Trials@uspto.gov
`571-272-7822
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` Paper 7
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` Entered: May 25, 2017
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`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
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`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
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`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
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`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.
`
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`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.
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`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
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`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
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`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
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`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.
`
`
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`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
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`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.
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`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
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`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.
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`
`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.
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`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.
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`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
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`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.
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`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
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`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
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`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
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`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
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`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 suppo
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