Apple Inc., Snap Inc., Facebook, Inc., and
`Whatsapp, Inc.,
`v.
`Uniloc USA, Inc. and Uniloc Luxembourg S.A.
`
`IPR2017-00221
`U.S. Patent No. 7,535,890
`
`PETITIONER APPLE INC.’S DEMONSTRATIVE
`EXHIBITS
`
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`
`February 8, 2018
`
`1
`
`Apple Ex. 1031
`Apple v. Uniloc
`IPR2017-00221
`
`
`Whatsapp, Inc.,
`v.
`Uniloc USA, Inc. and Uniloc Luxembourg S.A.
`
`IPR2017-00221
`U.S. Patent No. 7,535,890
`
`PETITIONER APPLE INC.’S DEMONSTRATIVE
`EXHIBITS
`
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`
`February 8, 2018
`
`1
`
`Apple Ex. 1031
`Apple v. Uniloc
`IPR2017-00221
`
`
`
`Background of USP 7,535,890
`
`IPR2017-00221
`
`Background of USP 7,535,890
`
`
`|PR2017-00221
`
`2
`
`
`
`The ’890 Patent
`
`The ’890 patent claims the known instant voice by combining well-known
`instant messaging features in a voice messaging system.
`
`Ex. 1001, ’890 Patent and Figure 5
`
`Source: Petition, pp. 1, 2, 4, 5, 11
`
`3
`
`
`
`Instituted Grounds
`
`Ground
`
`Claims
`
`Type
`
`Primary
`Reference
`
`Secondary Reference(s)
`
`1–3, 5, 6, 14, 15, 17,
`19, 20, 28, 29, 31, 33,
`34, 40, 42, 43, 51, 53,
`54, 62, 64, and 65
`4, 18, 32, 41, 52, and
`63
`6, 20, 34, 43, 54, and
`65
`68
`
`68
`
`5
`
`6
`
`7
`
`8
`
`8
`
`’890 Patent
`
`§ 103
`
`Malik
`
`Väänänen
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`Malik
`
`Väänänen and Deshpande
`
`Malik
`
`Malik
`
`Malik
`
`Väänänen and Abburi
`
`Väänänen and Daniell
`Väänänen, Abburi, and
`Daniell
`
`Source: Institution Decision, p. 39; Petition, p. 3
`
`4
`
`
`
`PO Seeks An Overly Narrow Claim Construction
`
`Patent Owner’s overly narrow proposed claim constructions do not
`comport with the claim language.
`
`Petitioner
`(Source: Petition, p. 9)
`
`Patent Owner
`(Source: POR, p. 8)
`
`
`
`“external network”
`“external network” means “a network that is
`outside another network.”
`
`The “local network” and “external network”
`are distinguishable from one another and the
`words “local” and “external” refer to distinct
`types of networks.
`
`Petitioner
`(Source: Petitioner Reply, pp. 4-5)
`
`
`Patent Owner
`(Source: POR, p. 11)
`
`
`
`“recipient”
`Plain and ordinary meaning; no explicit
`construction necessary. If the Board needs
`to construe the term, “recipient” under BRI is
`merely “a recipient client device.”
`“‘recipient’ in the context of the challenged
`claims refers to a specific client device.”
`
`Source: Petition, p. 9; POR, pp. 8-12; Reply, pp. 1-5
`
`5
`
`
`
`Summary of Patent Owner’s Arguments
`
`Patent Owner’s arguments mainly hinge upon its overly-narrow construction of
`“local” and “external” networks, “recipient,” and interpretation of the claims.
`
`• The claims all require a heterogeneous network architecture
`comprising different types of networks. (POR, pp. 12-14.)
`
`• Malik teaches away from the claims, and Figures 2 and 3 of Malik
`cannot be combined. (POR, pp. 14-20.)
`
`• Väänänen also teaches away from a “client” and “one or more
`recipients” to be connected to mutually-exclusive ones of either “a
`local network” or “an external network.” (POR, pp. 19-20.)
`
`• Regarding the feature of “selecting one or more recipients,” Malik
`teaches away from this feature and combination with Väänänen.
`(POR, pp. 26-33.)
`
`
`Source: POR, pp. 8-12; Reply, pp. 12-20, 26-33
`
`6
`
`
`
`PO Ignores Claim Language and the Specification of the
`’890 Patent in Its Unreasonable Construction
`
`There is no reference to “heterogeneous network” in the ‘890 patent.
`
`PO’s construction of “local” and “external” networks are unsupported
`limitations, which PO reads into the claims in attempt to circumvent the
`prior art.
`
`Source: Reply, pp. 1-4, 7
`
`7
`
`
`
`In POR, PO Contradicts Its Construction in POPR
`
`POPR, p. 19
`
`Source: POPR, 19, POR, pp. 8-11; Reply, pp. 1-2
`
`POR, p. 8
`
`8
`
`
`
`PO Ignores Claim Language and Selectively Reads the
`’890 Patent in an Unreasonable Construction
`
`The context of the claims supports this construction. The claims recite
`“an external network outside the local network.” (’890 Patent, Claims 14,
`51.) The plain meaning of the word “external” further supports this
`construction. (Ex. 1013, Webster’s, 503 (defining “external” as “on or
`having to do with the outside; outer; exterior”).)
`
`Ex. 1001, ’890 patent, 25:21-39
`
`Source: Petition, p. 10; Reply, p. 3
`
`9
`
`
`
`PO Ignores Claim Language and Selectively Reads the
`’890 Patent in an Unreasonable Construction
`The specification does not provide an embodiment that specifically
`refers to the term “external network.” The specification only recites the
`claimed “external network” in Section “SUMMARY OF THE INVENTION,”
`with the same level of details as the claims.
`
`’890 patent, 3:24-38
`
`Source: Petition, p. 10; Reply, p. 2
`
`10
`
`
`
`The ’890 Patent Does Not Specifically Refer to the Term
`“External Network.”
`FIG. 5 of the ’890 Patent provides an exemplary “global instant voice
`messaging (IVM) system 500” that utilizes both local networks and/or
`the Internet. However, this embodiment does not explicitly refer to the
`term, “external network.”
`
`Source: Petition, p. 10-12; Reply, p. 2
`
`11
`
`’890 patent, FIG. 5
`
`
`
`The Combination of Malik and Väänänen Renders
`Obvious “Local” and “External” Networks
`
`“External network” under its BRI means “a network that is outside
`another network.”
`
`Petition, p. 37; Malik, FIG. 2 (Annotated)
`
`Petition, p. 46; Malik, FIG. 2 (Annotated)
`
`Source: Petition, pp. 39-40, 45-47; Reply, p. 4
`
`12
`
`
`
`The Combination of Malik and Väänänen Renders
`Obvious “Local” and “External” Networks
`
`
`Even if the Board construes the term as proposed by PO, the prior art
`teaches or suggests a “local network” and an “external network.”
`
`Source: Petition, pp. 39-40; Reply, p. 4
`
`13
`
`
`
`The Combination of Malik and Väänänen Renders
`Obvious “Local” and “External” Networks
`
`Petition, p. 37
`
`Source: Petition, pp. 37-38; Reply, pp. 5-8
`
`14
`
`
`
`The Combination of Malik and Väänänen Renders
`Obvious “Local” Network
`
`Petition, p. 38
`
`Petition, p. 34
`
`Petition, p. 34
`
`Source: Petition, pp. 34-35, 37-38; Reply, pp. 5-8
`
`15
`
`
`
`The Combination of Malik and Väänänen Renders
`Obvious “Local” Network
`
`Petition, pp. 34-35
`
`Source: Petition, pp. 34-35, 37-38; Reply, pp. 5-8
`
`16
`
`
`
`The Combination of Malik and Väänänen Renders
`Obvious “External” Network
`
`Petition, pp. 38-39
`
`Petition, p. 39
`
`Source: Petition, pp. 38-39
`
`17
`
`
`
`It Would Have Been Obvious to Combine the Teachings
`of FIGs. 2 and 3 of Malik
`
`It would have been obvious to incorporate FIG. 3’s Internet into FIG. 2.
`
`Source: Petition, pp. 39-40; Reply, pp. 8-11
`
`Petition, pp. 39-40
`
`18
`
`
`
`It Would Have Been Obvious to Combine the Teachings
`of FIGs. 2 and 3 of Malik
`
`Malik is adding new features of FIG. 3 to the architecture of FIG. 2.
`
`PO’s interpretation of Malik is one plausible interpretation not the only
`interpretation.
`
`Malik, 4:51-53
`
`POR, p. 18
`
`Source: Reply, pp. 8-9; POR, p. 18; Malik, 4:51-53
`
`19
`
`
`
`It Would Have Been Obvious to Combine the Teachings
`of FIGs. 2 and 3 of Malik
`
`VIM server 330’s functionality is one of the improvements of FIG. 3, not
`the connection of VIM clients 310/320 to VIM server.
`
`Reply, p. 9
`
`Source: Reply, p. 9; Malik, 4:45-47
`
`20
`
`
`
`Malik Does Not Teach Away From Using “Local” and
`“External” Networks
`
`Reply, pp. 7-8
`
`Reply, p. 10
`
`Source: Reply, pp. 7-8, 10; Malik, 4:45-37, 5:51-53
`
`21
`
`
`
`Väänänen Does Not Teach Away From Using “Local” and
`“External” Networks
`
`Reply, p. 11
`
`Reply, p. 11
`
`Source: Reply, p. 11
`
`22
`
`
`
`PO’s Construction of “Recipient” Is Unsupported by and
`Contradicts the ’890 Patent Specification
`
`POR, p. 11
`
`’890 patent, 2:31-33
`
`’890 patent, 7:55-61
`
`’890 patent, 8:42-48
`
`Source: POR, p. 11; Reply, p. 4-5
`
`23
`
`
`
`Recipient
`
`At best the voice message goes to any client device through which the
`recipient can access the voice message, but not one and only one
`specific client device.
`
`
`
`If the Board needs to construe the term, “recipient” under BRI is merely
`“a recipient client device.”
`
`
`Source: Reply, p. 5
`
`24
`
`
`
`The Combination of Malik and Väänänen Renders
`Obvious “Selecting One or More Recipients”
`
`Reply, pp. 20-21
`
`Malik discloses that a first user authorizes a second user to be able to
`send a VIM to the first user. (Malik, FIG. 4, element 410.)
`
`The VIM client of the second user receives a request from the second user
`to send an instant message to the first user. (Malik, FIG. 4, element 420.)
`
`But if the first user is not present and available (1) the VIM client of the
`second user generates a voice recording, and if the second user is
`authorized, then (2) the VIM client of the second user invites the second
`user to send a VIM to the first user. (Malik, FIG. 4, elements 425, 430, 435,
`440,445, and 450.)
`
`In other words, the process of sending the VIM starts with the VIM client
`of the second user receiving a request from the second user. It is of no
`importance whether the first request is for a text message or for an instant
`voice message, as PO argues.
`
`A POSITA, based on the disclosure of Malik, would be motivated to seek
`out ways in which a user could input information designating a recipient.
`
`Petition, p. 27; Reply, p. 20
`
`Source: Reply, pp. 20-22; Petition, pp. 27-28
`
`25
`
`
`
`The Combination of Malik and Väänänen Renders
`Obvious “Selecting One or More Recipients”
`
`Väänänen
`
`Reply, p. 22
`
`Source: Petition, pp. 27-28; Reply, p. 22; Väänänen, 2:28-29, 6:5-11
`
`26
`
`
`
`The Combination of Malik and Väänänen Renders
`Obvious “Selecting One or More Recipients”
`
`It would have been obvious to combine Malik and Väänänen.
`
`Source: Petition, p. 28
`
`27
`
`
`
`Malik Does Not Teach Away From “Selecting One or
`More Recipients”
`
`Malik does not, and PO does not provide any evidence that Malik
`criticizes, discredits, or otherwise discourages selecting one or
`more recipients.
`
`Reply, p. 18
`
`PO relies on a single embodiment of Malik (FIG. 7) ignoring
`Malik as a whole - and PO’s flawed claim construction (recipient
`“refers to a specific client device”) to argue that “Malik teaches
`away from the ‘selecting’ claim language in question and the
`proposed modification of Malik by Väänänen.”
`
`Reply, p. 20
`
`Source: Reply, pp. 18-20
`
`28
`
`
`
`Malik’s Background Discusses Selecting an IM Client
`
`Source: Reply, p. 22; Malik, 2:25-28
`
`Reply, pp. 22
`
`29
`
`
`
`The ’890 Description of Prior Art Discusses Selecting
`One or More Persons in Instant Text Messaging
`
`Source: Institution Decision, p. 19
`
`’890 patent, 1:12, 2:23-35
`
`30
`
`
`
`The Combination of Malik and Väänänen Renders
`Obvious “Server System”
`
`PO improperly discusses “a system of servers” instead of “a
`server system” and improperly imports limitations from the
`Specification to the claims.
`
`POR, p. 25
`
`Source: POR, p. 25; Reply, p. 15-17
`
`31
`
`
`
`The Combination of Malik and Väänänen Renders
`Obvious “Server System”
`
`A server system can include one or more servers. Each server of
`the server system can include a server with multiple
`components performing multiple functions, which Malik and
`Deshpande disclose.
`
`Source: Reply, pp. 15-17
`
`32
`
`Reply, p. 15
`
`
`
`The Combination of Malik and Väänänen Renders
`Obvious “Server System”
`
`A server system can include one or more servers. Each server of
`the server system can include a server with multiple
`components performing multiple functions, which Malik and
`Deshpande disclose.
`
`Source: Reply, pp. 15-17
`
`33
`
`Reply, p. 16
`
`
`
`The Combination of Malik and Väänänen Renders
`Obvious “Server System”
`
`Additionally, both Malik and Väänänen support network of servers. Therefore,
`a server system as proposed by PO to be a system of servers was well-known
`as taught by Malik and Väänänen.
`
`Malik
`
`Source: Reply, pp. 15-17
`
`34
`
`Reply, p. 16
`
`
`
`The Combination of Malik and Väänänen Renders
`Obvious “Server System”
`
`Additionally, both Malik and Väänänen support network of servers. Therefore,
`a server system as proposed by PO to be a system of servers was well-known
`as taught by Malik and Väänänen.
`
`Väänänen
`
`Source: Reply, pp. 15-17
`
`35
`
`Reply, p. 16
`
`
`
`The Combination of Malik and Väänänen Renders
`Obvious “Server System”
`
`Additionally, both Malik and Väänänen support network of servers. Therefore,
`a server system as proposed by PO to be a system of servers was well-known
`as taught by Malik and Väänänen.
`
`Väänänen
`
`Source: Reply, pp. 15-17
`
`Reply, p. 17
`
`36
`
`
`
`
`Ground 5: The Combination of
`Malik and Väänänen Renders
`Claims 1–3, 5, 6, 14, 15, 17, 19,
`20, 28, 29, 31, 33, 34, 40, 42, 43,
`51, 53, 54, 62, 64, and 65
`Obvious
`
`37
`
`
`
`The ’890 Patent Claim 1
`
`Source: ’890 patent, Claim 1
`
`38
`
`
`
`The ’890 Patent Claim 14
`
`Source: ’890 patent, Claim 14
`
`39
`
`
`
`The ’890 Patent Claim 28
`
`Source: ’890 patent, Claim 28
`
`40
`
`
`
`The ’890 Patent Claim 40
`
`Source: ’890 patent, Claim 40
`
`41
`
`
`
`The ’890 Patent Claim 51
`
`Source: ’890 patent, Claim 51
`
`42
`
`
`
`The ’890 Patent Claim 62
`
`Source: ’890 patent, Claim 62
`
`43
`
`
`
`Overview of Malik
`
`Malik relates to sending voice instant messages (VIMs).
`
`Malik, FIG. 3
`
`Source: Petition, pp. 19-21
`
`44
`
`
`
`Overview of Malik
`
`Malik discloses storing-or-delivering an instant voice message based on
`recipient availability.
`
`Petition, p. 14
`
`Source: Petition, pp. 12, 14
`
`45
`
`
`
`Overview of Malik
`
`Malik contemplates delivering instant messages utilizing “distributed
`network servers”.
`
`Source: Petition, pp. 16-18, 21
`
`Petition, p. 17-18
`
`46
`
`
`
`Overview of Väänänen
`
`Väänänen relates to a server centric system for instant voice
`messaging.
`
`Source: Petition, pp. 21-23
`
`Väänänen, FIG. 1
`
`47
`
`
`
`Overview of Väänänen
`
`Väänänen discloses storing-or-delivering an instant voice message
`based on recipient availability.
`
`Petition, p. 22
`
`Source: Petition, p. 22
`
`48
`
`
`
`Overview of Väänänen
`
`Väänänen discloses delivering instant messages utilizing “distributed
`network servers”.
`
`Petition, p. 16
`
`Petition, p. 22
`
`Source: Petition, pp. 16, 22
`
`49
`
`
`
`Overview of Väänänen
`
`Väänänen discloses selecting one or more recipients.
`
`Petition, p. 22
`
`Source: Petition, p. 22
`
`50
`
`
`
`The Combination of Malik and Väänänen Teaches
`Independent Claim 1
`
`Source: Petition, pp. 25-27; ’890 patent, Claim 1; Malik, FIG. 3, Abstract, 4:42-45; Väänänen, Abstract, 7:25-29
`
`51
`
`
`
`The Combination of Malik and Väänänen Teaches
`Independent Claim 1
`
`Malik
`
`Väänänen
`
`Source: Petition, pp. 27-28; ’890 patent, Claim 1; Malik, FIG. 3, 6:7-9; Väänänen, 2:28-29, 6:5-11
`
`52
`
`
`
`The Combination of Malik and Väänänen Teaches
`Independent Claim 1
`
`It would have been obvious to combine Malik and Väänänen.
`
`Source: Petition, p. 28
`
`53
`
`
`
`The Combination of Malik and Väänänen Teaches
`Independent Claim 1
`
`Source: Petition, p. 28; ’890 patent, Claim 1; Malik, 4:33-37, 6:41-46, 6:50-52.
`
`54
`
`
`
`The Combination of Malik and Väänänen Teaches
`Independent Claim 1
`
`Malik
`
`Väänänen
`
`Source: Petition, p. 29-30; ’890 patent, Claim 1; Malik, 4:42-45; Väänänen, 2:31-32, 6:25-29
`
`55
`
`
`
`The Combination of Malik and Väänänen Teaches
`Independent Claim 1
`
`It would have been obvious to combine Malik and Väänänen.
`
`Source: Petition, p. 30
`
`56
`
`
`
`The Combination of Malik and Väänänen Teaches
`Independent Claim 1
`
`Source: Petition, p. 30-31; ’890 patent, Claim 1; Malik, FIG. 3, 4:42-45, 6:57-58; Väänänen, 2:31-32, 6:25-29
`
`57
`
`
`
`The Combination of Malik and Väänänen Teaches
`Independent Claim 1
`
`Source: Petition, p. 31-32; ’890 patent, Claim 1; Malik, FIG. 3, 4:30-33, 6:59-64
`
`58
`
`
`
`The Combination of Malik and Väänänen Teaches
`Independent Claim 1
`
`Malik
`
`Väänänen
`
`Source: Petition, p. 32-33; ’890 patent, Claim 1; Malik, 4:45-47, 51-53, 5:21-27; Väänänen, 8:17-18
`
`59
`
`
`
`The Combination of Malik and Väänänen Teach
`Independent Claim 1
`
`It would have been obvious to combine Malik and Väänänen.
`
`Source: Petition, p. 33
`
`60
`
`
`
`The Combination of Malik and Väänänen Teaches
`Dependent Claim 2
`
`Malik
`
`Väänänen
`
`Source: Petition, pp. 34-35; ’890 patent, Claim 2; Malik, 4:45-47; Väänänen, 16:19-23
`
`61
`
`
`
`The Combination of Malik and Väänänen Teaches
`Dependent Claim 2
`
`It would have been obvious to combine Malik and Väänänen.
`
`Source: Petition, pp. 34-35
`
`62
`
`
`
`The Combination of Malik and Väänänen Teaches
`Dependent Claims 3 and 5
`
`Source: Petition, p. 35; ’890 patent, Claims 2, 5; Malik, 4:42-45, 5:21-27
`
`63
`
`
`
`Comparison of Independent Claims 1 and 14
`
`Source: Petition, pp. 35-36
`
`64
`
`
`
`The Combination of Malik and Väänänen Teaches
`Additional Limitations of Independent Claim 14
`As the annotated FIG. 2 below helps to illustrate,
`an example of Client 200 sending a VIM to Client 203 renders obvious
`the additional limitations in claim 14.
`
`Source: Petition, p. 37; Malik, FIG. 2
`
`65
`
`
`
`The Combination of Malik and Väänänen Teaches
`Additional Limitations of Independent Claim 14
`
`Source: Petition, p. 38; ’890 patent, Claim 14; Malik, 4:45-47, 2:66-3:9
`
`66
`
`
`
`The Combination of Malik and Väänänen Teaches
`Additional Limitations of Independent Claim 14
`
`Malik
`
`Väänänen
`
`Source: Petition, pp. 34, 38; ’890 patent, Claim 14; Malik, 4:45-47; Väänänen 16:19-23
`
`67
`
`
`
`The Combination of Malik and Väänänen Teaches
`Additional Limitations of Independent Claim 14
`
`It would have been obvious to combine Malik and Väänänen.
`
`Source: Petition, pp. 34-35, 38
`
`68
`
`
`
`The Combination of Malik and Väänänen Teaches
`Additional Limitations of Independent Claim 14
`
`Source: Petition, pp. 38-39; ’890 patent, Claim 14; Malik, FIG. 2, 3:5-9
`
`69
`
`
`
`The Combination of Malik and Väänänen Teaches
`Additional Limitations of Independent Claim 14
`
`If “external network” is more than another local network, Malik teaches
`using the Internet
`
`Source: Petition, pp. 38-39; ’890 patent, Claim 14; Malik, FIGs. 2, 3, 4:42-45
`
`70
`
`
`
`The Combination of Malik and Väänänen Teaches
`Additional Limitations of Independent Claim 14
`
`It would have been obvious to incorporate FIG. 3’s Internet to FIG. 2 of Malik.
`
`Source: Petition, pp. 39-40; ’890 patent, Claim 14; Malik, FIGs. 2-3, 4:42-45
`
`71
`
`
`
`The Combination of Malik and Väänänen Teaches
`Additional Limitations of Independent Claim 14
`
`Source: Petition, p. 40; ’890 patent, Claim 14; Malik, FIG. 2
`
`72
`
`
`
`The Combination of Malik and Väänänen Teaches
`Additional Limitations of Independent Claim 14
`
`Source: Petition, p. 40; ’890 patent, Claim 14; Malik, FIG. 2
`
`73
`
`
`
`The Combination of Malik and Väänänen Teaches
`Additional Limitations of Independent Claim 14
`
`Source: Petition, p. 40; ’890 patent, Claim 14; Malik, FIG. 2
`
`74
`
`
`
`The Combination of Malik and Väänänen Teaches
`Additional Limitations of Dependent Claim 15
`
`Source: Petition, p. 41; ’890 patent, Claim 15
`
`75
`
`
`
`The Combination of Malik and Väänänen Teaches
`Additional Limitations of Dependent Claim 15
`
`The “selects” and “transmits” in claim 15 is substantially similar to the “selecting” and
`“transmitting” in elements [1.1b], [1.1d] of claim 1 discussed above.
`
`The additional limitations are the “local recipients” and the “local network.”
`
`Source: Petition, pp. 41-42; ’890 patent, Claim 15
`
`76
`
`
`
`The Combination of Malik and Väänänen Teaches
`Additional Limitations of Dependent Claim 15
`
`The “receiving,” “delivering,” and “audibly play” in claim 15 are substantially similar to the
`“receiving,” “delivering,” and “audibly play” in elements [1.2b], [1.2c], [1.2d] of claim 1.
`
`Claim 15 additionally recites the “local server,” “local network,” and “local recipients.”
`
`Source: Petition, pp. 42-43; ’890 patent, Claim 15
`
`77
`
`
`
`The Combination of Malik and Väänänen Teaches
`Additional Limitations of Dependent Claims 17 and 19
`
`Source: Petition, p. 43; ’890 patent, Claims 17, 19
`
`78
`
`
`
`Comparison of Independent Claims 1 and 28
`
`Source: Petition, pp. 43-45
`
`79
`
`
`
`The Combination of Malik and Väänänen Teaches
`Additional Limitations of Independent Claim 28
`
`Malik in view of Väänänen renders
`obvious these additional limitations in claim 28.
`
`Source: Petition, pp. 45-46; Malik, FIG. 2
`
`80
`
`
`
`The Combination of Malik and Väänänen Teaches
`Additional Limitations of Independent Claim 28
`
`Source: Petition, p. 46; ’890 patent, Claim 28; Malik, FIG. 2
`
`81
`
`
`
`The Combination of Malik and Väänänen Teaches
`Additional Limitations of Independent Claim 28
`
`If “external network” is more than
`another local network, Malik teaches
`using the Internet – as discussed with
`respect to element [14.1b]
`
`Source: Petition, p. 47; ’890 patent, Claim 28; Malik, FIG. 2
`
`82
`
`
`
`The Combination of Malik and Väänänen Teaches
`Additional Limitations of Independent Claim 28
`
`Source: Petition, p. 47; ’890 patent, Claim 28; Malik, FIG. 2
`
`83
`
`
`
`The Combination of Malik and Väänänen Teaches
`Additional Limitations of Independent Claim 28
`
`Source: Petition, p. 47; ’890 patent, Claim 28; Malik, FIG. 2
`
`84
`
`
`
`The Combination of Malik and Väänänen Teaches
`Additional Limitations of Independent Claim 28
`
`Source: Petition, p. 48; ’890 patent, Claim 28; Malik, FIG. 2, 3:2-5
`
`85
`
`
`
`The Combination of Malik and Väänänen Teaches
`Additional Limitations of Independent Claim 28
`
`Source: Petition, pp. 48-49; ’890 patent, Claim 28
`
`86
`
`
`
`The Combination of Malik and Väänänen Teaches
`Additional Limitations of Independent Claim 28
`
`Source: Petition, p. 49; ’890 patent, Claim 28
`
`87
`
`
`
`The Combination of Malik and Väänänen Teaches
`Additional Limitations of Independent Claim 28
`
`It would have been obvious that the communication between IM servers – such as
`between Server 216 and Server 215 – includes exchange of VIMs because Malik
`contemplates the servers in FIG. 2 providing VIM services to its clients.
`
`Source: Petition, pp. 49-50; ’890 patent, Claim 28; Malik, FIG. 2, 2:67-3:1, 4:45-47, 51-53; Väänänen, 9:10-18
`
`88
`
`
`
`The Combination of Malik and Väänänen Teaches
`Dependent Claim 29
`
`Source: Petition, pp. 50-51; ’890 patent, Claim 29
`
`89
`
`
`
`The Combination of Malik and Väänänen Teaches
`Dependent Claim 29
`
`Source: Petition, pp. 51-52; ’890 patent, Claim 29
`
`90
`
`
`
`The Combination of Malik and Väänänen Teaches
`Dependent Claim 29
`
`Source: Petition, pp. 51-52; ’890 patent, Claim 29
`
`91
`
`
`
`The Combination of Malik and Väänänen Teaches
`Dependent Claim 31
`
`Source: Petition, p. 52; ’890 patent, Claim 31
`
`92
`
`
`
`The Combination of Malik and Väänänen Teaches
`Dependent Claim 33
`
`Source: Petition, pp. 52-53; ’890 patent, Claim 33
`
`93
`
`
`
`Comparison of Independent Claims 1 and 40
`
`Source: Petition, pp. 53-54
`
`94
`
`
`
`The Combination of Malik and Väänänen Teaches
`Additional Limitations of Independent Claim 40
`
`Source: Petition, p. 54; ’890 patent, Claim 40
`
`95
`
`
`
`The Combination of Malik and Väänänen Teaches
`Limitations of Dependent Claim 42
`
`Source: Petition, p. 54; ’890 patent, Claim 42
`
`96
`
`
`
`Comparison of Independent Claims 14 and 51
`
`Source: Petition, pp. 54-55
`
`97
`
`
`
`The Combination of Malik and Väänänen Teaches
`Additional Limitations of Independent Claim 51
`
`Source: Petition, pp. 55-56; ’890 patent, Claim 51
`
`98
`
`
`
`The Combination of Malik and Väänänen Teaches
`Additional Limitations of Independent Claim 51
`
`Source: Petition, p. 56; ’890 patent, Claim 51
`
`99
`
`
`
`The Combination of Malik and Väänänen Teaches
`Limitations of Dependent Claim 53
`
`Source: Petition, p. 57; ’890 patent, Claim 53
`
`100
`
`
`
`Comparison of Independent Claims 28 and 62
`
`Source: Petition, pp. 57-58
`
`101
`
`
`
`The Combination of Malik and Väänänen Teaches
`Additional Limitations of Independent Claim 62
`
`Source: Petition, pp. 55-56; ’890 patent, Claim 62
`
`102
`
`
`
`The Combination of Malik and Väänänen Teaches
`Limitations of Dependent Claim 64
`
`Source: Petition, p. 58; ’890 patent, Claim 64
`
`103
`
`
`
`
`
`Ground 6: The Combination of
`Malik, Väänänen, and
`Deshpande Renders Claims 4,
`18, 32, 41, 52, and 63 Obvious
`
`104
`
`
`
`The Combination of Malik, Väänänen, and Deshpande
`Teaches Limitations of Dependent Claim 4
`
`Source: Petition, p. 59; ’890 patent, Claim 4; Malik, Abstract; Väänänen, 6:5-11
`
`105
`
`
`
`The Combination of Malik, Väänänen, and Deshpande
`Teaches Limitations of Dependent Claim 4
`
`Source: Petition, p. 59; ’890 patent, Claim 4
`
`106
`
`
`
`The Combination of Malik, Väänänen, and Deshpande
`Teaches Limitations of Dependent Claim 4
`
`Source: Petition, p. 60; ’890 patent, Claim 4; Deshpande, ¶¶ [0023], [0025], [0046]
`
`107
`
`
`
`The Combination of Malik, Väänänen, and Deshpande
`Teaches Limitations of Dependent Claim 4
`
`A POSITA would have found it obvious to incorporate Deshpande’s IM
`server providing buddy list to the Malik-Väänänen combination
`
`Source: Petition, pp. 60-61; ’890 patent, Claim 4; Malik, 4:54-67
`
`108
`
`
`
`The Combination of Malik, Väänänen, and Deshpande
`Teaches Limitations of Dependent Claim 4
`
`A POSITA would have found it obvious to incorporate Deshpande’s IM
`server providing buddy list to the Malik-Väänänen combination
`
`Source: Petition, p. 61; ’890 patent, Claim 4
`
`109
`
`
`
`The Combination of Malik, Väänänen, and Deshpande
`Teaches Limitations of Dependent Claim 4
`
`A POSITA would have found it obvious to incorporate Deshpande’s IM
`server providing buddy list to the Malik-Väänänen combination
`
`Source: Petition, pp. 61-62; ’890 patent, Claim 4
`
`110
`
`
`
`The Combination of Malik, Väänänen, and Deshpande
`Teaches Limitations of Dependent Claim 18
`Claim 18 recites substantially similar limitations as claim 4, and is unpatentable
`for substantially similar reasons as claim 4.
`
`Source: Petition, pp. 62-63; ’890 patent, Claim 18
`
`111
`
`
`
`The Combination of Malik, Väänänen, and Deshpande
`Teaches Limitations of Dependent Claim 32
`Claim 32 recites substantially similar limitations as claim 4, and is unpatentable
`for substantially similar reasons as claim 4.
`
`Source: Petition, p. 63; ’890 patent, Claim 32
`
`112
`
`
`
`The Combination of Malik, Väänänen, and Deshpande
`Teaches Limitations of Dependent Claims 41, 52, 63
`
`Claim 41 depends from claim 40, and recites similar limitations as claim 4.
`
`Claim 52 depends from claim 51, and recites similar limitations as claim 18.
`
`Claim 63 depends from claim 62, and recites similar limitations as claim 32.
`
`
`Source: Petition, p. 64; ‘890 patent, Claims 41, 52, 63
`
`113
`
`
`
`
`
`Ground 7: The Combination of
`Malik, Väänänen, and Abburi
`Renders Claims 6, 20, 34, 43, 54,
`and 65 Obvious
`
`114
`
`
`
`The Combination of Malik, Väänänen, and Abburi
`Teaches Limitations of Dependent Claim 6
`
`Source: Petition, pp. 64-65; ’890 patent, Claim 6; Malik, 4:33-36
`
`115
`
`
`
`The Combination of Malik, Väänänen, and Abburi
`Teaches Limitations of Dependent Claim 6
`
`Source: Petition, p. 65; ’890 patent, Claim 6; Aburi, ¶¶ [0001], [0032], [0040]
`
`116
`
`
`
`The Combination of Malik, Väänänen, and Abburi
`Teaches Limitations of Dependent Claim 6
`
`It would have been obvious to incorporate Abburi’s audio file into the
`Malik-Väänänen combination
`
`Source: Petition, p. 66; ’890 patent, Claim 6
`
`117
`
`
`
`The Combination of Malik, Väänänen, and Abburi
`Teaches Limitations of Dependent Claim 34
`
`Source: Petition, p. 67; ’890 patent, Claim 34
`
`118
`
`
`
`The Combination of Malik, Väänänen, and Abburi
`Teaches Limitations of Dependent Claims 20, 43, 54, 65
`
`Claim 20 depends from claim 14. Claim 20 recites similar limitations as
`claim 6, and is unpatentable for the same reasons claim 6 is unpatentable.
`
` Claim 43 depends from claim 40, and recites similar limitations as claim 6.
`So, claim 43 is unpatentable for the same reasons claim 6 is unpatentable.
`
` Claim 54 depends from claim 51, and recites similar limitations as claim 20.
`So, claim 54 is unpatentable for the same reasons claim 20 is unpatentable.
`
` Claim 65 depends from claim 62, and recites similar limitations as claim 34.
`So, claim 65 is unpatentable for the same reasons claim 34 is unpatentable.
`
`Source: Petition, pp. 66-68; ’890 patent, Claims 20, 43, 54, 65
`
`119
`
`
`
`
`
`Ground 7: Board Indicated That
`The Combination of Malik and
`Väänänen Renders Claims 6, 20,
`34, 43, 54, and 65 Obvious
`
`120
`
`
`
`The Combination of Malik and Väänänen Teaches Limitations
`of Dependent Claims 6, 20, 34, 43, 54, and 65
`
`Source: Institution Decision, pp. 35-36; ’890 patent, Claims 6 ,20, 34, 43, 54, 65
`
`121
`
`
`
`
`
`Ground 8: The Combination of
`Malik, Väänänen, Abburi, and
`Daniell Renders Claim 68
`Obvious
`
`122
`
`
`
`The Combination of Malik, Väänänen, Abburi, and
`Daniell Teaches Limitations of Dependent Claim 68
`
`Source: Petition, p. 68; ’890 patent, Claim 68; Malik, Abstract; Abburi, ¶ [0049]
`
`123
`
`
`
`The Combination of Malik, Väänänen, Abburi, and
`Daniell Teaches Limitations of Dependent Claim 68
`
`Source: Petition, pp. 68-69; ’890 patent, Claim 68; Daniell, ¶¶ [0004], [0005], [0059], [0062], [0063], [0068]
`
`124
`
`
`
`The Combination of Malik, Väänänen, Abburi, and
`Daniell Teaches Limitations of Dependent Claim 68
`
`A POSITA would have found it obvious to incorporate Daniell’s attaching
`multiple files in one IM into the voice instant message of the Malik-Väänänen-
`Abburi combination.
`
`Source: Petition, pp. 69-70; ’890 patent, Claim 68
`
`125
`
`
`
`The Combination of Malik, Väänänen, Abburi, and
`Daniell Teaches Limitations of Dependent Claim 68
`
`A POSITA would have found it obvious to incorporate Daniell’s attaching
`multiple files in one IM into the voice instant message of the Malik-Väänänen-
`Abburi combination.
`
`Source: Petition, p. 70; ’890 patent, Claim 68; Daniell, ¶ [0005]
`
`126
`
`
`
`
`
`Ground 8: Board Indicated That
`The Combination of Malik,
`Väänänen, and Daniell Renders
`Claim 68 Obvious
`
`127
`
`
`
`The Combination of Malik, Väänänen, and Daniell
`Teaches Limitations of Dependent Claim 68
`
`Source: Institution Decision, p. 39; ’890 patent, Claim 68
`
`128
`
`
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