UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`APPLE, LLC,
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`Petitioner,
`
`v.
`
`UNILOC USA, INC. AND UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`______________________
`
`Case IPR2017-00221
`U.S. Patent 7,535,890
`______________________
`
`DECLARATION OF WILLIAM C EASTTOM II
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`I.
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`II.
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`TABLE OF CONTENTS
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`INTRODUCTION ....................................................................................... 1
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`BACKGROUND AND QUALIFICATIONS .............................................. 2
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`III. LEGAL STANARDS USED IN MY ANALYSIS ....................................... 2
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`A. Obviousness ............................................................................................ 3
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`B. Priority Date ........................................................................................... 4
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`C. Person of Ordinary Skill in the Art.......................................................... 4
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`D. Broadest Reasonable Interpretation ......................................................... 6
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`IV. OVERVIEW OF THE ’890 PATENT ......................................................... 6
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`V.
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`CLAIM CONSTRUCTION ........................................................................10
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`A. “local network” and “external network” .................................................10
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`B. “recipient” .............................................................................................12
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`VI. VALIDITY ANALYSIS .............................................................................13
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`A. No obviousness for a “local network” and a distinct “external network”
`arranged as claimed (independent Claims 14, 28, 51, and 62) ................13
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`1. Malik uses a homogenous network design in both Figures 2 and
`3
`15
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`2. Malik disparages Figure 2 as “prior art” lacking certain
`capabilities of Figure 3 ...................................................................... 16
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`3. Väänänen does not supply the missing elements ............................... 19
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`4. Additional Structural Distinctions of Claim 28 ................................. 20
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`B. No obviousness for “the client selecting one or more recipients”
`(independent Claims 1, 14, 28, 40, 51, and 62, dependent Claims 15 and
`29) .........................................................................................................21
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`1. Malik teaches away from the proposed modifications ....................... 22
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`2. Malik does not “suggest” the sending-user’s client selecting
`recipient devices for instant voice messages ..................................... 24
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`C. No obviousness for “transmitting the selected recipients” (independent
`Claims 1, 14, 28, 40, 51, and 62, dependent Claims 15 and 29) .............26
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`VII. CONCLUSION ..........................................................................................27
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`I, Chuck Easttom, hereby declare as follows:
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`I.
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`INTRODUCTION
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`1. My name is William Charles Easttom II (Chuck Easttom) and I
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`have been retained by Uniloc, USA, Inc., and Uniloc Luxembourg S.A.
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`(“Uniloc” or the “Patent Owner”) to provide my expert opinions regarding
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`U.S. Patent No. 7,535,890 (the “’890 patent”). In particular, I have been asked
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`to opine on whether claims 1, 2, 3,4, 5, 6, 14, 15,17, 18, 19, 20, 28, 29, 31, 33,
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`34, 40, 42, 43, 51, 52, 53, 54, 62, 63, 64, 65 and 68 (the “challenged claims”)
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`of the ’890 patent would have been obvious to a person of ordinary skill in the
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`art (POSA) at the time the inventions described in the ’890 patent were
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`conceived. Based on my review of the prior art then available, my
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`understanding of the relevant of the relevant requirements of patent law, and
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`my decades of experience in the field of computer science including
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`communications systems, it is my opinion that the challenged claims would
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`not have been obvious in light of the references cited in the Petition. I note
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`that in addition to the Petition and its accompanying exhibits, in formulating
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`my opinions I further considered the Deposition Transcript of Dr. Leonard
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`Forys (filed as Ex. 2002).
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`2.
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`I am being compensated for my time at my standard consulting
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`rate of $300 per hour. I am also being reimbursed for expenses that I incur
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`during the course of this work. Apart from that, I have no financial interest in
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`Uniloc. My compensation is not contingent upon the results of my study or
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`the substance of my opinions.
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`II. BACKGROUND AND QUALIFICATIONS
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`3.
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`In my 25 years of computer industry experience I have had
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`extensive experience in communications systems, including data networks in
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`general that have messaging capabilities. I hold 40 industry certifications,
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`which include (among others) extensive certifications in server-based
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`communication systems. I have authored 20 computer science books, several
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`of which deal with communications topics including messaging. I also am
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`named inventor on seven patents.
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`4.
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`A more detailed description of my professional qualifications,
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`including a list of publications, teaching, and professional activities, is
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`contained in my curriculum vitae, a copy of which is attached hereto as
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`Appendix A.
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`III. LEGAL STANARDS USED IN MY ANALYSIS
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`5.
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`Although I am not an attorney and I do not offer any legal
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`opinions in this proceeding, I have been informed of and relied on certain legal
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`principles in reaching the opinions set forth in this Declaration.
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`A. Obviousness
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`6.
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`I understand that a patent claim is invalid if the differences
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`between the subject matter and the prior art are such that the subject matter as
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`a whole would have been obvious to a POSA at the time of the alleged
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`invention. I further understand that an obviousness analysis involves a review
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`of the scope and content of the asserted prior art, the differences between the
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`prior art and the claims at issue, the level of ordinary skill in the pertinent art,
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`and objective indicia of non-obviousness such as long-felt need, industry
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`praise for the invention, and skepticism of others in the field.
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`7.
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`I have been informed that if a single limitation of a claim is
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`absent from the cited prior art, the claim cannot be considered obvious.
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`8.
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`I have further been informed that it is improper to combine
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`references where the references teach away from a proposed combination; and
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`that the following factors are among those relevant in considering whether
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`prior art teaches away:
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`• whether a POSA, upon reading the reference would be led in a
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`direction divergent from the path that was taken by the applicant;
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`• whether the prior art criticizes, discredits, or otherwise discourages
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`investigation into the claimed invention;
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`• whether a proposed combination would produce an inoperative
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`result; and
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`• whether a proposed combination or modification would render the
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`teachings of a reference unsatisfactory for its intended purpose.
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`9.
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`In addition, I have been informed that a proposed combination
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`that changes the basic principles under which the prior art was designed to
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`operate may fail to support a conclusion of obviousness.
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`B.
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`Priority Date
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`10. The ’890 patent issued from U.S. Patent Application No.
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`10/740,030, which has a filing date of December 18, 2003. The ’890 patent
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`issued on May 19, 2009, after over six years of examination.
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`11. During prosecution, the inventor, Michael Rojas, filed a
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`declaration pursuant to 37 C.F.R. § 1.131. Ex. 1002 at 89. In this document,
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`the inventor declares “I completed the invention disclosed and claimed in
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`United States Patent Application No. 10/740,030, prior to August 15, 2003.”
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`Id. For purposes of this declaration, I have assumed the priority date for the
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`’890 patent is August 15, 2003.
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`C.
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`Person of Ordinary Skill in the Art
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`12.
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`I understand that a POSA is a hypothetical person who is
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`presumed to have ordinary skill in the art as of the priority date. I understand
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`that factors that may be considered in determining the level of ordinary skill
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`in the art may include: (a) the type of problems encountered in the art; (b)
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`prior art solutions to those problems; (c) the rapidity with which innovations
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`are made; (d) the sophistication of the technology; and (e) the educational
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`level of active workers in the field.
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`13.
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`I have been asked to provide my opinion as to the qualifications
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`of the person of ordinary skill in the art to which the ’890 patent pertains as
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`of August 15, 2003. In my opinion, a POSA would be someone with a
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`baccalaureate degree related to computer technology and 2 years of
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`experience with communications technology, or 4 years of experience without
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`a baccalaureate degree.
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`14.
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`I understand that Dr. Forys opines that a person of ordinary skill
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`in the art would have had “the equivalent of a Bachelor degree in Electrical
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`Engineering, Computer Science, or an equivalent field as well as at least 3−5
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`years of academic or industry experience in communications systems,”
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`particularly messaging systems and data networks, including VoIP and mobile
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`telephony, “or comparable industry experience.” Pet. 9; Ex. 1003 ¶ 30.1 While
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`1 I note that Dr. Forys’ declaration largely repeats, nearly verbatim, the same
`arguments presented in the Petition. The citations to the Petition herein are
`intended to also address the corresponding (if not identical) language in Dr.
`Forys’ declaration.
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`my opinion appears to largely overlap with that offered by Dr. Forys, I
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`disagree with Dr. Forys’ definition to the extent “ordinary skill” is interpreted
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`to require more than 4 years of academic or industry experience exclusively
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`in the fields of in VoIP and mobile telephony. In any event, I qualify as a
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`person of ordinary skill in the art, even under Dr. Forys’ apparent
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`interpretation.
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`D. Broadest Reasonable Interpretation
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`15.
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`I have been informed that, for purposes of this Inter Partes
`
`Review (IPR), the terms in the claims of the ’890 patent are to be given their
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`Broadest Reasonable Interpretation (BRI) in light of the specification of the
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`’890 patent as understood by a POSA on the priority date. I have used this
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`standard throughout my analysis.
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`IV. OVERVIEW OF THE ’890 PATENT
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`16. The ’890 patent, titled “System and method for instant VoIP
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`Messaging,” is generally “directed to a system and method for enabling local
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`and global instant VoIP messaging over an IP network, such as the Internet,
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`with PSTN support.” Ex. 1001, 1:7-11.
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`17. The Background section of the ’890 patent provides a historical
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`context by noting that “Traditional telephony is based on a public switched
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`telephone network (i.e., ‘PSTN’).” Id., 1:13-23. According to the '890 patent,
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`“[c]ircuit switching provides a communication path (i.e., dedicated circuit) for
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`a telephone call from the telephone terminal to another device 20 over the
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`PSTN, including another telephone terminal. During the telephone call, voice
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`communication takes place over that communication path.” Id.
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`18. The ’890 patent further explains “An alternative to the PSTN is
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`Voice over Internet Protocol (i.e., ‘VoIP’), also known as IP telephony or
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`Internet telephony.” Id. 1:24-26. Because legacy circuit-switched devices
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`were unable to communicate directly over packet-switched networks, media
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`gateways (114) were designed to receive circuit-switched signals and
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`packetize them for transmittal over packet-switched networks, and vice versa.
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`Id., 1:54-2:10. The conversion performed by media gateways (e.g., 114 and
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`118) highlights the fact that packetized data carried over packet-switched
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`networks (e.g., IP network 102) are different from and are incompatible with
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`an audio signal carried over a dedicated packet-switched circuit. Id., 1:18-23.
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`19. The ’890 further recognized that “notwithstanding the foregoing
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`advances in the VoIP/PSTN voice communication and voice/text messaging,
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`there is still a need in the art for providing a system and method for providing
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`instant VoIP messaging over an IP network. More particularly, there is a need
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`in the art for providing local and global instant voice messaging over VoIP
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`with PSTN support.” Id., 1:26-39.
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`20. FIG. 5 of the ’890 patent (copied below) is an illustration of an
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`example global instant voice messaging (IVM) system 500 that includes both
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`a global IVM server system 502 and a local IVM server 202 operating on the
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`Internet and a local IP network, respectively. Id., at 15:24-38.
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`
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`21. The challenged claims include six sets of claims. Claims 1, 14,
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`28, 40, 51, and 62 are the challenged independent claims. The independent
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`claims all differ from one another in several respects. Independent Claims 14
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`and 28 are reproduced below and highlighted to illustrate certain example
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`differences:
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`14. An instant voice messaging system for delivering
`instant messages over a plurality of packet-switched
`networks, the system comprising:
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`a client connected to a local network, the client
`selecting one or more external recipients connected
`to an external network outside the local network,
`generating an instant voice message therefor, and
`transmitting the selected recipients and the instant
`voice message therefor over the local network and
`the external network; and
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`a server connected to the external network, the server
`receiving the selected recipients and the instant
`voice message therefor, and delivering the instant
`voice message to the selected recipients over the
`external network, the selected recipients being
`enabled to audibly play the instant voice message,
`and the server temporarily storing the instant voice
`message if a selected recipient is unavailable and
`delivering the stored instant voice message to the
`selected recipient once
`the selected recipient
`becomes available.
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`28. An instant voice messaging system for delivering
`instant messages over a plurality of packet-switched
`networks, the system comprising:
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`a client connected to an external network, the client
`selecting one or more recipients connected to a local
`network, generating an instant voice message
`therefor, and transmitting the selected recipients
`and the instant voice message therefor over the
`external network;
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`a external server system connected to the external
`network, the external server system receiving the
`selected recipients and the instant voice message,
`and routing the selected recipients and the instant
`voice message over the external network and the
`local network; and
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`a local server connected to the local network, the local
`server receiving the selected recipients and the
`instant voice message therefor, and delivering the
`instant voice message to the selected recipients over
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`the local network, the selected recipients being
`enabled to audibly play the instant voice message,
`and the local 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.
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`V. CLAIM CONSTRUCTION
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`22.
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`I have been asked to provide my opinions regarding the
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`construction of certain terms used in the claims of the ’890 patent as would be
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`understood by a POSA using the BRI.
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`A.
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`“local network” and “external network”
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`23.
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`In my opinion, a POSA would understand from the context of the
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`claim language as a whole, when read in light of the rest of ’890 patent
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`specification, that the recited “local network” and “external network” are
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`distinguishable from one another and that the words “local” and “external”
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`refer to distinct types of networks. See, e.g., Ex. 1001 25:25-26. I note that
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`Dr. Forys appears to agree with me on this point. Ex. 1003 ¶56; Ex. 2002
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`35:19-36:2.
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`24. The ’890 patent consistently distinguishes its various examples
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`of “local” networks from “external” networks. For example, with reference to
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`Figure 5, the ’890 patent identifies a Local Area Network (LAN) as a type of
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`“local” network and identifies the Internet as a type of “external” network.
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`See also id., 6:59-61 (teaching that the local IP network 204 “may be a local
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`area network (LAN), a wide area network (WAN), or the like, which supports
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`both wired and wireless devices.”); 20:2-4 (“This local IP network 504 can be
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`a WiFi network or a local area network (i.e., LAN), which is also within the
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`user’s residence.”). The words “local network” and “external network” in the
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`context of the ’890 patent are analogous to the terms “private network” and
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`“public network” as also used in the art.
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`25. This plain reading of the claim language is also confirmed by the
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`fact that in certain independent claims the sending “client” is connected to a
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`“local network” (e.g., Claim 8) and in other independent claims the sending
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`“client” is connected, instead, to an “external network” (e.g., Claim 28). A
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`POSA would understand form this explicit claim differentiation the terms
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`“local network” and “external network” invoke distinct connotations in the art
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`concerning the type of network used.
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`26.
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`I have considered and disagree with the construction of the terms
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`“local network” and “external network” offered in the Petition. I understand
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`Petitioner and its declarant construed “external network” to mean “a network
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`that is outside another network” in general—i.e., even if the two networks are
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`identical to one another. Confusingly, the claimed “local network” would also
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`qualify as an “external network” within Petitioner’s proposed construction
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`11
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`because it is, by definition, outside the external network and therefore “outside
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`another network.” From my review, Petitioner’s construction is unreasonable
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`and therefore does not comport with the BRI standard.
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`B.
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`“recipient”
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`27.
`
`I understand that it is undisputed that the term “recipient” in the
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`context of the challenged claims refers to a specific client device. See, e.g.,
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`Pet. 40 (“… when Client 200 (‘client’) sends a VIM to Client 203 (‘recipient’)
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`….”); Ex. 1003 ¶303 (“… a voice instant message to Client 203 (i.e.,
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`‘recipient’) ….”). This term is introduced in each of the challenged
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`independent claims as “selecting one or more recipients.” Significantly, each
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`independent claim further recites, among other limitations, (1) the recipient(s)
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`are “connected to” a network, (2) “delivering the instant voice message to the
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`selected recipients over the [local/external] network”; and (3) “the selected
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`recipients enabled to audibly play the instant voice message.” A POSA would
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`readily recognize from the surrounding claim language that “recipient” refers
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`to a client device.
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`28. This structural interpretation of “recipient” is consistent with
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`how the ’890 patent specification uses the term. For example, the specification
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`explains that “[i]t is noted that if a recipient IVM client is not currently
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`connected to the local IVM server 202 (i.e., is unavailable), the IVM server
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`12
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`temporarily saves the instant voice message and delivers it to the IVM client
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`when the IVM client connects to the local IVM server 202 (i.e., is available).”
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`Ex. 1001, 8:24-29; see also id. 9:7-11; 6:66-10:4; 10:45-49; 16:28-33; 17:25-
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`29; 18:12-17; etc. Consistent with that description, the challenged claims use
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`the word “recipient” to distinguish the receiving client from the sending client.
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`VI. VALIDITY ANALYSIS
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`A. No obviousness for a “local network” and a distinct “external
`network” arranged as claimed (independent Claims 14, 28, 51,
`and 62)
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`29. The Board observed that “[i]n each of independent claims 14, 28,
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`51, and 62, the preamble features the recitation ‘a plurality of packet-switched
`
`networks’ and the body of the claim requires both a ‘local network’ and an
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`‘external network.’ Ex. 1001, 25:25:21-39, 27:6-28, 30:8-30, 32:6-31.” Paper
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`9 at 23. The Board further observed that “Petitioner assumes that the preamble
`
`is limiting and correspondingly takes the position that each of the ‘local
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`network’ and ‘external network’ must be a packet-switched network.” Id.
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`Regardless whether the Board decides to construe the preamble as Petitioner
`
`proposes, in my opinion, the proposed combination does not render obvious
`
`the specifically-arranged and expressly-distinct “local network” and “external
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`network”, as recited in most of the challenged claims.
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`30. The relevant challenged claims differ from each other at least in
`
`terms of which element is connected to which network. Nevertheless, as a
`
`point of commonality, all the relevant claims require a heterogeneous network
`
`architecture comprising different types of networks—i.e., both a “local
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`network” and an “external network.” Each claim differentiates the sending
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`“client” device from the “recipient” device(s) at least in that the “client” and
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`the “one or more recipients” are respectively connected to mutually-exclusive
`
`ones of either “a local network” or “an external network.” See, e.g., Ex. 1001,
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`25:21-40, (Claim 14); 27:6-28 (Claim 28); 30:8-30 (Claim 51); 32:6-31
`
`(Claim 62).
`
`31. As recited in independent Claim 14, for example, the sending
`
`“client [is] connected to a local network” and the “one or more recipients [are]
`
`connected to an external network.” Claim 14 further recites a server is also
`
`“connected to the external network” and delivers “the instant voice message
`
`to the selected recipients over the external network.”
`
`32.
`
`In independent Claim 28, however, the sending “client [is]
`
`connected to an external network” and the “one or more recipients [are]
`
`connected to a local network.” Claim 28 further recites “an external server
`
`system connected to the external network” and a “local server connected to
`
`the local network.”
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`14
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`33. For independent Claims 14, 28, 51, and 62, the Petition generally
`
`argues that Malik’s voice message delivery system of Figure 3 could possibly
`
`be implemented, instead, with what Malik identifies as the “open instant [text]
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`messaging architecture of the prior art” of Figure 2. Pet. 37. I disagree with
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`Petitioner’s underlying factual argument that Figure 2 of Malik discloses a
`
`heterogeneous network architecture as claimed and that the differing
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`architectures of Figures 2 and 3 are interchangeable.
`
`1. Malik uses a homogenous network design in both
`Figures 2 and 3
`
`34. Malik discloses that in each system design of Figures 2 and 3 the
`
`sending and receiving clients all communicate over an all-encompassing
`
`network. Malik explicitly identifies the text messaging system of Figure 2 as
`
`“a prior art IM network” in the singular. Ex. 1007, 2:49-51. The Figure 2
`
`network is represented by identically-looking interconnecting arrows, which
`
`a POSA would understand as referring to the same type of network. The only
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`interconnecting network Malik specifically identifies for Jabber Clients 200-
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`205 and Jabber Servers 215-217 of Figure 2 is the worldwide Internet, which
`
`is not a type of “local network” in the context of the ’890 patent. See, e.g., Ex.
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`1007, 2:54-58). Similarly, in Figure 3 of Malik, VIM clients 310 and 320 each
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`communicate with VIM server 330 over the same communication network
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`325. Malik’s consistent use of a same network type to interconnect all the
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`15
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`respective components of Figures 2 and 3 would lead a POSA away from a
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`heterogeneous architecture requiring both a “local network” and an “external
`
`network”.
`
`35.
`
`I also disagree with the Petition to the extent it interpreted
`
`Malik’s reference to Jabber Server 215 of Figure 2 as a “local IM server” as
`
`meaning that the client-side connection to Jabber Server 215 is over a “local
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`network” as claimed. Pet. 34. Malik explains elsewhere, with reference to
`
`Figure 2, that “[e]ach Jabber client 200-205 is attached to a local Jabber server
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`215-217.” Ex. 1007, 2:67-3:1. A POSA would understand from that disclosure
`
`that the word “local” as used in Malik refers to a specific attachment or
`
`assignment between each Jabber Client 200-205 and its respective Jabber
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`Server 215-217 (i.e., regardless of the interconnecting network). Further, as I
`
`noted above, Malik teaches that the network interconnecting each Jabber
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`Client 200-205 to its respective Jabber Server 215-217 is the Internet, which
`
`is not a type of “local network” as recited in the claims. See, e.g., Ex. 1007,
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`2:57-58).
`
`2. Malik disparages Figure 2 as “prior art” lacking certain
`capabilities of Figure 3
`
`36. Yet another reason a POSA would not consider the systems of
`
`Figures 2 and 3 interchangeable is that Malik disparages Figure 2 as “prior
`
`art” that lacks certain capabilities of Figure 3. Ex. 1007, 3:24-31. Malik further
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`16
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`differentiates Figure 3 from Figure 2 by identifying as a technical advantage
`
`the use of only “a single VIM server 330 providing directory services as well
`
`as message queuing and delivery.” Ex. 1007, 5:14-20.
`
`37. The statement in Malik that “the VIM server 330 of [Figure 3]
`
`may act … as a Jabber Server 215 of [Figure] 2” does not support Petitioner’s
`
`conclusions. Ex. 1007, 4:45–47. That statement
`
`is directed, rather
`
`ambiguously, towards how VIM server 330 may act in certain circumstances,
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`as opposed to how it is interconnected to its clients. I find it significant, in
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`interpreting that statement, that Malik states its VIM server 330 of Figure 3
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`requires new voice instant messaging (VIM) capabilities in addition to the
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`instant messaging (IM) capabilities of conventional servers: “the VIM server
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`330 includes the capabilities of conventional IM servers and the additional
`
`capabilities for handling VIM message delivery and storage.” Ex. 1007, 4:45-
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`53. Dr. Forys appears to agree with me on this point. Ex. 2002 (Forys Depo)
`
`55:17–21 (“Q And you agree that the VIM server 330 enabled new VIM
`
`functionality beyond what conventional IM servers provided? A Yes. It builds
`
`on it. That is the whole point.”).
`
`38. Given the dual IM and VIM functionality of the VIM server 330,
`
`the most plausible interpretation, in light of the disclosure, is that the VIM
`
`server 330 “acts” as a legacy Jabber Server 215 by continuing to enable the
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`“prior art” IIVI functionality described with reference to Figure 2- Here again,
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`Dr. Forys appears to agree. Ex. 2002 (Forys Depo) 55:11—16 (Q “does the
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`VIM server 330 act as a local Jabber Server 215 if it is providing the instant
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`messaging capabilities? Is that one way it can act? A Instant messaging. It
`
`could act that way, yes”). A VIM server 330 may act in this manner using the
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`single-server architecture emphasized in Figure 3, as shown by the
`
`annotations below:
`
`'.I J —_ ‘
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`(VIM server 330 includes 2,35 _
`IM functionality of
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`Jabber Server 215)
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`|/
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`39. As shown above, even when VIM server 330 acts as a Java Sever
`
`215, both VIM clients 310 and 320 are still interconnected with VIM server
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`330 over communication network 325. This is true regardless whether
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`
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`multiple distributed VIM servers 330 are used. Applying the teachings of
`
`Malik to a hypothetical distributed scenario, each client would still be
`
`interconnected to its server over communication network 325. The consistent
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`use of communication network 325 for client-server interconnections is
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`distinguishable from, and does not render obvious, a “client” and “recipient”
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`respectively connected to expressly differentiated network types: either a
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`“local network” or a “external network.”
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`3. Väänänen does not supply the missing elements
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`40.
`
`I have reviewed Väänänen and do not find that it supplies the
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`missing arrangement of a “client” and “recipient” connected to mutually-
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`exclusive ones of either a “local network” or an expressly-distinct “external
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`network.” The sole quotation from Väänänen offered in the Petition states that
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`the same type of network is used to connect the “terminals” and “servers”
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`together: “the communications connections used between the terminal and the
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`servers … are typically compliant with … LAN.” Pet. 34. That statement fails
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`to disclose, and teaches away, from the heterogeneous architecture recited in
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`the claim language.
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`41. The above deficiencies (¶¶29-40) apply in general to all
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`recitations of the claim terms “local network” and “external network.” In the
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`paragraphs that immediately follow I provide examples of additional claim-
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`
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`specific reasons to conclude the cited art does render the relevant claims
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`obvious.
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`4. Additional Structural Distinctions of Claim 28
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`42. Among other meaningful distinctions, the transmission recited in
`
`Claim 28 involves routing the instant voice message and the selected
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`recipient(s) from an external server system (connected to the external
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`network) to a local server (connected to the local network). Among other
`
`missing limitations (addressed above), the Petition does not address the
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`recited distinction between the “external server system” and the “local
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`server.” None of the citations relied upon in the Petition render obvious an
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`“external server system” as claimed; and I note that Petitioner and its declarant
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`do not argue otherwise.
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`43. The intrinsic record confirms the distinction made by the
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`“system” qualifier is limiting and cannot be overlooked. The ’890 patent
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`illustrates, for example, global IVM server system 502 in the broader context
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`of a global instant voice messaging system 500. See Ex. 1001, Fig. 5. The
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`’890 patent further dedicates Figure 6 and its accompanying detailed
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`description of an embodiment of that global IVM server system 502. Id., Fig.
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`6 and accompanying description. The description of Figure 6 explains, as one
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`would expect, that the global IVM server system 502 includes a system of
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`servers interoperating for the specific purpose of instant voice messaging. Id.
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`44. The “routing” limitations recited in Claim 28 provide yet another
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`non-obvious distinction that the Petition appears to overlook. Claims 28
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`recites that the “external server … rout[es] the selected recipients and the
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`instant voice message over the external network and local network.” For the
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`“routing” limitations, the Petition argues that “[t]he VIM server [in Malik]
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`needs the recipient information for routing purpose [sic] (i.e., determine where
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`to forward the message).” Pet. 48. However, Malik teaches just the opposite
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`by disclosing a remote proxy gateway 350 is used to look up which recipient
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`device had been predesignated by the receiving user to whom the instant voice
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`message is intended. Ex. 1007, 10:9-14.
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`B. No obviousness for “the client selecting one or more
`recipients” (independent Claims 1, 14, 28, 40, 51, and 62,
`dependent Claims 15 and 29)
`
`45. All challenged independent Claims 1, 14, 28, 40, 51, and 62
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`recite a limitation directed to recipient selection by “the client”—i.e., the same
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`client that both generates and transmits the instant voice message. The Petition
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`concedes, and I agree, that Malik does not disclose recipient selection. Pet. 4.
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`Relying on alleged teachings of Väänänen, Petitioner and its declarant appear
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`to argue that because Malik admittedly does not disclose recipient selection,
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`a POSA would be motivated to seek out ways to implement this nondisclosed
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`feature. Pet. 4. As a general matter, I find it unreasonable to conclude that the
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`absence of a teaching somehow would necessarily inspire a POSA to even
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`think of that deficiency, let alone search for a way to overcome it.
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`1. Malik teaches away from the proposed modifications
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`46. The alleged motivation is also problematic because Malik
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`discloses its system is designed to exchange a voice instant message or “VIM”
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`responsively to “a VIM invitation” instigated by the recipient. Ex. 1007, 4:33-
`
`41. At the outset of the Detailed Description section, Malik states that i