`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`
`APPLE INC., SNAP INC., FACEBOOK, INC., and WHATSAPP, INC.,
`Petitioner
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner
`
`___________________
`
`Case IPR2017-002211
`Patent 7,535,890
`___________________
`
`
`
`
`
`
`PETITIONER APPLE INC.’S
`REPLY TO PATENT OWNER RESPONSE
`
`
`
`
`
`
`Mail Stop “Patent Board”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`1 Snap Inc., who filed a petition in IPR2017-01612, as well as Facebook, Inc. and
`WhatsApp, Inc., who filed a petition in IPR2017-01636, have been joined as
`petitioners in this proceeding.
`
`
`
`
`
`

`

`B.
`
`TABLE OF CONTENTS
`Introduction ......................................................................................................... 1
`I.
`II. PO relies on unreasonably narrow claim construction for local and external
`networks and recipients unsupported by the specification. ................................. 1
`A. Nothing in the ’890 Patent requires a “local network” be a different type of
`network than an “external network” – rather their respective locations can
`be structurally and operationally the same.................................................... 1
`“Recipient” simply means recipient client device, its plain and ordinary
`meaning, and not specific client device as proposed by PO. ........................ 4
`III. The prior art teaches or suggests every element of the challenged claims. ........ 5
`A. The prior art teaches or suggests a “local network” and an “external
`network” under either party’s construction................................................... 5
`1. Even assuming that PO’s construction of local and external networks is
`correct, the prior art teaches or suggests different types of network. ....... 5
`It’s obvious to use Malik’s FIG. 3 VIM server in conjunction with
`Malik’s FIG. 2 architecture. ...................................................................... 8
`3. Malik-Väänänen does not teach away from the claims or their obvious
`combination. ............................................................................................11
`4. Malik-Väänänen teaches claim 14. .........................................................12
`5. Malik-Väänänen teaches claim 28. .........................................................13
`B. Malik-Väänänen teaches “the client selecting one or more recipients.” ....18
`1. Malik does not teach away from the claims and its modification based
`on Väänänen. ...........................................................................................18
`2. A POSITA would have been motivated to modify Malik to select one or
`more recipients. .......................................................................................20
`3. Selecting one or more recipients was well-known in the art. .................23
`4. There are no weaknesses in the Malik-Väänänen combination regarding
`teaching or suggesting the challenged claims. ........................................23
`The Malik-Väänänen combination teaches or suggests “transmitting the
`selected recipients.”.....................................................................................24
`IV. Conclusion. ........................................................................................................25
`
`2.
`
`C.
`
`
`
`
`
`Case IPR2017-00221
`U.S. Pat. No. 7,535,890
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`Case IPR2017-00221
`U.S. Pat. No. 7,535,890
`PETITIONER’S UPDATED EXHIBIT LIST
`
`
`EXHIBIT
`
`DESCRIPTION
`
`1001
`
`1002
`
`1003
`
`1004
`
`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`Rojas, U.S. Patent No. 7,535,890 (filed December 18, 2003, issued
`May 19, 2009).
`
`File History for U.S. Patent No. 7,535,890
`
`Declaration of Leonard J. Forys, Ph.D.
`
`Curriculum Vitae of Leonard J. Forys, Ph.D.
`
`Vuori, U.S. Patent Application Publication No. 2002/0146097 (filed
`July 23, 2001, published October 10, 2002).
`
`Wu et al., U.S. Patent Application Publication No. 2002/0023131
`(filed March 19, 2001, published February 21, 2002).
`
`Malik, U.S. Patent No. 7,123,695 (filed August 19, 2002, issued
`October 17, 2006).
`
`Väänänen, WO Patent Publication No. 02/17658 (filed August 20,
`2001, published February 28, 2002).
`
`Deshpande, U.S. Patent Application Publication No. 2003/0046273
`(filed August 28, 2001, published March 6, 2003).
`
`Daniell et al., U.S. Patent Application Publication No.
`2004/0068545, (filed December 19, 2002, published April 8, 2004).
`
`Aoki et al., “The IMX Architecture Interoperability with America
`Online’s Instant Messaging Services,” June 15, 2000.
`
`Excerpts from Microsoft Computer Dictionary, 5th ed. (2002).
`
`Excerpt from Webster’s New World College Dictionary, 4th ed.,
`New York: MacMillan, 1999.
`
`Staack et al., WO Patent Publication No. 02/07396 (filed July 13,
`2000, published January 24, 2002)
`
`
`
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`Case IPR2017-00221
`U.S. Pat. No. 7,535,890
`
`EXHIBIT
`
`DESCRIPTION
`
`1015
`
`1016
`
`1017
`
`1018
`
`1019
`
`1020
`
`1021
`
`1022
`
`1023
`
`1024
`
`Abburi, U.S. Patent Application Publication No. 2003/0147512 (filed
`February 1, 2002, published August 7, 2003).
`
`Old Version of AOL Instant Messenger 2.1 Download, retrieved
`from http://www.oldapps.com/aim.php?old_aim=4#screenshots.
`
`Clarke et. al., Experiments with packet switching of voice traffic,
`IEE Proceedings G - Electronic Circuits and Systems, V.130, N.4 ,
`pp. 105-113 (August 1983).
`
`Sharma, VoP (voice over packet), IEEE Potentials, V. 21, N. 4,
`October/November 2002, pp. 14-17.
`
`Schuh et al., WO Patent Publication No. 2003/024027 (filed August
`21, 2002, published March 20, 2003).
`
`Lotito et al., U.S. Patent No. 4,625,081 (filed November 30, 1982,
`issued November 25, 1986).
`
`Pershan, U.S. Patent No. 5,260,986 (filed April 23, 1991, issued
`November 9, 1993).
`
`Hogan et al., U.S. Patent No. 5,619,554 (filed June 8, 1994, issued
`April 8, 1997).
`
`International Telecommunication Union, General Aspects of Digital
`Transmission Systems, Terminal Equipments, Pulse Code
`Modulation (PCM) of Voice Frequencies, ITU-T Recommendation
`G.711., pp. 1-10 (ITU 1993).
`
`Oouchi et al., Study on Appropriate Voice Data Length of IP Packets
`for VoIP Network Adjustment, Proceedings of the IEEE Global
`Telecommunications Conference (GLOBECOM) 2002, V. 2, Taipei,
`Taiwan, 2002, pp. 1618–1622.
`
`1025
`
`Locascio, U.S. Patent No. 6,603,757 (filed April 14, 1999, issued
`August 5, 2003).
`
`
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`

`EXHIBIT
`
`DESCRIPTION
`
`Case IPR2017-00221
`U.S. Pat. No. 7,535,890
`
`Peersman et al., The Global System for Mobile Communications
`Short Message Service, IEEE Personal Communications (June 2000).
`
`SMPP v3.4 Protocol Implementation guide for GSM / UMTS (May
`30, 2002).
`
`Webster’s New World Dictionary and Thesaurus, 2nd ed. (2002).
`
`Supplemental Declaration of Leonard J. Forys, Ph.D.
`
`Deposition Transcript of William C. Easttom, II
`
`1026
`
`1027
`
`1028
`
`1029
`
`1030
`
`
`
`
`
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`Case IPR2017-00221
`U.S. Pat. No. 7,535,890
`
`I.
`
`Introduction
`The Board should find the instituted claims2 unpatentable. Patent Owner
`
`(“PO”) hangs its arguments on an overly-narrow interpretation of “local network,”
`
`“external network,” and “recipient.” In the end, the prior art meets any
`
`interpretation of these claims.
`
`II.
`
`PO relies on unreasonably narrow claim construction for local and
`external networks and recipients unsupported by the specification.
`A. Nothing in the ’890 Patent requires a “local network” be a
`different type of network than an “external network” – rather
`their respective locations can be structurally and operationally the
`same.
`
`Petitioner
`
`Patent
`Owner
`
`
`
`“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.
`
`First, the POR (11) contradicts the POPR (19) that argued that “external
`
`network” does not need construction by now arguing “the limitation ‘an external
`
`
`2 Table of challenged claims in POR (8) is incorrect as it omits challenged
`
`claims 32 and 41.
`
`
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`Case IPR2017-00221
`U.S. Pat. No. 7,535,890
`network outside the local network…is rendered superfluous by Petitioner’s
`
`proposed construction.”3 (POR, 11, emphasis in original.)
`
`Second, PO ignores the 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 (e.g., reciting
`
`‘an external network outside the local network’.)” (Pet., 10; EX1003, ¶67.) And
`
`’890 Patent FIG. 5 shows “local IP network” and/or an “IP network (Internet).”
`
`Yet this embodiment does not explicitly refer to an “external network.” (’890
`
`Patent, 15:28-38; EX1003, ¶68.) But neither disclosure supports PO’s narrow
`
`construction that “local” and “external” refers to “distinct types of networks.”
`
`Third, Petitioner’s construction is not ambiguous nor does it render claim
`
`language superfluous. PO argues that “the claimed ‘local network’ would also
`
`qualify as an ‘external network’ within Petitioner’s proposed construction at least
`
`to the extent it is outside the external network and therefore ‘outside another
`
`network’” (POR, 10) and that “external” must mean something other than
`
`“outside” because if it does not, “outside the local network” in the claims would be
`
`superfluous. (POR, 11.)
`
`
`3 All emphasis added unless otherwise noted.
`
`
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`Case IPR2017-00221
`U.S. Pat. No. 7,535,890
`The claims support Petitioner’s reciting “an external network outside the
`
`local network.” (’890 Patent, Claims 14, 51.) The plain meaning of the word
`
`“external” further supports this construction. (EX1013, 503 (defining “external” as
`
`“on or having to do with the outside; outer; exterior”); EX1003, ¶65.) Again, the
`
`’890 Patent is silent on “external network” (except the Summary with the same
`
`level of details as the claims.) (EX1003, ¶68.) And FIG. 5 illustrates an IP network
`
`102 that is outside the local IP network 204.
`
`Finally, PO imports limitations from the specification. PO relies on
`
`Biotronik, Inc. et al. v. My Health, Inc., No. IPR2015-00102, Paper 11 (P.T.A.B.
`
`April 16, 2015) and argues that “Petitioner’s proposed construction should be
`
`rejected as unnecessarily injecting ambiguity for terms that otherwise have
`
`definitive contexts.” (POR, 10.) Here, unlike Biotronik, Petitioner introduces no
`
`ambiguity by construing the term “external network” to mean “a network that is
`
`outside another network.” It is PO (“distinct types of networks”) that introduces
`
`ambiguity as the ’890 Patent provides no insight into what “types” means in their
`
`“distinct types of networks.” Biotronik, Paper 11, 7-8.
`
`PO relies on EX2002 (35:19−36:2) to argue that Dr. Forys agrees with PO’s
`
`construction. (POR, 8-9.) But Dr. Forys has defined what local and external
`
`networks mean. (EX2002, 37:10-13 (“Q. Do the claim terms local network and
`
`external network refer to different types of networks? A. Not necessarily.”); 38:5-9
`
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`Case IPR2017-00221
`U.S. Pat. No. 7,535,890
`(“A. It says external. External, the way I defined means external to the network
`
`that the client is connected to. I believe I give a precise definition, but generally
`
`that is what I'm talking about.”); 40:4-11 (“A. …It depends. It is in reference -- an
`
`external means in reference to a referenced network, you’re external to what. And
`
`in this particular case, okay, the reference network is a local network. The external
`
`network which is something beside that could be an internet. It could also be
`
`another local network. It doesn’t say.”).)
`
` “External network” under its BRI means “a network that is outside another
`
`network.” (EX1003, ¶70.) Even if the Board construes the term as proposed by PO,
`
`the prior art teaches or suggests a “local network” and an “external network.”
`
`B.
`
`“Recipient” simply means recipient client device, its plain and
`ordinary meaning, and not specific client device as proposed by
`PO.
`PO again contradicts its POPR contending “recipient” “refers to a specific
`
`client device.” (POR, 11.) PO reads unsupported limitations into the claims in
`
`attempt to circumvent the prior art when no construction is needed.
`
`PO can at best argue that recipient “refers to a client device” (POR, 12) not
`
`“a specific client device.” (POR, 11.) Yet PO leaves unclear why recipient should
`
`be a specific client device – except to avoid the prior art.
`
`PO’s construction is unsupported since the ’890 Patent states “[t]he user then
`
`uses the client terminal to select one or more persons to whom the message will
`
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`Case IPR2017-00221
`U.S. Pat. No. 7,535,890
`be sent and types in a text message.” (’890 Patent, 2:31-33.) Also “IVM client 208
`
`displays a list of one or more IVM recipients on its display 216, provided and
`
`stored by the local IVM server 202” (Id., 7:55-57) and “IVM client 206 displays a
`
`list of one or more IVM recipients on its associated display provided and stored
`
`by the local IVM server 202.” (Id., 8:42-44.) There is no support in the ’890 Patent
`
`specification for construing “recipient” under BRI as “a specific client device.”
`
`If the Board needs to construe the term, “recipient” under BRI is merely “a
`
`recipient client device.”
`
`III. The prior art teaches or suggests every element of the challenged claims.
`A. The prior art teaches or suggests a “local network” and an
`“external network” under either party’s construction.
`Even assuming that PO’s construction of local and external
`1.
`networks is correct, the prior art teaches or suggests different
`types of network.
`PO argues that “Petitioner’s argument that the differing system designs of
`
`Figures 2 and 3 are interchangeable is both irrelevant and factually incorrect.”
`
`(POR, 14.) And the “interchangeability argument is irrelevant because Malik does
`
`not differentiate, in either Figure 2 or Figure 3, the networks interconnecting each
`
`client to its server.” (Id.)
`
`First, PO mischaracterizes the Petition - there is no “interchangeability”
`
`argument. Rather, regarding the “local” and “external” networks, Petitioner argues
`
`
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`Case IPR2017-00221
`U.S. Pat. No. 7,535,890
`that “a POSITA would have found it obvious to incorporate FIG. 3’s Internet into
`
`FIG. 2.” (Pet., 39; EX1003, ¶302.)
`
`Second, even if local and external networks require different types of
`
`networks, Malik and Väänänen discloses client, recipients, and servers connected
`
`to different types of networks. (EX1003, ¶¶288-290, 299-302, 304.) Different types
`
`of networks and distributed server architecture were well-known (Pet., 15-18;
`
`EX1003, ¶¶82-85, 78-81.)
`
`Regarding the “local network,” Malik contemplates that its VIM server can
`
`be a local server. (Pet., 34, Malik, 4:45-47; EX1003, ¶287.) “To the extent that
`
`Malik does not explicitly state that a local VIM server and its VIM clients are
`
`connected through a local network, such connection was well-known in the art,
`
`e.g., as explicitly taught in Väänänen.” (Pet., 34; EX1003, ¶288.) Väänänen states
`
`“[t]he communications connections used between the terminals and the
`
`servers…are typically compliant with…LAN.” (Väänänen, 16:19-23; EX1003,
`
`¶289.) A VIM client of Malik and its VIM server can be connected to a LAN.
`
`(EX1029, ¶¶7, 9-10, 12.)
`
`Regarding the “external network” (under PO’s construction), a Malik VIM
`
`client can be connected to its VIM server using the Internet – a type of “external
`
`network”: “VIM client 310, 320 communicates with…a VIM server 330 via the
`
`Internet.” (Malik, 4:42-45; EX1003, ¶¶291, 301.) The Petition (38-40) discusses
`
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`Case IPR2017-00221
`U.S. Pat. No. 7,535,890
`how a network between VIM client and a VIM server in Malik FIG. 2 can include
`
`an external network, such as the Internet.
`
`In contrast to the PO’s arguments, Malik combined with Väänänen
`
`discloses that client, recipients, and servers can be connected to different types of
`
`networks. In annotated Malik FIG. 2 (Pet., 37), client 200 can be connected to
`
`server 215 using a local network that can be a LAN. Also, recipient 203 can be
`
`connected to server 216 using an external network, which can be the Internet.
`
`PO argues that “Malik’s consistent reliance on the same type of network
`
`interconnecting client and server would
`
`lead a POSITA away from a
`
`heterogeneous architecture.” (POR, 15.) But, aside from heterogeneous not being
`
`claimed or disclosed in the ’890 Patent, PO does not show where or why Malik
`
`
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`Case IPR2017-00221
`U.S. Pat. No. 7,535,890
`criticizes, discredits, or otherwise discourages using a “local network” and an
`
`“external network,” as construed by PO.
`
`PO also argues “[t]he Petition speculates, outside the four corners of Malik,
`
`that each interconnecting arrow in Figure 2 could possibly represent different types
`
`of networks.” (POR, 15, emphasis in original.) But this is inapposite because
`
`Petition demonstrates that the Malik-Väänänen combination explicitly renders the
`
`“local network” and “external network” obvious – even under PO’s unduly narrow
`
`construction. (Pet., 15-18, 34, 36-40, 46-47; EX1003, ¶¶78-85, 288, 296-302, 319-
`
`321.)
`
`2.
`
`It’s obvious to use Malik’s FIG. 3 VIM server
`conjunction with Malik’s FIG. 2 architecture.
`PO argues that “[t]he alleged interchangeability of Malik’s Figures 2 and 3 is
`
`in
`
`also factually incorrect.” (POR, 16.) PO mischaracterizes the Petition regarding the
`
`combination of FIGs. 2 and 3 and fails for two reasons – first, Malik teaches the
`
`improvements of FIG. 3 can be applied to the architecture of FIG. 2 and second,
`
`by adding new capabilities to a prior art architecture, Malik is not teaching away
`
`from utilizing FIG. 2.
`
`a) Malik contemplates that the improvements of FIG. 3
`can be applied to the architecture of FIG. 2.
`
`“VIM server 330 includes the capabilities of conventional IM servers and
`
`the additional capabilities for handling VIM message delivery and storage.”
`
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`Case IPR2017-00221
`U.S. Pat. No. 7,535,890
`(Malik, 4:51-53.) Malik is not replacing the architecture of FIG. 2 with FIG. 3.
`
`Malik is adding new features of FIG. 3 to the architecture of FIG. 2. (Pet., 38-40;
`
`EX1029, ¶16.)
`
`PO relies on Malik (4:51-53) and argues that most plausible interpretation
`
`of Malik is that Malik’s voice message delivery system has the structure of FIG. 3
`
`where the functionality of conventional IM servers are added to the VIM server
`
`330 in FIG. 3. (POR, 17-19.) PO ignores that plausible does not mean only.
`
`First, PO provides one of multiple interpretations - not the only one.
`
`(EX1029, ¶17.) And PO admits this, since most plausible is not only plausible.
`
`Second, VIM server 330’s functionality is one of the improvements of FIG. 3, not
`
`the connection of VIM clients 310/320 to VIM server. (Id.) Malik discloses this
`
`stating “VIM server 330 may act as a single IM server 105 of FIG. 1 or a local IM
`
`server, such as a Jabber Server 215 of FIG. 2.” (Malik, 4:45-47.) So VIM server
`
`330’s functionality can be added to FIG. 1 IM server 105 or a local IM server, such
`
`as FIG. 2’s Jabber Server 215. That is, VIM server 330 can replace FIG. 1’s IM
`
`server 105 or replace a local IM server, e.g., FIG. 2’s Jabber Server. (EX1029,
`
`¶18.)
`
`IVM server 330 can act as FIG. 2’s Jabber Server showing IVM server 330
`
`can be interconnected to clients and other servers similar to FIG. 2’s servers.
`
`(EX1029, ¶19.) Dr. Forys explains “if you read the text it’s clear I'm looking at
`
`
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`Case IPR2017-00221
`U.S. Pat. No. 7,535,890
`column 4, line 45, he says; The DIM server 330 may act as a single IM server 105
`
`for Figure 1 or a local IM server such as Jabber server 215 or Figure 2. So he
`
`allows, he incorporates the prior art architecture of Jabber into his embodiment.”
`
`(EX2002, 52:18–53:2.)
`
`b) Malik does not teach away from FIG. 2 merely by
`adding new capabilities to a prior art architecture.
`
`Malik does not disparage using the FIG. 2 servers, as the POR (16-17)
`
`suggests. Malik explicitly states that the “VIM server 330 may act as…a local IM
`
`server, such as a Jabber Server 215 of FIG. 2” (Malik, 4:45-47) and “VIM server
`
`330 includes the capabilities of conventional IM servers and the additional
`
`capabilities for handling VIM message delivery and storage.” (Malik, 4:51-53.)
`
`Considering Malik as a whole, Malik does the opposite of disparagement – it
`
`suggests the combination of its FIGs. 2 and 3. (Pet. 38-40; EX1029, ¶20.)
`
`PO also argues that “Malik further 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.’” (POR, 17,
`
`emphasis in original.) PO mischaracterizes Malik. Malik discloses that “the voice
`
`message delivery system can be incorporated over many instant messaging
`
`configurations, such as…clients-to-clients, with a single VIM server 330 providing
`
`directory services as well as message queuing and delivery.” (Malik, 5:14-20.)
`
`Malik states that FIG. 1’s closed IM architecture can be client-to-client IM. (Malik,
`
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`Case IPR2017-00221
`U.S. Pat. No. 7,535,890
`2:28-31.) But the “Jabber architecture is based on client-server architecture and not
`
`on a client-to-client architecture, as are most IM systems.” (Malik, 2:64-66.)
`
`Therefore PO’s example of single VIM server used to argue that Malik teaches
`
`away from combining FIGs. 2 and 3 is not even for FIG. 2’s Jabber architecture.
`
`(EX1029, ¶21.)
`
`There is no evidence that Malik teaches away from utilizing concepts from
`
`FIGs. 2 and 3 and instead suggests that FIGs. 2 and 3 complement each other.
`
`3. Malik-Väänänen does not teach away from the claims or
`their obvious combination.
`
`PO argues that both Malik and Väänänen teach away from the claims. (POR,
`
`19-20.) PO’s argument fails for three reasons.
`
`First, Petitioner uses Väänänen (in the context of the networks) to show that
`
`a network between clients and server of Malik can be a local network such as a
`
`LAN. (Pet., 34-35.) Petitioner is not using Väänänen alone to show the networks
`
`and the connections as claimed.
`
`Second, Malik does not teach away from the “local network” and “external
`
`network” of the claims. (See Sections III.A.1 and III.A.2.)
`
`Finally, Väänänen also does not criticize, discredit, or otherwise discourage
`
`using both a “local network” and an “external network” as recited in the claims.
`
`So, Väänänen does not teach away.
`
`
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`Case IPR2017-00221
`U.S. Pat. No. 7,535,890
`
`4. Malik-Väänänen teaches claim 14.
`PO argues that Petitioner has only shown communicating through a local
`
`network and not “client connected to a local network.” (POR, 21.) Interestingly,
`
`PO does not rely on its declarant for support. Instead, the declarant appears to take
`
`the opposite position, stating “Figure 2 network [of Malik] is represented by
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`identically-looking interconnecting arrows, which a POSA would understand as
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`referring to the same type of network.” (EX2001, ¶34.) Regardless, PO is wrong
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`for two reasons.
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`First, Petitioner states “[w]hen the server and its clients are dispersed over a
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`small area such as within a school or a company with one building, POSITA would
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`have found it obvious to connect Malik’s VIM clients to their local VIM server
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`over a LAN.” (Pet., 34.) Malik also discloses that its VIM client and VIM server
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`can include a bridge or a router. (Malik, 7:61-65, 8:53-63.) A POSITA would
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`understand that the VIM client can use a bridge or a router to connect to a local
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`network. (EX1029, ¶8.) So, a POSITA would have found it obvious that Malik’s
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`VIM clients and their local VIM server are all connected to the LAN. (EX1029,
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`¶12.)
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`Second, Väänänen (16:19-23), relied on for invalidity of claims 2 and 14,
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`states “[t]he communications connections used between the terminals and the
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`servers…are typically compliant with…LAN.” And Väänänen teaches using
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`personal digital assistants (PDAs). (Väänänen, 15:27-29). PDAs connect to the
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`Internet using local area networks, e.g., Wi-Fi networks. (EX1029, ¶¶10-11.) So
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`the terminals and servers are connected to the LAN. (EX1029, ¶12.)
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`Finally, PO further argues that “Petitioner’s fundamental rewrite of Malik
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`(using the claim language as a blueprint) ignores the definitive statement in Malik
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`that Jabber Clients 200–205 are connected via the Internet to Jabber Servers 215–
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`217.” (POR, 22-23, emphasis in original.) PO’s interpretation is incorrect. Malik
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`states Jabber Servers 215-217 can be connected to each other through the Internet –
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`not that a client must be connected to its server through the Internet. (Malik, 2:53-
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`58 (“Because Jabber is based on the email system, the Jabber architecture contains
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`distributed network servers, called Jabber servers 215–217 and clients, known as
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`Jabber clients 200–205 that receive and send messages to Jabber clients 200–205
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`connected to other Jabber server 215–217 on the Internet”); 3:5-9 (“Each local
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`Jabber server 215–217 functions independently from one another, and can
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`communicate with any other Jabber server 215–217 that is connected to the
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`Internet as long as it has been identified, and predisposed to do so ahead of
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`time.”).) (EX1029, ¶¶13-15.)
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`5. Malik-Väänänen teaches claim 28.
`PO argues “Petitioner appears to take the position that all it must prove is the
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`presence of any network…and that any server on that network can be
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`characterized…as either an ‘external server system’ or a ‘local server.’” (POR, 24.)
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`This misrepresents the Petition.
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`Petitioner states “it would have been obvious that the network connecting
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`Client 203 and Server 216 could be the Internet, which is a type of ‘external
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`network.’” (Pet., 47.) And “[w]hen Client 200 is on the receiving end, it could be a
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`recipient connected to the LAN connecting Server 215 and its clients, as discussed
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`regarding claim 2.” (Id.) Consider Malik’s annotated FIG. 2 (Pet., 46):
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`
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`Malik identifies no conflict between having the Internet as the network
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`connecting Client 203 and Server 216 and having the LAN as the network
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`connecting Server 215 and its clients. And Petitioner did not read out the words
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`“local” and “external” from the claims, as PO suggests. (POR, 24.) Instead
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`Petitioner explains how the combination of Malik-Väänänen teaches claim 28’s
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`“local” and “external” networks, even with PO’s proposed construction. (Pet., 46-
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`47; EX1003, ¶¶318, 320).
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`PO relies on “Figure 6 and its accompanying detailed description of an
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`embodiment of that global IVM server system” to allege that “the global IVM
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`server system 502 includes a system of servers interoperating for the specific
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`purpose of instant voice messaging.” (POR, 25.) PO fails because PO improperly
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`imports limitations from the Specification to the claims.
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`A server system can include a server with multiple components performing
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`multiple functions, which Malik discloses. (Pet., 16-18, 46-48; EX1029, ¶22.)
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`Malik states that “[e]ach local Jabber server 215-217 consists of multiple
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`components that separately handle individual functions with the Jabber system.”
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`(Malik, 3:13-15.) Also, “[a]ccordingly, the VIM server 330 includes the
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`capabilities of conventional IM servers and the additional capabilities for handling
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`VIM message delivery and storage.” (Malik, 4:51-54) To do both VIM message
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`delivery functionality (capabilities) and message storage functionality (capabilities)
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`would typically require multiple components, i.e., a system. (EX1029, ¶22.) So it is
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`known to use a server with multiple components (a server system) as Jabber server
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`215-217 or VIM server 330. (Id.; Pet., 16-18, 46-48.) Thus, Malik discloses using a
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`server system4. (EX1029, ¶23.)
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`Additionally, distributed server architecture was well-known. (Pet., 16-18,
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`46-48; EX1003, ¶¶82-85.) For example, Jabber servers 216-217 are depicted as
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`being external to local network serving clients 200-201 served by Jabber server
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`215, particularly as servers 215-217 are interconnected by the Internet. (Malik, 3:5-
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`9.) Likewise, VIM server 330 can connect to other VIM servers via the Internet.
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`(Malik, 4:42-44.) “Each local Jabber server 215–217 performs two functions:
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`listening for and communicating directly with Jabber client applications 200–
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`205, and communicating with other Jabber servers 215–217.” (Malik, 3:9-12;
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`EX1029, ¶24.)
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`Additionally, Väänänen discloses a Store and Forward Server Network
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`(SFSN), which “is typically a network of servers.” (Väänänen, 9:14-18.) (Pet.,
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`16-18, 46-48; EX1029, ¶25.) To achieve scalability, one server can relay a
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`message to another server for further delivery: “both the recipient contact
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`4 Deshpande discloses “[a]lthough instant-messaging server 160 is shown to
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`contain only a single processor and a single bus, the present invention applies
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`equally to servers that may have multiple processors and to servers that may
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`have multiple buses with some or all performing different functions in different
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`ways.” (EX1009, ¶21.)
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`information and the message are passed onto the SFSN. In some embodiments
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`where several recipients or at least one group exists, the message may be relayed
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`to some recipients by the original server and to some by the SFSN.” (Väänänen,
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`9:10-14.) (EX1029, ¶25.)
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`Väänänen also discloses that the choice of a server that contacts a recipient
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`is determined by delivery criteria set in the network: “the SFSN servers relay the
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`message to the recipients through the Internet or the Telephony network. The call
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`to the recipient is sometimes made from an optimal server in the SFSN. This may
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`be the closest server or the one with the most inexpensive communications
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`connection to the recipient. The choice of the server making contact with a
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`particular recipient is determined by delivery criteria set in the network.”
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`(Väänänen, 13:1-6.) Väänänen also discloses “[w]hen the same message is
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`delivered to various recipients in different locations, copies of the same message
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`may be routed to several different servers, from which the call is made.”
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`(Väänänen, 13:6-9.) (Pet., 16-18, 46-48; EX1003, ¶82; EX1029, ¶26.) So, Malik-
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`Väänänen contemplate using a server system. (EX1029, ¶27.)
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`B. Malik-Väänänen teaches “the client selecting one or more
`recipients.”
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`POR (26-27) relies on the Petition (23, 27) to allege that Petitioner’s
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`“alleged motivation to combine, and indeed the entire discussion of Malik for this
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`limitation” is only one paragraph. Yet the Petition provides five pages of
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`discussion why Malik-Väänänen teach this limitation. (Pet., 23-25, 27-28;
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`EX1003, ¶¶261-263, 269-272.) PO is wrong that Malik-Väänänen do not teach this
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`claim feature for four reasons.
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`1. Malik does not teach away from the claims and its
`modification based on Väänänen.
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`PO argues that Malik “teaches away from the proposed modification.”
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`(POR, 27.) But Malik does not, and PO does not provide any evidence that Malik
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`criticizes, discredits, or otherwise discourages selecting one or more recipients.
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`PO ignores Malik as a whole to allege that the “Malik system, by intended
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`design, does not allow the generating/transmitting client to select one or more
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`recipients (i.e., devices) for an instant voice message. Rather, in Malik the recipient
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`device for a VIM is predetermined.” (POR, 27, emphasis in original.)
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`Malik FIG. 4 shows “a first user designates in voice contact parameters that
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`the first user will accept voice mess