶ 35, Figs. 1–2.
`Vuori discloses an embodiment of its short voice message service
`method using an open instant messaging architecture proposed by AOL. See
`id. ¶¶ 40–41. Figure 6, depicting this embodiment, is reproduced below. Id.
`
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`As shown in Figure 6, the instant messaging architecture proposed by AOL
`is included in public instant messaging (“IM”) cloud 162 within data
`network 160, such as the Internet. Id. ¶ 41; see id. ¶¶ 39–40. According to
`the AOL proposal, “companies, IM services, or [Internet service providers
`(ISPs)] can run their own IM system by either being right in the cloud or
`connecting to the cloud through an IM aggregator.” Id. ¶ 41. IM systems
`within IM cloud 162 communicate with one another using an open IMX
`protocol, depicted in Figure 6 by open IMX protocol lines 164, and
`communicate outside the cloud using “proprietary or vendor-specific client
`protocols 180, 182, 184, 186, 188.” Id.
`Consistent with the AOL proposal, IM aggregator 190, as illustrated
`in Figure 6, is connected to ISP IM server 192 via line 188, and to corporate
`IM server 198 via line 186. Id. ISP IM server 192 “can provide instant
`message services to IM clients 194, 196 which can be independent of each
`other.” Id. Corporate IM server 198, in turn, “provide[s] IM services to its
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`own clients 200, 202, 204, within and without the enterprise.” Id. In
`addition, according to Vuori’s disclosed invention, “short voice messages
`can be provided from, to, or between the clients 194, 196, 200, 202, 204 via
`the data network 160[,] which may include the IM cloud 162.” Id. ¶ 42.
`Moreover, the network architecture depicted in Figure 6 includes a
`Global System for Mobile communications (“GSM”) network, featuring
`gateway 58, SVMSC 50, and mobile station 64. Id. ¶¶ 5, 37–38, Figs. 3, 6.
`The architecture further includes General Packet Radio Service (“GPRS”)
`infrastructure 90 with user equipment 96 as well as Universal Mobile
`Telecommunications System (“UMTS”) infrastructure 120 with user
`equipment 124. Id. ¶¶ 39–41, Figs. 4–5. IM systems 206, 208, 210 in IM
`cloud 162 “interconnect[]” wireless user equipment 96, 124 and mobile
`station 64 to IM cloud 162 to “interchang[e] short voice messages” between
`wireless and land-based systems. Id.
`2. Overview of Väänänen
`Väänänen discloses a “server centric method” for instant voicemail
`
`messaging. Ex. 1008, [57], 1:13–16. In one disclosed method of sending
`voice messages, the user first chooses one or several message recipients at
`the subscriber terminal (phase 110). Id. at 6:5–11, Fig. 1. Then, the
`subscriber terminal may establish a packet-switched connection to the
`server, which may be implemented using, for example, LAN, TCP/IP, or
`GPRS (phase 120). Id. at 6:17–23. Next, the recipient contact information,
`such as IP address, is transferred to the server (phase 130). Id. at 6:25–32;
`see id. at 2:31–32. The voice message is then recorded and written to a data
`file (phase 140). Id. at 7:10–13; see id. at 3:3–5. After the message is
`completed (phase 150), the server relays the message to the recipient(s)
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`(phase 160) and the recipient(s) receive the message (phase 170). Id.
`at 7:16–26, 8:9–10. “If the recipient is unavailable, the message may be
`stored on the server for some time, and attempts to deliver the message may
`be taken at timely intervals.” Id. at 8:17–18.
`
`Väänänen also discloses a “more scalable messaging method,” which
`utilizes a Store and Forward Server Network (“SFSN”). Id. at 5:17–18, 9:1–
`10, Fig. 2. “The SFSN is typically a network of servers linked together
`through the Internet . . . or some other communications or signal[]ing
`network.” Id. at 9:14–18. The communications connections within the
`SFSN as well as between the terminals and the servers are typically
`compliant with, for example, GPRS, LAN, or TCP/IP. Id. at 16:19–23.
`“[T]he servers in the SFSN typically deliver a copy of the message to a
`server near a recipient, and this server attempts to relay the message to
`the . . . recipient” over, for example, a packet-switched connection
`(phase 270). Id. at 9:20–25. Undelivered messages are stored on the SFSN
`(phase 280) and resent (phase 290). Id. at 9:25–29, Fig. 2.
`3. Discussion
`a. Legal Standards
`A patent claim is unpatentable as obvious under 35 U.S.C. § 103(a) if
`“the differences between” the claimed subject matter “and the prior art are
`such that the subject matter as a whole would have been obvious at the time
`the invention was made to a person having ordinary skill in the art to which
`said subject matter pertains.” 35 U.S.C. § 103(a). An invention “composed
`of several elements is not proved obvious merely by demonstrating that each
`of its elements was, independently, known in the prior art.” KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 418 (2007).
`
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`
`Rather, to establish obviousness in an inter partes review, it is
`petitioner’s “burden to demonstrate both that a skilled artisan would have
`been motivated to combine the teachings of the prior art references to
`achieve the claimed invention, and that the skilled artisan would have had a
`reasonable expectation of success in doing so.” In re Magnum Oil Tools
`Int’l, Ltd., 829 F.3d 1364, 1381 (Fed. Cir. 2016) (internal citation and
`quotation omitted); see KSR, 550 U.S. at 418. Moreover, a petitioner cannot
`satisfy this burden by “employ[ing] mere conclusory statements” and “must
`instead articulate specific reasoning, based on evidence of record” to support
`an obviousness determination. Magnum Oil, 829 F.3d at 1380. Stated
`differently, there must be “articulated reasoning with some rational
`underpinning to support the legal conclusion of obviousness.” KSR, 550
`U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
`The “factual inquiry” into the reasons for “combin[ing] references
`must be thorough and searching, and the need for specificity pervades . . . .”
`In re Nuvasive, Inc., 842 F.3d 1376, 1381–82 (Fed. Cir. 2016) (internal
`quotations and citations omitted). A determination of obviousness cannot be
`reached where the record lacks “explanation as to how or why the references
`would be combined to produce the claimed invention.” TriVascular, Inc. v.
`Samuels, 812 F.3d 1056, 1066 (Fed. Cir. 2016); see Personal Web Techs.,
`LLC v. Apple, Inc., 848 F.3d 987, 994 (Fed. Cir. 2017) (holding an
`obviousness determination improper where there was a lack of explanation
`and cited evidence to show “how the combination of the two references”
`would work, i.e., a “clear, evidence-supported account of the contemplated
`workings of the combination”) (emphasis added); Nuvasive, 842 F.3d
`at 1382–85 (holding that an obviousness determination cannot be reached
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`where there is no “articulat[ion of] a reason why a [person having ordinary
`skill in the art] would combine” and modify the prior art references).
`b. Independent Claims 1, 14, 28, 40, 51, and 62
`Challenged independent claims 1, 14, 28, 40, 51, and 62 of the
`
`’890 patent each recite a “server” with several requirements. In particular,
`claim 1 recites a “server” that is “connected to” “a packet-switched
`network,” “receiv[es] the selected recipients and the instant voice message
`therefor,” “deliver[s] the instant voice message to the selected recipients
`over the network,” “temporarily stor[es] the instant voice message if a
`selected recipient is unavailable and deliver[s] the stored instant voice
`message to the selected recipient once the selected recipient becomes
`available.” Ex. 1001, 23:55–24:3. The method recited in claim 40 likewise
`includes a “server” with requirements nearly identical to claim 1 other than
`omitting claim 1’s requirement that the “server” be “connected to the
`network.” Id. at 23:62, 28:21–40. In addition, claims 14 and 51 recite a
`“server” with substantially similar requirements to claim 1, but both claims
`specify that the network to which the server is connected and over which it
`delivers messages is an “external network,” and claim 51 specifies that the
`server is an “external server.” Id. at 25:21–40, 30:8–30. Moreover,
`claims 28 and 62 each recite a “local server” with requirements substantially
`similar to claim 1 except that the local server must be connected to and
`deliver messages over a “local network.” Id. at 27:6–38, 32:6–31.
`According to Petitioner, Vuori discloses that its SVMSC 50 performs
`several of the functions that independent claims 1, 14, 28, 40, 51, and 62
`require of the recited “server,” “local server,” and “external server.” Pet. 23,
`30–32, 35–36. Specifically, Petitioner and Dr. Forys represent: “Vuori
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`describes the server functionalities (e.g., checking recipient availability,
`temporarily storing SVMs, delivering SVMs to recipients) with respect to a
`. . . SVMSC.” Id. at 32 (citing Ex. 1005 ¶¶ 50–51); Ex. 1003 ¶ 138 (citing
`Ex. 1005 ¶¶ 50–51); see Pet. 23; Ex. 1003 ¶ 116. In addition, for the
`limitations of claim 1, and corresponding limitations of claims 14, 28, 40,
`51, and 62, requiring that the “server” “receiv[es] the selected recipients and
`the instant voice message therefor” and “temporarily stor[es] the instant
`voice message if a selected recipient is unavailable and deliver[s] the stored
`instant voice message to the selected recipient once the selected recipient
`becomes available,” the disclosures of Vuori to which Petitioner cites relate
`specifically to SVMSC 50. E.g., Pet. 30–32 (limitation 1.2b) (referring to
`Vuori’s SVMSC and citing Ex. 1005 ¶¶ 13, 50); id. at 35–37 (limitation
`1.2e) (referring to Vuori’s SVMSC and citing Ex. 1005 ¶¶ 8, 34, 50–51).
`
`However, in Vuori and specifically in the architecture of Figure 6—on
`which Petitioner’s unpatentability arguments for the “server” limitations
`rely—there is only one SVMSC 50. Ex. 1005, Fig. 6; see id. at Figs. 3, 11,
`12; Pet. 30–35, 42, 49. Petitioner concedes this point, stating, “F[igure] 6 of
`Vuori only labels one IM server as a SVMSC. (FIG. 6, block 50.) Vuori
`does not explicitly disclose or label other IM servers (such as IM
`system 208) as,” or “to function as[,] additional SVMSCs.” Pet. 23–24, 32–
`33; Ex. 1003 ¶¶ 116, 138; see Pet. at 24–25, 34 (“architecture of F[igure] 6
`in Vuori, with one SVMSC 50”); Prelim. Resp. 31–32. Petitioner does not
`argue or demonstrate sufficiently that this SVMSC 50 satisfies all of the
`requirements of the “server” of claims 1, 14, and 40, “external server” of
`claim 51, and “local server” of claims 28 and 62, including, for example,
`being connected to and delivering an instant voice message over a
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`packet-switched network, local network, or external network.3 Instead,
`Petitioner’s unpatentability arguments rely on Vuori’s IM system 208 as the
`“server” of claims 1, 14, and 40 and the “external server” of claim 51;
`corporate IM server 198 as the “local server” of claims 28 and 62 and as an
`alternative for the “server” of claims 1 and 40; and ISP IM server 1924 as
`another alternative for the “server” of claims 1 and 40. Pet. 23–25, 31–36,
`38–39, 42–44, 49, 52–53, 55–60. Petitioner’s arguments can be divided into
`two categories.
`
`
`3 E.g., Pet. 23–25, 31–35 (limitation 1.2c) (arguing that Vuori’s IM system
`208, modified to “function as another SVMSC,” satisfies “the server . . .
`delivering the instant voice message” limitation); id. at 32 n.12, 38–39
`(limitation 1.2c, claim 2) (arguing that Vuori’s corporate IM server 198,
`altered to “function as a SVMSC,” meets the recited “server”); id. at 39
`(claim 3) (referring to Vuori’s system 208 and ISP IM server 192); id. at 42–
`44 (annotated Figure 6 of Vuori for claim 14 and analysis of limitations
`14.2a, 14.2c) (relying on IM System 208, modified to “function as a
`SVMSC,” as the alleged “server”); id. at 49, 52–53 (annotated Figure 6 of
`Vuori for claim 28 and analysis of limitations 28.3a–c) (arguing that
`corporate IM server 198, “function[ing] as a SVMSC,” meets the recited
`“local server”); id. at 55–60 (asserting claims 40, 51, and 62 would have
`been obvious for the “same reasons” as claims 1, 14, and 28, respectively).
`4 The Petition refers to Vuori’s ISP IM server 192 only once in its analysis
`of independent claims 1 and 40, yet appears to rely on this server as an
`alternative for satisfying the “server” of claim 3, which depends from
`claim 1. Pet. 30, 39, 55–56. Because the Petition does not address ISP IM
`server 192 in its analysis of several requirements for the “server” of claims 1
`and 40, Petitioner has not alleged adequately that server 192 constitutes the
`“server” of claims 1 and 40, as well as their challenged dependent claims.
`Thus, we deny Petitioner’s assertions regarding ISP IM server 192 as the
`“server” of these claims for non-compliance with the requirements of
`37 C.F.R. §§ 42.22(a)(2) and 42.104(b)(4)–(5). Nonetheless, in our analysis,
`we also discuss the merits of Petitioner’s assertions as to ISP IM server 192.
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`First, Petitioner proffers arguments that Vuori’s disclosures would
`
`have conveyed to a person of ordinary skill in the art that IM system 208 and
`corporate IM server 198 already function as SVMSCs and perform the
`functions that Vuori discloses SVMSC 50 performs, including delivering
`SVMs to available recipients and temporarily storing SVMs for unavailable
`recipients—as the challenged independent claims require of their respective
`“server.” Specifically, Petitioner asserts that “to the extent [Patent Owner]
`may argue that Vuori does not explicitly state that IM system 208 is a
`SVMSC,” a person of ordinary skill would have understood that IM
`system 208 “would” and “could” “function as a SVMSC (e.g., checking
`recipient availability, delivering SVMs)” because Vuori discloses that “IM
`system 208 provides functionalities ‘for the purpose of interconnecting
`various wireless user equipments 96, 124’ and ‘for purposes of
`interchanging short voice messages between wireless systems.’” Id. at 24,
`33 (quoting Ex. 1005 ¶ 42, citing Ex. 1003 ¶¶ 117, 139) (emphases omitted).
`As support, Dr. Forys opines that a person of ordinary skill would have
`understood that IM system 208 “could function as a SVMSC” and that IM
`system 208 “provides short voice message services (e.g., detecting recipient
`availability, delivering the messages) to clients.” Ex. 1003 ¶¶ 117, 138 n.6,
`139 (citing Ex. 1005 ¶ 42).
`Similarly, as to corporate IM server 198, Petitioner contends and
`Dr. Forys testifies that although Patent Owner may argue that Vuori “does
`not explicitly state that Corporate IM Server 198 functions as a SVMSC
`(i.e., storing-or-forwarding message based on recipient availability, etc.),”
`corporate IM server 198 “could be an IM server functioning as another
`SVMSC because Vuori discloses that Corporate IM Server 198 provides
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`SVM,” or “short voice message,” “services for its IM clients.” Pet. 38
`(citing Ex. 1005 ¶¶ 41–42, Ex. 1003 ¶ 153) (emphasis omitted); Ex. 1003
`¶ 153; see Pet. 32 n.12. Petitioner also more directly argues that “Corporate
`IM Server 198 functions as a SVMSC (e.g., check recipient availability,
`store or deliver SVMs based on recipient availability).” Pet. 52 (citing
`Ex. 1003 ¶ 196, Petition’s analysis of claim 2).
`
`We disagree with Petitioner’s arguments that Vuori’s disclosures
`would have conveyed to a person of ordinary skill that IM system 208 and
`corporate IM server 198 function as SVMSCs. To start, as Patent Owner
`points out, these arguments contradict Petitioner’s own concessions, noted
`above, that Vuori only “labels one” SVMSC and does not “explicitly
`disclose or label” any other IM servers as SVMSCs. Id. at 23–25, 32–34;
`Ex. 1003 ¶¶ 116, 138; see Prelim. Resp. 31–32. Vuori’s disclosures are
`consistent with and support Petitioner’s concessions in this regard, as
`SVMSC 50 is the only SVMSC that Vuori includes in the architecture of
`Figure 6, all other figures of Vuori that feature a SVMSC depict a single
`SVMSC, and Vuori does not refer to either IM system 208 or corporate IM
`server 198 as a SVMSC. See Ex. 1005 ¶¶ 41–42, Figs. 3, 6, 11, 12; see also
`id. at Figs. 4, 5 (depicting SVM service 110 or 146). We agree with Patent
`Owner that nothing in Vuori suggests that the disclosed features of
`SVMSC 50 “can be imputed to other components that Vuori distinctly
`names and separately describes,” such as IM system 208 and corporate IM
`server 192, or that these components “are somehow interchangeable.”
`Prelim. Resp. 31–32 & n.16.
`Specifically with respect to IM system 208, the relevant passage of
`cited paragraph 42 of Vuori states:
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`other IM systems 206, 208, 210 can be provided for the purpose
`of interconnecting various wireless user equipments 96, 124
`and other mobile stations such as the mobile station 72 to the
`IM cloud 162 for purposes of interchanging short voice
`messages between wireless systems or between various systems
`including SVM exchanges between wireless and land based
`systems.
`Ex. 1005 ¶ 42. We are not persuaded that such general language explaining
`that IM system 208’s purpose is to “interconnect[]” clients to IM cloud 162
`to allow for the “interchang[e]” of short voice messages between wireless
`and land-based systems would have conveyed to one of ordinary skill that
`IM system 208 functions as a SVMSC or performs the specific functionality
`SVMSC 50 is disclosed to perform, including delivering short voice
`messages to available recipients and temporarily storing short voice
`messages for unavailable recipients. Id. ¶¶ 34–35, 42, 50–51. Indeed, the
`relevant passage refers not only to IM system 208 but also to IM system 206,
`which Vuori depicts in Figure 6 as interfacing with gateway 58 and
`SVMSC 50 in a GSM subnetwork—undermining Petitioner’s position that
`this disclosure somehow means that IM system 208 functions as a SVMSC.
`See id. ¶ 42, Fig. 6. The conclusory testimony of Dr. Forys in this regard
`lacks adequate explanation and factual support, in Vuori or elsewhere in the
`record, to convince us otherwise. See Ex. 1003 ¶¶ 117, 138 n.6, 139 (citing
`Ex. 1005 ¶ 42); 37 C.F.R. § 42.65(a); In re Am. Acad. of Sci. Tech Ctr., 367
`F.3d 1359, 1368 (Fed. Cir. 2004) (explaining that “the Board has broad
`discretion” to weigh declarations and “conclude that the lack of factual
`corroboration warrants discounting the opinions expressed”); Ashland Oil,
`Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 294 (Fed. Cir. 1985)
`
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`(“Lack of factual support for expert opinion going to factual determinations
`. . . may render the testimony of little probative value . . . .”).
`
`Turning to corporate IM server 198, cited paragraphs 41 and 42 of
`Vuori explain that “corporate IM server 198 can . . . provid[e] IM services
`to its own clients 200, 202, 204, within and without the enterprise,” and
`additionally, according to the disclosed invention, “short voice messages can
`be provided from, to, or between the clients 194, 196, 200, 202, 204 via the
`data network 160 which may include the IM cloud 162.” Ex. 1005 ¶¶ 41–42
`(emphasis added). We are not persuaded that such generic statements
`regarding corporate IM server 198 itself “providing IM” (instant
`messaging)—not SVM (short voice message)—services would have
`conveyed to a person of ordinary skill that corporate IM server 198, as
`disclosed in Vuori, acts as a SVMSC or performs the particular functions
`regarding storage and delivery of short voice messages based on recipient
`availabilit