`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 IPR2017-00221
`Patent 7,535,890 B2
`____________
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BEGLEY, Administrative Patent Judge.
`
`
`
`DECISION
`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.
`
`
`
`
`
`
`IPR2017-00221
`Patent 7,535,890 B2
`
`
`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.” For the reasons given below, we determine that Petitioner has
`demonstrated a reasonable likelihood that it would prevail in establishing
`that all challenged claims of the ’890 patent are unpatentable, and we
`institute an inter partes review of the challenged claims.
`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. 71–72; see Paper 4, 2. Before the Office, the ’890 patent also
`is the subject of IPR2017-00220, 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
`switched telephone network environments are known. Ex. 1001, 2:11–35.
`
`
`
`2
`
`
`
`IPR2017-00221
`Patent 7,535,890 B2
`
`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.
`at 7:13–14, 7:51–55. Local IVM server 202 enables instant voice messaging
`functionality over network 204. Id. at 7:53–55.
`
`
`
`3
`
`
`
`IPR2017-00221
`Patent 7,535,890 B2
`
`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.
`
`
`
`4
`
`
`
`IPR2017-00221
`Patent 7,535,890 B2
`
`
`C. ILLUSTRATIVE CLAIMS
`Of the challenged claims, claims 1, 14, 28, 40, 51, and 62 of the
`’890 patent are independent. Claims 1 and 28, reproduced below, are
`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.
`
`28. An instant voice messaging system for delivering instant
`messages over a plurality of packet-switched networks, the
`system comprising:
`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; and
`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;
`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
`
`
`
`5
`
`
`
`IPR2017-00221
`Patent 7,535,890 B2
`
`
`to the selected recipients over 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.
`Id. at 23:55–24:3, 27:6–28.
`D. EVIDENCE OF RECORD
`The Petition relies upon the following asserted prior art references:
`U.S. Patent No. 7,123,695 B2 (filed Aug. 19, 2002) (issued Oct. 17,
`2006) (Ex. 1007, “Malik”);
`
`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”).
`
`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. 3.
`
`
`2 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29,
`125 Stat. 284, 287–88 (2011), revised 35 U.S.C. § 103, effective March 16,
`2013. Because the patent 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 throughout this decision.
`6
`
`
`
`
`
`IPR2017-00221
`Patent 7,535,890 B2
`
`
`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
`
`6, 20, 34, 43, 54, 65
`68
`
`References
`Basis
`§ 103 Malik and Väänänen
`
`§ 103 Malik, Väänänen, and
`Deshpande
`§ 103 Malik, Väänänen, and Abburi
`§ 103 Malik, 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
`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,
`
`
`
`7
`
`
`
`IPR2017-00221
`Patent 7,535,890 B2
`
`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. 19–21. Patent Owner does not proffer any terms for
`construction. Based on our review of the record before us, we determine
`that no claim terms require an express construction to resolve the issues
`currently 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”).
`C. DISCRETION TO DECLINE TO INSTITUTE (35 U.S.C. §§ 314(A), 325(D);
`37 C.F.R. § 42.108(A))
`Patent Owner urges us to decline to institute the Petition for two
`reasons. Prelim. Resp. 9–18. First, Patent Owner contends that the Petition
`is nearly identical to the petition filed in IPR2017-00220, which challenges
`the same claims of the ’890 patent based on the same prior art references
`except that Malik is replaced with U.S. Patent Application Publication No.
`2002/0146097 A1 (Exhibit 1005, “Vuori”). Id. at 9–11. Patent Owner
`argues that although Petitioner represents that Malik teaches the “local
`server” recited in independent claims 28 and 62 and dependent claim 15
`more clearly than Vuori, this is merely a “contrived explanation for its
`redundancy” for a subset of the challenged claims that does not justify
`dedicating the Board’s resources to the duplicative two asserted grounds per
`8
`
`
`
`
`
`IPR2017-00221
`Patent 7,535,890 B2
`
`claim. Id. at 12–13, 16–17. Patent Owner also argues that Petitioner’s
`backup arguments within the instant Petition, which assert that alternative
`prior art references teach various limitations of the challenged claims, create
`an unnecessary multiplication of work for the Board and Patent Owner. Id.
`at 13–15.
`
`Here, across the concurrently filed petitions in the instant proceeding
`and IPR2017-00220, Petitioner asserts a total of two grounds of
`unpatentability for each of the twenty-nine challenged claims. E.g., Pet. 2–
`4. We are not persuaded by Patent Owner’s arguments that these cases
`present an unjustified duplication of asserted grounds, given that each
`petition explicitly addresses relative strengths and weaknesses of Malik, the
`main asserted prior art reference in the instant case, and Vuori, the main
`asserted prior art reference in IPR2017-00220. E.g., id. More importantly,
`in our institution decision in IPR2017-00220, issued simultaneously with
`this decision, we determine Petitioner has not met its burden for institution
`as to any of the challenged claims, and do not institute inter partes review in
`that case. In light of the denial of institution in IPR2017-00220, Patent
`Owner’s allegations of an unnecessary multiplicity of asserted grounds,
`however unpersuasive before, are now a moot concern. Moreover, we are
`not aware of any other proceedings challenging the ’890 patent before the
`Office. Under the circumstances of this case and having considered Patent
`Owner’s assertions on the issue, we decline to exercise our discretion not to
`institute the Petition. See, e.g., 37 C.F.R. § 42.108(a); 35 U.S.C. § 314(a).
`Second, Patent Owner asks us to decline to institute under 35 U.S.C.
`§ 325(d), because a continuation application of Malik, which shares Malik’s
`specification, was considered during prosecution of the ’890 patent and is
`
`
`
`9
`
`
`
`IPR2017-00221
`Patent 7,535,890 B2
`
`listed on the face of the ’890 patent. Prelim. Resp. 15–16; see Ex. 1001,
`[56]. Pursuant to 35 U.S.C. § 325(d), “[i]n determining whether to institute
`. . . a proceeding . . . , the Director may take into account whether, and reject
`the petition or request because, the same or substantially the same prior art
`or arguments previously were presented to the Office.”
`Here, Patent Owner provides no details regarding the extent to which
`the continuation application of Malik was considered and relied upon during
`prosecution. Based on our review of the prosecution history, we find that
`the application was cited twice in a Notice of References Cited and
`mentioned once in an Office Action in which the Examiner stated that the
`reference was “not relied upon” but was “considered pertinent to the
`applicant’s disclosure.” Ex. 1002, 47, 195, 197. Having considered these
`citations to—without any evident substantive analysis or reliance upon—the
`continuation application of Malik during prosecution, we determine that
`rejection of the Petition under 35 U.S.C. § 325(d) is not warranted.
`D. ALLEGED OBVIOUSNESS OVER MALIK AND VÄÄNÄNEN
`Petitioner argues Malik and Väänänen render obvious claims 1–3, 5,
`14, 15, 17, 19, 28, 29, 31, 33, 40, 42, 51, 53, 62, and 64. Pet. 19–58.
`1. Overview of Malik
`
`Malik explains that in many prior art instant-messaging (“IM”)
`systems, including Jabber, when an instant message is sent to a user that is
`not present on the network, servers have the capability to hold the message
`in a queue and deliver it “to the user as soon as the user is present.”
`Ex. 1007, 2:40–41, 2:60–67, 3:16–23. Figure 2 of Malik is reproduced
`below.
`
`
`
`10
`
`
`
`IPR2017-00221
`Patent 7,535,890 B2
`
`
`
`Figure 2 depicts a prior art IM network using the Jabber “client-server”
`architecture, which contains “distributed network servers,” namely local
`Jabber servers 215–217, and Jabber clients 200–205. Id. at 2:49–3:1, 3:66–
`67. Clients 200–205 send and receive messages, and Jabber servers 215–
`217 deliver the messages in “real time.” Id. at 2:56–67. “Each local Jabber
`server 200–205 performs two main functions: listening for and
`communicating directly with Jabber client applications 200–205, and
`communicating with other Jabber servers 215–217” that are “connected to
`the Internet.” Id. at 3:5–12; see id. at 2:58–59.
`
`According to Malik, prior art IM systems do not allow non-text instant
`messages, such as voice instant messages (“VIM”), to be “stored in a queue
`for later immediate delivery” when the recipient becomes available. Id.
`at 3:24–31. Malik seeks to address this alleged need in the art with its
`disclosed systems and methods for generating and sending voice instant
`messages. Id. at [57], 3:24–46. Figure 3 of Malik is included below.
`
`
`
`11
`
`
`
`IPR2017-00221
`Patent 7,535,890 B2
`
`
`
`Figure 3 is a block diagram of a representative embodiment of voice
`message delivery system 300, which includes VIM client 310 of a first user,
`VIM client 320 of a second user, and VIM server 330. Id. at 4:25–35.
`“Each VIM client 310, 320 communicates with . . . VIM server 330 via the
`Internet or some other communication network 325.” Id. at 4:42–44.
`The VIM clients are configured to “receive and play a voice recording
`. . . in a voice instant message” as well as “to generate a voice recording . . .
`and include the voice recording in an instant message upon accepting a VIM
`invitation.” Id. at 4:29–37; see id. at 6:65–67, Fig. 5. A VIM invitation is a
`message transmitted from one VIM client to another that “invites or
`prompts” the generation of a voice recording, for example, from VIM
`client 310 of the first user to VIM client 320 of the second user “invit[ing] or
`prompt[ing] . . . VIM client 320 . . . to generate a voice recording for the first
`user.” Id. at 4:37–41.
`
`VIM server 330 “may act as a single IM server . . . or a local IM
`server, such as . . . Jabber Server 215 of F[igure] 2.” Id. at 4:45–47. “VIM
`server 330 includes the capabilities of conventional IM servers and the
`
`
`
`12
`
`
`
`IPR2017-00221
`Patent 7,535,890 B2
`
`additional capabilities for handling VIM . . . delivery and storage.” Id.
`at 4:51–53. In a preferred embodiment, when a user is not present and
`available, a voice instant message may be stored in queue 340 of VIM
`server 330 and “delivered to the user the next time that the user connects to”
`the network. Id. at 5:20–24.
`
`Malik explains “the functionality of a representative implementation”
`of voice message delivery system 300. Id. at 4:4–6; see id. at 5:43–6:64,
`Fig. 4. A first user “authorizes” users from whom it “will accept voice
`messages,” for example, by specifying users in its contact list (block 410).
`Id. at 4:56–63, Fig. 4. As a result of this authorization, if an authorized user
`attempts to send an instant message to the first user when the first user “is
`not present and/or available, the authorized user may be given the
`opportunity to generate a voice instant message for the first user.” Id.
`at 5:66–6:4.
`
`“[L]ater,” VIM client 320 of the second user “receives a request or
`prompt by the second user to send an instant message to the first user”
`(block 420). Id. at 5:66–6:9, Fig. 4; see id. at 12:51–52, 14:12–13. Such a
`request typically “is generated after the second user attempts to initiate the
`transmission of the instant message.” Id. at 6:9–11. VIM client 320 detects
`that the first user “is not present and/or available” and then checks if it is
`“capable of generating a voice recording” as well as the voice contact
`parameters of the first user to see if “the second user is authorized . . . to
`leave a voice instant message for the first user” (blocks 425, 430, 435, 440,
`445). Id. at 6:11–23, Fig. 4. If so, VIM client 320 “invites or prompts the
`second user to leave a voice message” for the first user (block 450). Id.
`at 6:31–35, Fig. 4. “[I]f the second user accepts the VIM invitation,” the
`
`
`
`13
`
`
`
`IPR2017-00221
`Patent 7,535,890 B2
`
`second user “generates a voice recording” (block 460). Id. at 6:39–46.
`After a voice instant message is generated from the recording (block 470),
`the message is sent to VIM server 330 and stored in VIM queue 340
`(block 475). Id. at 6:47–59. Next, “VIM server 350 detects when the first
`user is present and/or available to receive instant messages again”
`(block 480). Id. at 6:59–62; see id. at 7:1–3. After the first user becomes
`present, VIM server 330 “delivers the voice instant message” from its
`queue 340 to VIM client 310 of the first user (block 485). Id. at 6:62–64,
`7:3–5, Fig. 5.
`
`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. This recipient
`selection may occur through the “simple press of a button,” “labeling the
`recipient with a pointer from the ‘contacts’ file of the terminal device,”
`“speech recognition, a dedicated keyboard accelerator, hot key, dedicated
`key,” or any combination thereof. Id. at 6:5–11; see id. at 2:28–29. Then,
`the subscriber terminal may establish a packet-switched connection to the
`server, which may be implemented using, for example, LAN, TCP/IP, or
`General Packet Radio Service (“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, such as a Waveform Audio File
`Format (“WAV”) file (phase 140). Id. at 7:10–13; see id. at 3:3–5.
`
`
`
`14
`
`
`
`IPR2017-00221
`Patent 7,535,890 B2
`
`
`After the message is completed and the connection is disconnected
`(phase 150), the server relays the message to the recipient(s) (phase 160).
`Id. at 7:16–26. “If the recipient terminal is capable of receiving the data file,
`which means typically having a packet[-]switched access to the recipient
`device,” as opposed to a circuit-switched connection, “the message may be
`sent with a[] packet[-]switched connection, like IP, through the Internet, or
`through some other closed network.” Id. at 7:25–32. Next, the recipient(s)
`receive the message (phase 170). Id. at 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. The server may send delivery status information to the sending
`terminal, such as “which messages got delivered, which did not, and how
`long will the messages remain in the network.” Id. at 8:20–24.
`
`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.
`
`
`
`15
`
`
`
`IPR2017-00221
`Patent 7,535,890 B2
`
`
`3. Discussion
`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). As the Supreme Court
`explained in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), 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.” 550 U.S. at 418. Rather, “it can be important to identify a reason
`that would have prompted a person of ordinary skill in the relevant field to
`combine the elements in the way the claimed new invention does.” Id. In
`other words, “there must be some articulated reasoning with some rational
`underpinning to support the legal conclusion of obviousness.” Id. (quoting
`In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); see In re Magnum Oil
`Tools Int’l, Ltd., 829 F.3d 1364, 1380–81 (Fed. Cir. 2016).
`a. Disputed Limitations
`Patent Owner substantively addresses and disputes only limitations of
`
`challenged independent claims 28 and 62 and dependent claim 15 of the
`’890 patent. Prelim. Resp. 18, 21, 23, 26, 28. Patent Owner, however,
`contends that the substantive deficiencies it alleges apply to other challenged
`claims. See id. at 18 (“Notably, the substantive deficiencies identified herein
`similarly apply to most, if not all, of the other challenged claims . . . .”); id.
`at 23, 28. Accordingly, in our analysis below, we treat Patent Owner’s
`arguments as applying to each challenged claim that recites limitations
`
`
`
`16
`
`
`
`IPR2017-00221
`Patent 7,535,890 B2
`
`corresponding to those of claims 15, 28, and 62 for which Patent Owner
`specifically contests Petitioner’s showing.
`i. Selecting One or More Recipients (Independent Claims 1,
`14, 28, 40, 51, and 62, Dependent Claims 15 and 29)
`Challenged independent claims 1, 14, 28, 40, 51, and 62 and
`dependent claims 15 and 29 each recite a limitation directed to recipient
`selection by the client. In particular, claims 1 and 28 each recite “the client
`selecting one or more recipients.” Ex. 1001, 23:58–60, 27:9–10. Claim 40
`similarly includes the step of “selecting one or more recipients for instant
`voice messaging at a client.” Id. at 28:23–24. Independent claims 14, 51,
`and 62, as well as dependent claims 15 and 29, feature similar recipient
`selection limitations that specify the recipient location, such as “external
`recipients connected to an external network” or local “recipients connected
`to a local network.” Id. at 25:24–43, 27:29–31, 30:10–11, 32:9–10.
`In addressing these limitations, Petitioner refers to Malik’s disclosure
`that “VIM client 320 of the second user receives a request or prompt by the
`second user to send” a message to the first user. Pet. 23, 27 (quoting
`Ex. 1007, 6:7–9); see id. at 36–39, 41–47, 50–58. According to Petitioner
`and Dr. Forys, given that “Malik does not explain in detail” how the second
`user “could input information to VIM client 320 to designate the first user”
`as the message recipient, one of ordinary skill in the art would have been
`motivated to seek out ways in which a user could do so, such as Väänänen’s
`teachings. Id. at 23, 27; Ex. 1003 ¶¶ 261, 269. Petitioner asserts and
`Dr. Forys opines that Väänänen discloses various well-known techniques to
`input recipient information by selection, i.e., “to select at least one recipient”
`for an instant voice message. Pet. 23–24, 27–28 (quoting Ex. 1008, 2:28–
`29, 6:5–11); Ex. 1003 ¶¶ 261–262, 269–270.
`17
`
`
`
`
`
`IPR2017-00221
`Patent 7,535,890 B2
`
`
`Petitioner and Dr. Forys represent that it would have been obvious to
`incorporate Väänänen’s teaching of recipient selection into Malik’s system
`because not only do the references apply similar techniques to instant voice
`message delivery, but also a person of ordinary skill in the art would have
`understood that such incorporation would “improve usability” and be “more
`convenient.” Pet. 24, 28; Ex. 1003 ¶¶ 263–265, 271–272. As support,
`Petitioner refers to Väänänen’s statement that recipient selection can consist
`of a “simple press of a button.” Pet. 24, 28 (quoting Ex. 1008, 2:31–32);
`Ex. 1003 ¶¶ 263, 271–272. In addition, Petitioner argues and Dr. Forys
`opines that incorporating Väänänen’s recipient selection techniques into
`Malik’s system would have been nothing more than applying a known
`technique to a “known method (Malik’s request or prompt to send a message
`to a recipient” ready for improvement “to yield predictable results (request
`or prompt to send a message to a recipient by selection),” making it obvious
`under KSR. Pet. 24 (citing KSR, 550 U.S. at 417); Ex. 1003 ¶¶ 263, 272.
`Patent Owner disputes Petitioner’s proffered motivation to combine
`Väänänen’s teaching of recipient selection with Malik’s system. Prelim.
`Resp. 23, 25. Patent Owner focuses on Malik’s disclosures regarding a VIM
`invitation in column 4, lines 33–41, which state that VIM client 320
`“generate[s] a voice recording . . . upon accepting a VIM invitation,” i.e., a
`message “transmitted by the VIM client 310 of the first user to the VIM
`client 320 of the second user, wherein the message invites or prompts the
`VIM client 320 of the second user to generate a voice recording for the first
`user.” Id. at 24 (quoting Ex. 1007, 4:33–41). Patent Owner interprets this
`passage to mean that Malik’s system “requires the recipient (or ‘first user’)
`to request a VIM from a particular sender (or ‘second user’).” Id.
`
`
`
`18
`
`
`
`IPR2017-00221
`Patent 7,535,890 B2
`
`According to Patent Owner, the recipient in Malik “is granted sole control
`over when and from whom” a VIM is received and “[t]he sender may . . .
`only send the VIM where directed”—“without having the option” to select
`recipients. Id. at 24–25. Patent Owner asserts that it would not have been
`obvious to modify Malik as Petitioner proposes because, in contrast to
`Petitioner’s representations, Malik does not “disclose,” “contemplate,” or
`“even suggest” allowing the sender to select recipients and instead “teaches
`away from such a concept.” Id. at 25.
`To begin, we note that Patent Owner does not dispute Petitioner’s
`contention that Väänänen teaches the recipient selection required by
`independent claims 1, 14, 28, 40, 51, and 62 and dependent claims 15 and 29
`of the ’890 patent. See id. at 23–26. At this stage of the proceeding, we
`agree with Petitioner’s showing that Väänänen teaches the requisite recipient
`selection based on its disclosures regarding a user at a subscriber terminal
`“select[ing]” or “choos[ing]” “at least one recipient” for an instant voice
`message, as well as several methods to do so including “simpl[y] press[ing]
`. . . a button” to designate the recipients in the terminal’s “contacts book.”
`Ex. 1008, 2:28–29, 6:5–11, Figs. 1–2; see Pet. 23–24, 27–28; Ex. 1003
`¶¶ 262, 270. We also are persuaded by Petitioner’s assertions and
`Dr. Forys’s testimony that such selection of a message recipient was well
`known in the art. Pet. 23, 27; Ex. 1003 ¶¶ 262, 270. Indeed, the ’890 patent
`acknowledges that having a user at a client terminal “select one or more
`persons to whom [a] message will be sent” was known. Ex. 1001, 2:31–33;
`see id. at 1:12, 2:23; Constant v. Advanced Micro-Devices Inc., 848 F.2d
`1560, 1570 (Fed. Cir. 1988) (“A statement in a patent that something is in
`
`
`
`19
`
`
`
`IPR2017-00221
`Patent 7,535,890 B2
`
`the prior art is binding on the applicant and patentee for determinations of
`. . . obviousness.”).
`Turning to Malik and Petitioner’s proposed incorporation of
`Väänänen’s teachings into Malik’s system, we are persuaded, on the present
`record, that Malik’s disclosures suggest a client’s user selecting message
`recipients