Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 7
`
`
`
` Entered: 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 IPR2017-00222
`Patent 8,243,723 B2
`____________
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, and
`CHARLES J. BOUDREAU Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`1 The Mandatory Notice filed by Patent Owner pursuant to
`37 C.F.R. § 42.8(a)(2) states that Uniloc USA, Inc. and Uniloc Luxembourg
`S.A. are both Patent Owners and real parties-in-interest. Paper 4.
`Accordingly, the caption shall reflect that the Patent Owner in this
`proceeding encompasses both “Uniloc” entities.
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 7
`
`
`
` Entered: 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 IPR2017-00222
`Patent 8,243,723 B2
`____________
`
`
`
`
`
`
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, and
`CHARLES J. BOUDREAU Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`1 The Mandatory Notice filed by Patent Owner pursuant to
`37 C.F.R. § 42.8(a)(2) states that Uniloc USA, Inc. and Uniloc Luxembourg
`S.A. are both Patent Owners and real parties-in-interest. Paper 4.
`Accordingly, the caption shall reflect that the Patent Owner in this
`proceeding encompasses both “Uniloc” entities.
`
`
`
`IPR2017-00222
`Patent 8,243,723 B2
`
`
`INTRODUCTION
`
`I.
`Apple Inc. (“Petitioner”) filed a Petition requesting inter partes review
`of claims 1−8 of U.S. Patent No. 8,243,723 B2 (Ex. 1001, “the
`’723 patent”). Paper 2 (“Pet.”). Uniloc USA, Inc. and Uniloc Luxembourg
`S.A. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim.
`Resp.”).
`We have jurisdiction under 35 U.S.C. § 314. Upon considering the
`record developed thus far, for reasons discussed below, we institute inter
`partes review of the ’723 patent as to challenged claims 1−7.
`
`A. Related Matters
`The parties indicate that the ’723 patent is involved in Uniloc USA,
`Inc. v. Apple, Inc., Case No. 2-16-cv-00638 (E.D. Tex.) and other
`proceedings. Pet. 75–77; Paper 6.
`
`B. The ’723 Patent
`The ’723 patent relates to Internet telephony, and more particularly, to
`instant Voice over IP (“VoIP”) messaging over an IP network, such as the
`Internet. Ex. 1001, 1:14−17. The ’723 patent acknowledges that “[i]nstant
`text messaging is [] known” in the VoIP and public switched telephone
`network (“PSTN”) environments, with its server presenting the user with a
`“list of persons who are currently ‘online’ and ready to receive text
`messages on their own client terminals.” Id. at 2:19, 30−37. In one
`embodiment, such as depicted in Figure 2 (reproduced below), the system of
`
`2
`
`
`
`IPR2017-00222
`Patent 8,243,723 B2
`
`the ’723 patent involves an instant voice message (IVM) server and IVM
`clients. Id. at 7:19−24.
`
`
`
`Figure 2 illustrates IVM clients 206, 208 and legacy telephone 110
`interconnected via network 204 to the local IVM server 202, where IVM
`client 206 is a VoIP telephone, and where legacy telephone 110 is connected
`to legacy switch 112 and further to media gateway 114. Id. at 6:61–65,
`7:19−41. The media gateway converts the PSTN audio signal to packets for
`
`3
`
`
`
`IPR2017-00222
`Patent 8,243,723 B2
`
`transmission over a packet switched IP network, such as local network 204.
`Id. at 7:45−48. In one embodiment, when in “record mode,” the user of an
`IVM client selects one or more IVM recipients from a list. Id. at 7:53−64.
`The IVM client listens to the input audio device and records the user’s
`speech into a digitized audio file at the IVM client. Id. at 8:1−7. “Once the
`recording of the user’s speech is finalized, IVM client 208 generates a send
`signal indicating that the digitized audio file 210 (instant voice message) is
`ready to be sent to the selected recipients.” Id. at 8:11−14. The IVM client
`transmits the digitized audio file to the local IVM server, which, thereafter,
`delivers that transmitted instant voice message to the selected recipients via
`the local IP network. Id. at 8:1−25. Only the available IVM recipients,
`currently connected to the IVM server, will receive the instant voice
`message. Id. at 8:28−30. If a recipient “is not currently connected to the
`local IVM server 202,” the IVM server temporarily saves the instant voice
`message and delivers it to the IVM client when the IVM client connects to
`the local IVM server (i.e., is available). Id. at 8:30−35.
`The ’723 patent also describes an “intercom mode” of voice
`messaging. Id. at 11:26−29. The specification states that the “intercom
`mode” represents real-time instant voice messaging. Id. at 11:29−30. In this
`mode, instead of creating an audio file, one or more buffers of a
`predetermined size are generated in the IVM clients or local IVM servers.
`Id. at 11:30−33. Successive portions of the instant voice message are
`written to the one or more buffers. Id. at 11:35−43. As the buffers fill, the
`content of each buffer is automatically transmitted to the IVM server for
`
`4
`
`
`
`IPR2017-00222
`Patent 8,243,723 B2
`
`transmission to the one or more IVM recipients. Id. Buffering is repeated
`until the entire instant voice message has been transmitted to the IVM
`server. Id. at 11:48−52.
`
`C. Illustrative Claim
`
`Of the challenged claims, claim 1 is independent. Each of claims 2−8
`depends directly or indirectly from claim 1. Claim 1 is illustrative:
`1. A method for instant voice messaging over a packet-switched
`network, the method comprising:
`
`monitoring a connectivity status of nodes within the packet-
`switched network, said connectivity status being available and
`unavailable;
`
`recording the connectivity status for each of the nodes;
`
`associating a sub-net of the nodes with a client;
`
`transmitting a signal to a client including a list of the recorded
`connectivity status for each of the nodes in the sub-set
`corresponding to the client;
`
`receiving an instant voice message having one or more
`recipients;
`
`delivering the instant voice message to the one or more recipients
`over a packet-switched network;
`
`temporarily storing the instant voice message if a recipient is
`unavailable; and
`
`delivering the stored instant voice message to the recipient once
`the recipient becomes available.
`
`Ex. 1001, 23:55–24:16.
`
`5
`
`
`
`IPR2017-00222
`Patent 8,243,723 B2
`
`
`D. Asserted Prior Art and Grounds of Unpatentability
`
`This proceeding relies on the following prior art references:
`
`a) Vuori: U.S. Patent Appl. Pub. No. US 2002/0146097 A1,
`published Oct. 10, 2002, filed in the record as Exhibit 1005;
`
`b) Malik: U.S. Patent Appl. Pub. No. US 2003/0219104 A1,
`published Nov. 27, 2003, filed in the record as Exhibit 1019;
`
`c) Lerner: U.S. Patent No. 6,192,395 B1, issued Feb. 20, 2001, filed
`in the record as Ex. 1021;
`
`d) Stubbs: PCT Application published as WO 99/63773 on Dec. 9,
`1999, filed in the record as Exhibit 1022; and
`
`e) Abburi: U.S. Patent Appl. Pub. No. US 2003/0147512 A1,
`published Aug. 7, 2003, filed in the record as Exhibit 1023.
`
`Petitioner asserts the following grounds of unpatentability (Pet. 2−3):
`
`Challenged
`Claim(s)
`
`1
`2−7
`8
`1−7
`8
`
`Basis
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`Reference(s)
`
`Vuori
`Vuori and Malik
`Vuori, Malik, and Lerner
`Stubbs and Abburi
`Stubbs and Lerner
`
`Petitioner also relies on a Declaration of Leonard J. Forys, Ph.D., filed
`as Exhibit 1003.
`
`6
`
`
`
`IPR2017-00222
`Patent 8,243,723 B2
`
`
`II. DISCUSSION
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the
`broadest reasonable interpretation standard as the claim interpretation
`standard to be applied in inter partes reviews). Under the broadest
`reasonable interpretation standard, claim terms generally are given their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art in the context of the entire disclosure. See In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We note that only those
`claim terms that are in controversy need to be construed, and only to the
`extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`Petitioner proposes construction for the term “intercom mode.” Pet. 6
`(“a mode for transmitting an instant voice message in realtime”). Patent
`Owner argues that construction of the term is unnecessary. Prelim. Resp.
`18. For purposes of determining whether to institute review, we need not
`construe expressly any term at this time
`
`B. Level of Ordinary Skill in the Art
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`7
`
`
`
`IPR2017-00222
`Patent 8,243,723 B2
`
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(internal quotation and citation omitted). In that regard, Petitioner proffers,
`via its declarant, Dr. Forys, that a person having ordinary skill in the art
`would have “a B.S. 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 in messaging systems,
`data networks including VoIP and mobile telephony, or comparable industry
`experience.” Pet. 5 (citing Ex. 1003 ¶ 31). On the current record, Patent
`Owner does not offer any argument or testimony on the appropriate level of
`ordinary skill in the art.
`We note that Petitioner’s assessment appears consistent with the level
`of ordinary skill in the art at the time of the invention as reflected in the prior
`art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350,
`1355 (Fed. Cir. 2001). For example, Vuori (Ex. 1005) describes short voice
`messaging service in connection with several network environments and
`infrastructures, such as a Global System for Mobile Communications
`(“GSM”), General Packet Radio Service (“GPRS”), and Universal Mobile
`Telecommunication Systems (“UMTS”). Ex. 1005 ¶¶ 35−39, Figs. 3, 6. For
`purposes of this Decision, we adopt Petitioner’s assessment.
`
`C. Obviousness over Vuori Alone or in Combination with Other References
`
`Three of Petitioner’s asserted grounds rely primarily on Vuori as
`teaching or suggesting the limitations of the challenged claims, except for, at
`least, the following recited limitations: “one or more files attached to an
`
`8
`
`
`
`IPR2017-00222
`Patent 8,243,723 B2
`
`audio file” (claim 2), “an intercom mode” (claims 4, 6, 8), and “buffering”
`(claim 8). Pet. 17−43. Petitioner relies on Malik and Lerner as disclosing
`the missing limitations. For example, Malik is alleged to disclose a
`descriptive caption for the voice recording allegedly attached as a file. Id.
`at 21−22. Malik is also relied upon for its disclosure of “Jabber” as a system
`that delivers messages in real time because the service knows when a
`particular client is online and available. Id. at 23−24. Lerner is relied upon
`for its disclosure of four channel buffers and an overflow buffer, where each
`buffer is capable of storing any number of packets from a particular
`participant in a multi-participant event. Id. at 34, 37−43.
`Given our discussion that follows, a short overview of Vuori, Malik,
`and Lerner is in order.
`
`1. Overview of Vuori (Ex. 1005)
`Vuori is titled “Short Voice Message (SVM) Service Method,
`Apparatus and System.” Ex. 1005, [54]. According to Vuori,
`Tiresome entry of numerous letters of the alphabet into a
`hand-held device for assembling a short text message for
`transmission via a short message service (SMS) to a second
`terminal is avoided by the sending of a short voice message
`(SVM). The SVM is recorded in the sending terminal and
`sent to a SVM service center (SVMSC). The SVMSC may
`notify the intended recipient of the arrival of the SVM and
`await acceptance before sending it. The second terminal
`may then commence a bidirectional communication so that
`an instant voice message session can be established.
`Alternatively, the problem can be overcome by converting
`the spoken SVM to text in the user terminal by means of
`voice recognition software and sending the converted text
`to the recipient by means of the traditional SMS
`9
`
`
`
`IPR2017-00222
`Patent 8,243,723 B2
`
`
`infrastructure for display as text or for playback as text
`converted to voice.
`
`
`Id. at Abstract. Figure 2 of Vuori, reproduced below, illustrates the short
`voice messaging method. Id. ¶ 20.
`
`
`
`10
`
`
`
`IPR2017-00222
`Patent 8,243,723 B2
`
`
`According to Figure 2, a user initiates an SVM by pressing a menu
`key on a user equipment, which prepares to receive the SVM and emits a
`beep sound to alert the user he may commence speaking. Id. ¶ 32. The user
`equipment receives and stores the SVM. Id. The user selects one or more
`intended recipients and initiates the transfer. Id. ¶ 33. The SVM is sent to
`the SVMSC, “which determines the availability of the one or more intended
`recipients.” Id. ¶ 34. The SVMSC sends the SVM immediately to the
`intended recipients who are available, and continues attempting to send it to
`those not available until they become available or until a time out occurs.
`Id. Alternatively, the SVMSC notifies the available recipients that an SVM
`has been received, and the recipient may decide to decline or accept the
`SVM received from the sender. Id. ¶ 35. In the embodiment where the
`SVMSC sends the SVM directly to the recipient, the intended recipient has
`acquiesced to availability by previously joining a “buddy list” or otherwise
`has subscribed to the service. Id.
`
`2. Overview of Malik (Ex. 1019)
`Malik relates to a system and method for relaying voice messages
`over a communication network. Ex. 1019 ¶ 2. Malik describes instant
`messaging as “one communication medium that employs presence and
`availability technology.” Id. ¶ 4. As one example of an “open” instant
`messaging (“IM”) architecture, Malik describes Jabber as including an IM
`system focusing on providing IM access to a user. Id. ¶ 7. Jabber delivers
`messages in real time because the Jabber server knows when a particular
`Jabber client is online and available. Id. ¶ 8. Malik also describes that IM
`
`11
`
`
`
`IPR2017-00222
`Patent 8,243,723 B2
`
`services do not allow “for non-text instant messages to be stored in a queue
`for later immediate delivery.” Id. ¶ 11. Malik discloses a voice message
`delivery system where a voice instant messaging (“VIM”) client receives
`and plays voice recordings in a voice instant message it receives from other
`users. Id. ¶ 25. Malik further discloses a VIM server that communicates
`with VIM clients and monitors the presence information of the VIM clients.
`Id. ¶ 26. When a user is not present and available to receive an instant
`message, the voice instant message is stored in a queue of the VIM server
`for the user, such that the voice instant message is delivered the next time
`the user connects to the instant messaging network. Id. ¶ 29.
`
`3. Overview of Lerner (Ex. 1021)
`Lerner is directed to visually identifying speaking participants in a
`
`multi-participant event, such as an audio conference or an on-line game.
`Ex. 1021, Abstract. Figure 1, reproduced below, illustrates a client/server
`computer system incorporating the technology for identifying speakers in a
`multi-participant event. Id. at 4:10−22, 4:49−58.
`
`12
`
`
`
`IPR2017-00222
`Patent 8,243,723 B2
`
`
`
`
`Figure 1 illustrates that each client 22 is associated with a local
`
`participant in the multi-participant event. Id. at 5:23−25. The local
`participant uses input/output device 36 to communicate with remote
`participants via transmission channel 84. Id. at 5:24−27. Sound control
`module 48 routes sound from the local participant to the remote participant
`and receives sound from remote participants. Id. at 5:27−30. To receive
`sound from remote participants, the sound control module includes a
`plurality of receive sound buffers 50 comprising one overflow buffer 54 and
`multiple channel buffers 52. Id. at 5:30−34. Lerner discloses that the
`identity of the participant associated with a packet of sound is used to route
`the packet to the appropriate receive sound buffer. Id. at 5:37−40. For
`example, a packet controller examines each received packet and determines
`
`13
`
`
`
`IPR2017-00222
`Patent 8,243,723 B2
`
`the source identity of the packet. Id. at 9:12−14. The packet controller
`routes the packets to the appropriate channel buffer according to whether the
`channel buffer is reserved for a particular participant. Id. at 9:55−66. A
`visual identification module updates the visual ID representing the
`participants by querying sequentially or sampling each of the channel
`buffers. Id. at 12:43−56.
`With regard to transmitting the sound of the local participant, Lerner
`discloses that,
`Sound from the local participant is stored in a transmit
`sound buffer 62 and routed to the appropriate destination by
`transmit router 64. Transmit router 64 breaks the signal in
`transmit sound buffer 62 into packets and places the
`appropriate header in each packet. Typically, the header
`includes routing information that will cause the packet to be
`sent to server 24 via transmission channel 84. Server 24 will
`then route the packet to all participants in the multi-
`participant event. However, in some embodiments, transmit
`router 64 may direct the packets to other clients 22 directly
`instead of through server 24.
`
`Id. at 5:44−54.
`
`4. Reasonable Likelihood Determination
`After considering Petitioner’s contentions and Patent Owner’s
`arguments in opposition, we are persuaded that Petitioner has demonstrated
`a reasonable likelihood of prevailing in showing that claims 1−7 would have
`been obvious over Vuori in combination with the other applied references.
`We are not persuaded, however, that Petitioner has demonstrated a
`reasonable likelihood of prevailing in its challenge of claim 8.
`
`14
`
`
`
`IPR2017-00222
`Patent 8,243,723 B2
`
`
`Independent Claim 1
`i.
`On this record, we are satisfied that the Petition proffers arguments
`and evidence supporting Petitioner’s contention that Vuori discloses:
`a) Monitoring and recording connectivity status of nodes (Vuori’s
`presence service) (Pet. 9−11);
`b) Receiving an instant voice message (Vuori’s SVMSC receiving an
`SVM from a user terminal) (id. at 15);
`c) Delivering the instant voice message (Vuori’s SVMSC delivering
`the SVM to the recipient for playback) (id.); and
`d) Temporarily storing the instant voice message if the recipient is
`unavailable and delivering the stored instant voice message
`(Vuori’s SVMSC storing temporarily a voice message until it is
`determined that the second terminal is available) (id. at 16−17).
`With regard to the nodes, claim 1 requires “associating a sub-set of
`the nodes with a client.” Ex. 1001, 24:5. Petitioner proffers two arguments.
`First, Petitioner argues that Vuori teaches or suggests the limitation because
`it discloses a “buddy list.” Pet. 11−12. Second, Petitioner argues that
`Vuori’s disclosure of GSM base station subsystems 68 and 70 teaches or
`suggests sub-sets of nodes associated with a client (e.g., mobile station 72).
`Id. Patent Owner responds to these arguments by arguing that (1) Vuori’s
`“enigmatic” buddy list is a way for users to instruct the presence service
`about receiving SVMs, not an association with the sender, and that (2) the
`identified GSM network subsystems are part of a circuit-switched network,
`among other reasons. Prelim. Resp. 21−25. We are not persuaded by the
`former argument, but we are persuaded by the latter.
`15
`
`
`
`IPR2017-00222
`Patent 8,243,723 B2
`
`
`We note that because the claim recites the sub-nodes with regard to
`the “associating” and “transmitting” limitations, we consider as a whole the
`evidence and arguments presented in the Petition for these two limitations
`(Pet. 11−14; Ex. 1003 ¶¶ 117−126). On the record before us, the Petition
`relies on the “buddy list” as being available to a potential sender such that a
`potential recipient of a SVM would allow his/her presence information to be
`transmitted to “all of the nodes associated with that user’s buddy list.” Pet.
`13−14 (relying on Ex. 1003 ¶ 124). Although technical details of the “buddy
`list” are not expounded upon in Vuori, the evidence and arguments
`presented in the Petition regarding the “buddy list” and the “associating”
`step, on the present record, are sufficient to satisfy the reasonable likelihood
`threshold for institution.
`With regard to Vuori’s GSM network subsystems, we are not
`persuaded that Petitioner would prevail in showing that such subsystems and
`their alleged associations teach or suggest the claimed limitation of
`“associating a sub-set of the nodes with a client.” First, Patent Owner
`correctly asserts that claim 1 expressly recites the nodes to be “within the
`packet-switched network,” and the connectivity status of those nodes is
`recorded and transmitted to a client. Petitioner does not tie its theory of
`Vuori’s GSM network subsystems to the other node limitations, such as the
`“transmitting” step, discussed further below. But more importantly,
`Petitioner has not persuaded us that Figure 3 of Vuori discloses associating a
`sub-set of nodes with a client, as none of the nodes identified in the Petition
`are “within the packet-switched network.” Compare Pet. 9 (relying on the
`SVM presence service to monitor status of SVM service users), with Pet.
`16
`
`
`
`IPR2017-00222
`Patent 8,243,723 B2
`
`12−13 (arguing that an annotated Figure 3 of Vuori highlights the sub-set of
`nodes as GSM network subsystems, but failing to explain how those
`subsystems are within a packet-switched network and have connectivity
`status monitored, recorded, and transmitted as required by the claim
`language).
`With regard to the limitation “transmitting a signal to a client
`including a list of the recorded connectivity status for each of the nodes in
`the sub-set corresponding to the client,” Petitioner relies on Vuori’s
`disclosure of the “buddy list” and that Vuori tracks presence information of
`the user as one of “on-line/off-line/busy/away/do not disturb.” Id. at 13−14
`(citing Ex. 1005 ¶¶ 35, 43, 47; Ex. 1003 ¶¶ 124−125). The Petition also
`states that Vuori teaches distributing the presence information because
`“[d]istributing connectivity information ‘on a line’ means to distribute the
`information to other users connected to the network.” Id. at 14 (citing
`Ex. 1003 ¶ 125). Patent Owner counters that the Petition does not explain
`that Vuori’s buddy list “in its entirety [] necessarily is transmitted as ‘a
`signal.’” Prelim. Resp. 26 (emphasis omitted). Further, Patent Owner
`challenges Petitioner’s characterization of Vuori’s presence information in
`the Petition and argues that such information is not “a list” because it is
`provided on an individual basis, for a singular value. Id. at 27−28. At this
`time, we are not persuaded by Patent Owner’s argument for two reasons.
`First, neither party has proposed a construction for the term “list,” and Patent
`Owner’s argument appears to take an overly narrow view of the term to
`mean that the “list of the recorded connectivity status” must include the
`connectivity status of more than one node. Patent Owner cites no factual
`17
`
`
`
`IPR2017-00222
`Patent 8,243,723 B2
`
`support in the record for its argument that the scope of the term excludes a
`singular value. Furthermore, based on our review of the ’723 patent, the
`specification seems to contradict Patent Owner’s argument. See, e.g., Ex.
`1001, 7:61−64 (“The 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” (emphasis added)—indicating patentee’s use of the word “list” to
`encompass “one or more”).
`Second, Petitioner proffers, through its declarant, that the buddy list,
`being available to a sender, would mean that presence information
`distributed “on a line” means that the information regarding availability of
`users is distributed to other users connected to the network, including the
`sender. Pet. 13−15 (citing Ex. 1003 ¶¶ 124−126). Additionally, Dr. Forys
`testifies that an ordinarily skilled artisan “would have additionally
`understood that Vuori’s data transmission would have been transmitted over
`an electrical signal.” Ex. 1003 ¶ 125. Thus, we determine that the evidence
`and arguments presented in the current record are sufficient to meet the
`reasonable likelihood threshold.
`Therefore, we determine, on this record, that Petitioner has established
`a reasonable likelihood of prevailing on its assertion that claim 1 of the
`’723 patent is unpatentable over Vuori.
`
`ii.
`
`Dependent Claims 2–7
`
`The Petition addresses each of the dependent claims 2−7 by asserting
`that to the extent Patent Owner argues that Vuori does not expressly teach or
`suggest the further recited limitations, Malik teaches or suggests them.
`18
`
`
`
`IPR2017-00222
`Patent 8,243,723 B2
`
`Pet. 21−33. The Petition provides, for some of the claims, disclosures in
`both Vuori and Malik alleged to teach or suggest, in the alternative, the
`recited limitations, and for other claims, the Petition provides disclosures of
`either Malik or Vuori. Id. For example, the Petition relies on Malik alone as
`teaching the claimed “one or more files attached to an audio file,” recited in
`claim 2. Pet. 21. According to Petitioner, Malik discloses a descriptive
`caption included with the voice recording, and Petitioner contends that such
`a caption would be understood to be a file attached to the voice recording.
`Id. at 21−22.
`With regard to claim 3, Petitioner relies on both Vuori’s and Malik’s
`disclosures, in the alternative. Id. at 22−25. For instance, Petitioner argues
`that Vuori controls a method of generating the instant message based upon
`the connectivity status because “[w]hen Vuori’s system has detected that the
`user is unavailable, the system may prompt the user to leave a voice
`message.” Id. at 22−23 (citing Ex. 1005 ¶ 35 and Ex. 1003 ¶ 154). For this
`claim, the Petition also relies on Malik as teaching the recited limitation
`because Malik describes that when the recipient is not present or not
`available online, the voice instant message is recorded, otherwise, the
`message is sent in real time. Id. at 23−24.
`Concerning claim 4, Petitioner relies on Vuori as disclosing that the
`user equipment receives and stores the SVM during enunciation of the
`spoken message. Id. at 25. Petitioner argues, in the alternative, that Malik
`discloses two operations: (1) the VIM client prompting the user to leave a
`voice message; and (2) Jabber delivering messages in real time. Id. at 26.
`
`19
`
`
`
`IPR2017-00222
`Patent 8,243,723 B2
`
`According to Petitioner, Vuori and Malik each teach or suggest the
`limitation of “said method of generating said instant voice message is
`selected from a group comprising a record mode and an intercom mode.” Id.
`at 25–27.
`With regard to claim 5, which depends from claim 4, Petitioner asserts
`that it would “make sense” for the default to be the record mode of
`generating the instant voice message when the at least one recipient is not
`available. Pet. 27−28. But for claim 6, also dependent from claim 4,
`Petitioner relies on both Vuori and Malik, in the alternative. Id. at 28−29.
`In particular, Petitioner argues that either Vuori’s “immediately sending” if
`available, or Malik’s teaching of real-time delivery if a Jabber client is
`available, teaches or suggests selecting the intercom mode as the default
`“when at least one recipients are available,” as recited in claim 6. Id.
`Finally, as to claim 7, Petitioner relies solely on Vuori as teaching the further
`steps of “recording the instant voice message; receiving a stop indicator; and
`transmitting the recorded instant voice message after the receipt of said stop
`indicator.” Id. at 29−33.
`Petitioner asserts as a reasonable rationale for the combination of
`Vuori and Malik that a person of ordinary skill in the art would have been
`motivated to combine the relevant teachings because, in the field of
`messaging systems, there would have been a recognition of features in these
`references that improve or enhance the communications between users.
`Pet. 20 (citing Ex. 1003 ¶ 148). For purposes of this Decision, and for the
`proffered combination of teachings in Vuori and Malik, the stated rationale
`is sufficient to meet the reasonable likelihood threshold. Accordingly, after
`20
`
`
`
`IPR2017-00222
`Patent 8,243,723 B2
`
`consideration of the information presented in the Petition, as summarized
`above, and in the Preliminary Response, we determine that Petitioner has
`shown a reasonable likelihood of prevailing in showing that the asserted
`prior art combination renders obvious dependent claims 2−7.
`
`iii. Dependent Claim 8
`Claim 8 depends from claim 6 and further recites:
`wherein said intercom mode comprises the steps of:
`buffering each of a plurality of successive portions of
`the instant voice as the instant message is recorded;
`transmitting from each successive buffered portion;
`and
`delivering each successive portion to the recipients
`wherein
`the recipients audibly playing each
`successive portion as it is delivered.
`
`
`Ex. 1001, 24:46−54.
`Petitioner relies on Lerner as teaching or suggesting the claim 8
`limitations. Pet. 34−43. In particular, for the “buffering” step, Petitioner
`argues that Lerner discloses that when a participant speaks, the speech is
`digitized and broken down into packets, and that each channel buffer 52,
`which behaves like a first-in-first-out queue, is capable of storing any
`number of packets from a particular recipient. Id. at 37−38. Petitioner
`proffers that Figures 4 and 5 of Lerner disclose the channel buffers operating
`to store packets from participants and that each channel buffer functions as a
`queue. Id. at 38−39. Petitioner then summarily concludes that “Lerner
`describes recording a user’s speech and breaking the recorded speech into
`digitized packets, the packets are then stored on a buffer in a FIFO queue.”
`
`21
`
`
`
`IPR2017-00222
`Patent 8,243,723 B2
`
`Id. at 39 (citing Ex. 1003 ¶ 208). We are not persuaded that Petitioner has
`shown sufficiently that Lerner teaches or suggests the recited limitation.
`The claim recites that the “buffering” occurs “as the instant message
`is recorded.” That is, in the intercom mode, the voice message is buffered as
`the voice is recorded, in successive portions. Petitioner does not show that
`any of Lerner’s channel buffers buffer the successive portions of the instant
`voice “as the instant message is recorded.” As noted above in our summary
`of Lerner, the channel buffers store the received packets from remote
`participants. Therefore, the buffering of packets in the channel buffers does
`not occur “as the instant message is recorded.” The instant message has
`already been recorded, transmitted, and delivered to the recipient when
`Lerner’s channel buffers perform the buffering. Although we agree with
`Petitioner that Lerner discloses digitizing speech when a participant speaks
`(Pet. 37 (citing Ex. 1021, 1:51−55)) the speech that Lerner digitizes as the
`participant speaks is not buffered at the channel buffers. See Ex. 1021,
`5:44−54. Petitioner does not allege in the Petition that any other “buffer” in
`Lerner or other asserted prior art performs the recited “buffering” step.
`Thus, we are not persuaded, on this record, that Petitioner has shown a
`reasonable likelihood of prevailing on its assertion that the asserted prior art
`combination renders claim 8 unpatentable.
`
`D. Obviousness over Stubbs in Combination with Other References
`
`The remaining unpatentability grounds rely on the combination of
`Stubbs with other references. Pet. 3. We determine, however, that
`Petitioner has failed to show sufficiently that a person of ordinary skill in the
`
`22
`
`
`
`IPR2017-00222
`Patent 8,243,723 B2
`
`art would have been motivated to combine the teachings relied on by
`Petitioner.
`1. Overview of Stubbs (Ex. 1022)
`Stubbs relates to mobile communications, such as cellular
`communications, and is particularly applicable to GSM-type mobile
`communication systems. Ex. 1022, 1:1−5.2 Stubbs states that GSM was
`originally designed to sup
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
