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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC., FACEBOOK, INC., and WHATSAPP, INC.,
`Petitioner
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.
`Patent Owner
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`
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`Case IPR2017-002221
`Patent 8,243,723
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`PETITIONER APPLE INC.’S
`REPLY TO PATENT OWNER RESPONSE
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`1 Facebook, Inc. and WhatsApp, Inc., who filed a petition in IPR2017-01635, have
`been joined as petitioners in this proceeding.
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`

`

`Case IPR2017-00222
`U.S. Pat. No. 8,243,723
`
`
`
`
`TABLE OF CONTENTS
`Introduction ........................................................................................................ 1
`I.
`II. The term “list” means a list of “one or more nodes.” ........................................ 2
`III. Claim 1 is unpatentable under 35 U.S.C. § 103 as being obvious over Vuori. . 5
`A. Vuori teaches or suggests “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.” (Claims 1−7) ............................................. 5
`1. Vuori’s SVM watcher is user-facing, therefore Vuori teaches or
`suggests “transmitting a signal to a client including a list of the
`recorded connectivity status.” ............................................................... 5
`2. Even if “list” requires connectivity status of more than one node –
`Vuori still teaches the “transmitting” feature. .....................................11
`3. Vuori’s buddy list teaches or suggests “a list of the recorded
`connectivity status for each of the nodes in the sub-set
`corresponding to the client.” ...............................................................12
`4. Even if “list” includes connectivity status of more than one node –
`Vuori still teaches the recited “list” feature. .......................................14
`B. Vuori teaches or suggests “associating a sub-set of the nodes with a
`client.” ......................................................................................................... 15
`IV. PO does not explicitly dispute claims 2-6 are unpatentable over the
`combination of Vuori and Malik..............................................................................19
`V. PO relies on a flawed level of ordinary skill by removing the requirement of
`experience in VoIP and mobile telephony, which is contradicted by its own
`expert’s testimony. ...................................................................................................20
`VI. Conclusion ........................................................................................................22
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`Case IPR2017-00222
`U.S. Pat. No. 8,243,723
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` PETITIONER’S UPDATED EXHIBIT LIST
`
`Exhibit
`
`Description
`
`1001
`
`1002
`
`1003
`
`1004
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`1005
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`1006
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`1007
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`1008
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`1009
`
`1010
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`1011
`
`1012
`
`1013
`
`Rojas, U.S. Patent No. 8,243,723 (earliest priority date December 18,
`2003; filed March 4, 2009; issued August 14, 2012).
`
`File History for U.S. Patent No. 8,243,723.
`
`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).
`
`SMSS, Universal Mobile Telecommunications System (UTMS);
`Technical realization of the Short Message Service (SMS) (3G TS
`23.040 version 3.5.0 Release 1999) (published on August 16, 2000).
`
`Holtzberg, U.S. Patent No. 6,625,261 (filed December 20, 2000,
`issued September 23, 2003).
`
`Väänänen, U.S. Patent No. 7,218,919 (filed August 8, 2001, issued
`May 15, 2007).
`
`Dahod et al., U.S. Patent Application Publication No. 2004/0022208
`(filed on August 1, 2002, published February 5, 2004).
`
`Hogan et al., U.S. Patent No. 5,619,554 (filed June 8, 1994, issued
`April 8, 1997).
`
`Logan et al., U.S. Patent No. 5,732,216 (filed October 2, 1996, issued
`March 24, 1998).
`
`Peersman et al., The Global System for Mobile Communications
`Short Message Service, IEEE Personal Communications (June 2000).
`
`SMS Forum, SMPP v3.4 Protocol Implementation guide for GSM /
`UMTS, Version 1.0 (May 30, 2002).
`
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`Case IPR2017-00222
`U.S. Pat. No. 8,243,723
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`Description
`
`Clarke et al., Experiments with packet switching of voice traffic, IEE
`Proceedings G - Electronic Circuits and Systems, Vol.130, Pt. G, No.
`4, pp. 105-13 (August 1983).
`
`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.
`
`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).
`
`Old Version of AOL Instant Messenger 2.1 Download, retrieved
`from http://www.oldapps.com/aim.php?old_aim=4#screenshots.
`
`Malik, Patent Publication No. 2003/0219104 (filed August 19, 2002,
`published November 27, 2003).
`
`Staack et al., WO Patent Publication No. 02/07396 (filed July 13,
`2000, published January 24, 2002).
`
`Lerner et al., U.S. Patent No. 6,192,395 (filed December 17, 1999,
`issued February 20, 2001).
`
`Stubbs, WO Patent Publication No. 99/63773 (filed June 3, 1999,
`published December 9, 1999).
`
`Abburi, U.S. Patent Application Publication No. 2003/0147512 (filed
`on February 1, 2002, published August 7, 2003).
`
`Exhibit
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`1014
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`1015
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`1016
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`1017
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`1018
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`1019
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`1020
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`1021
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`1022
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`1023
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`1024
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`File History for U.S. Patent No. 7,535,890.
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`Case IPR2017-00222
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`Description
`
`Day et al., A Model for Presence and Instant Messaging, Network
`Working Group, RFC 2778, pp. 1-17 (February 2000).
`
`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).
`
`Gayomali, C., “The text message turns 20: A brief history of SMS,”
`The Week, December 3, 2012, retrieved from
`http://www.theweek.com/articles/469869/text-message-turns-20-
`brief-history-sms.
`
`Supplemental Declaration of Leonard J. Forys, Ph.D.
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`Deposition Transcript of William C. Easttom, II
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`Exhibit
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`1025
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`1026
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`1027
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`1028
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`1029
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`I.
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`Introduction
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`Case IPR2017-00222
`U.S. Pat. No. 8,243,723
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`PO’s Response to the Board’s May 25, 2017 determination that claim 1 is
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`obvious in view of Vuori2 and that claims 2-7 are obvious over the combination of
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`Vuori and Malik3 fails to overcome any of the instituted Grounds for at least three
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`reasons.
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`First, PO failed to provide sufficient evidence rebutting the Board’s initial
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`determination that the term “list” encompasses “one or more.”
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`Second, PO’s position that Vuori’s SVM watcher is not user-facing is
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`incorrect and fails to rebut Vuori’s teaching of distributing connectivity
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`information “on a line” to other users connected to the network. Thus, Vuori
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`teaches the “transmitting a signal to a client including a list of the of the recorded
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`connectivity status for each of the nodes in the sub-set corresponding to the client”
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`feature.
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`Third, PO’s assertion and analysis that Vuori’s “buddy list” does not teach
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`the “associating a sub-set of the nodes with a client” is incomplete and fails to
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`rebut Vuori’s teaching of how its disclosed buddy list and presence service
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`discloses or suggests the “associating” feature.
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`2 US Patent Appl. Pub. No. 2002/0146097.
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`3 Patent Appl. Pub. No. US 2003/0219104.
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`II. The term “list” means a list of “one or more nodes.”
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`The Board stated “Patent Owner’s argument appears to take an overly
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`narrow view of the term to mean that the ‘list of the recorded connectivity status’
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`must include the connectivity status of more than one node.” (Institution Decision,
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`18, emphasis in original.) The Board challenged Patent Owner to provide factual
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`support “that the scope of the term excludes a singular value.” (Id., emphasis
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`added4) Because “based on our review of the ’723 patent, the specification seems
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`to contradict Patent Owner’s argument.” (Id.) PO has failed – and worse yet –
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`provides no argument taking into account the Board’s position and has waived
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`being able to have any of its arguments considered if the Board maintains the
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`construction. (EX1029, Deposition Transcript of William C. Easttom (Easttom
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`Deposition), 15:2-19.)
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`PO merely continued its argument that “[a] plain reading of the claim
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`language itself … unambiguously resolves this issue” and that without the
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`“modifying phrase ‘one or more’… the transmitted ‘list’ must have the recorded
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`connectivity status for multiple ‘nodes’” (POR, 8-9, emphasis in original.) This
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`argument fails to take into account that the ’723 patent consistently refers to a list
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`as having “one or more” items: “a list of one or more IVM recipients” (EX1001,
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`4 Unless otherwise noted, any emphasis in a citation has been added.
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`’723 patent, 8:52-56, 16:61-63) and “[t]he IVM client 208 displays a list of one or
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`more IVM recipients on its display 216, provided and stored by the local IVM
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`server 202” (Institution Decision, citing EX1001, 7:61-63). Based on the above, a
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`“list” in this patent, under its broadest reasonable interpretation (BRI),
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`encompasses “one or more” items. (EX1028, ¶10.)
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`In addition to being overly narrow, PO’s analysis is incomplete. For
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`example, PO argues that the omission of the modifying phrase “one or more”
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`confirms that “the transmitted ‘list’ must have the recorded connectivity status for
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`multiple ‘nodes.’” (POR, 9.) PO’s analysis fails to appreciate or identify other
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`modifying phrases that are also omitted from the claim. (EX1028, ¶11.) For
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`example, if the ’723 patent inventor truly intended the transmitted list to include
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`the recorded connectivity status for “multiple nodes,” as PO argues, notably
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`missing from the claim language are phrases including “more than one” or “a
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`plurality of...” (EX1028, ¶11.) The claim would become ambiguous under PO’s
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`argument because it does not define the term “list” with a modifying phrase, such
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`that the term must be interpreted according to BRI in light of the specification.
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`(EX1028, ¶12.)
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`PO further argues that, “[v]iewing Claim 1 as a whole further confirms that
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`the phrase ‘one or more’ was explicitly recited when the intent was to encompass
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`both the singular and plural form of a term.” (POR, 8.) PO’s analysis is, again,
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`incomplete. Looking at claim 1 as a whole, or even just the limitation as a whole,
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`reveals that the claim recites the phase “a list of the connectivity status of each of
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`the nodes in the sub-set.” The term sub-set is not defined by the ’723 patent, but a
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`POSITA would have understood that the term sub-set means a smaller part of a
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`larger set. (EX1028, ¶13.) That is, a POSITA would have understood that the “sub-
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`set of nodes” could be a single node. (EX1028, ¶13.) In such a case, the list of “the
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`connectivity status of each of the nodes in the sub-set” could reasonably include
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`only one node, because the sub-set contains only one node. (EX1028, ¶13.) Thus,
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`under BRI the term “list” must include the connectivity status of “one or more
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`nodes.” (EX1028, ¶13.)
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`Finally, PO provides that “[i]t is significant that ‘nodes’ is recited in the
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`plural in the phrase ‘each of the nodes in the sub-set.’ Use of the plural form of
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`‘nodes’ in that context confirms the ‘list’ must record the connectivity status of
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`more than one node.” (POR, 8.) Yet the specification refers to a list as having “one
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`or more” items – and in each case the “one or more” items are identified in plural
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`form. Thus, PO’s argument falls short because the recitation of nodes (in plural
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`form) is consistent with the ’723 patent’s disclosure of a “list of one or more”
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`items (in plural form) to mean one or more. (EX1028, ¶14.)
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`Because PO failed to provide evidence to rebut the Institution Decision, the
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`Board should maintain its previous position and find that the term “list”
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`encompasses “one or more.” (EX10XX., ¶15.)
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`III. Claim 1 is unpatentable under 35 U.S.C. § 103 as being obvious over
`Vuori.
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`A. Vuori teaches or suggests “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.” (Claims 1−7)
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`PO advances two arguments: first, PO argues that Petitioner’s “on a line”
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`theory fails to prove obviousness because Vuori’s SVM watcher is not user-facing
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`(EX2001, Easttom Decl., ¶29) and, second, that Petitioner’s “buddy list” theory
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`fails to prove obviousness because Vuori does not disclose or suggest its “‘buddy
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`list’ is ‘a list of the recorded connectivity status for each of the nodes.’” (POR, 14-
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`16.) Both arguments are incorrect.
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`1.
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`Vuori’s SVM watcher is user-facing, therefore Vuori
`teaches or suggests “transmitting a signal to a client
`including a list of the recorded connectivity status.”
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`Mr. Easttom argues that Vuori’s “SVM watcher 256 is not a user-facing
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`‘client’ and thus does render obvious the claimed ‘transmitting’ step.” (POR, 12;
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`Easttom Decl., ¶29.) But Vuori’s SVM watcher is user-facing and does distribute
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`connectivity status on a line to the user for at least five reasons. (EX1028, ¶16.)
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`First, the directional arrows of Vuori’s Figure 7 are not dispositive because Vuori
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`expressly teaches two-way communication. (EX1028, ¶16.) Second, Vuori teaches
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`that a user interacts with the system using an SVM watcher UA, teaching two-way
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`communication. (EX1028, ¶16.) Third, Vuori further teaches that “[a] user agent is
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`purely coupling between a principal and some core entity of the system”
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`including the SVM watcher 256. The term coupling, as applied in Vuori, indicates
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`that the SVM watcher is coupled to the user agent, teaching that the SVM watcher
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`is indeed user-facing. (EX1028., ¶16.) Fourth, the presence status is distributed so
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`that it can be “interpretable by programs or by persons,” teaching a person may
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`view and thus interpret shared presence status information. (EX1028, ¶16.) Finally,
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`Vuori’s description of a buddy list is evidence that the SVM watcher is user-facing
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`because the sender determines whether the intended recipient is available by means
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`of a presence service. (EX1028, ¶16.) Each of the foregoing reasons is evidence
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`that PO’s arguments fall short. (EX1028, ¶16.)
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`First, PO appears to argue that the arrows of Figure 7 indicate that the
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`presence information is distributed only to the SVM watcher 256 and is not
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`distributed to a “‘user agent’ or ‘UA’ device (276, 278) of either end user.” (POR,
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`12.) PO’s reliance on the “directional communication arrows in Figure 7” fails to
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`consider Vuori’s text describing the figures. (EX1028, ¶17.) The direction of the
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`arrows illustrated in Figure 7 are not dispositive and do not exemplify the only
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`embodiments described in Vuori. (EX1028, ¶17.) For example, Vuori’s SVM
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`watcher is further illustrated and described with respect to Figure 8 below.
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`As shown in FIG. 8, according to an adaptation of RFC 2778, there
`are two kinds of SVM watchers, called SVM fetchers 258 and SVM
`subscribers 260. An SVM fetcher 258 simply requests the current
`value of some SVM presentity's presence information from the
`presence service 248. In contrast, an SVM subscriber 260 requests
`notification from the SVM presence service 248 of (future) changes in
`some SVM presentity's presence information. A special kind of SVM
`fetcher is one that fetches SVM presence information on a regular
`basis. This is called an SVM poller 262.
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`(EX1005, Vuori, [0044].) “Requesting,” “fetching,” and “polling” are done by
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`two-way communication including sending messages from a device 258 (SVM
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`Watcher) to device 248 (SVM presence service), thus in the opposite direction
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`from the indicated arrow in Figure 7. (EX1028, ¶18.) So because Vuori’s SVM
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`watchers perform requesting, fetching, and polling information, Vuori is teaching
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`two-way communication and/or data transfer. (EX1028, ¶18.) And the SVM
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`watcher’s requesting, fetching, and polling information demonstrates that the
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`arrows of Figure 7 are not dispositive, as Mr. Easttom seems to suggest. (EX1028,
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`¶18.)
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`Second, Figure 7 shows each user agent is associated with a principal. The
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`term “principal” refers to “people, groups and/or software in the ‘real world’
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`outside of the system that use the system as a means of coordination and
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`communication… A principal interacts with the system via one of several user
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`agents (UAs) such as shown in FIGS. 7 and 9.” (Vuori, [0046].) Vuori therefore
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`teaches that when a principal interacts with the system via a user agent, he/she is
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`engaging in a two-way communication and/or data transfer – because that is the
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`plain and ordinary meaning of the term “interact.” (EX1028, ¶19.) Thus, the
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`described interaction indicates that the SVM watchers are user-facing because data,
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`including connectivity information, may be distributed to and from the user agents
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`via the described interaction. (EX1028, ¶19.)
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`Third, Vuori further teaches that “[a] user agent is purely coupling between
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`a principal and some core entity of the system (SVM inbox 274, SVM sender 272,
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`SVM presentity 254, SVM watcher 256). It will therefore be understood that the
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`simple examples shown in RFC 2778 are applicable to the SVM service of the
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`present invention.” (Vuori, [0046].) The term coupling, as applied in Vuori,
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`indicates that the SVM watcher is “coupled” to the user agent. When two entities
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`are coupled, as the user agent and SVM watcher 256, the disclosed coupling
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`teaches a two-way communication between the user agent and SVM watcher 256.
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`(EX1028, ¶20.) Thus, Vuori teaches or suggests that the SVM watcher is indeed
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`user-facing – contrary to Mr. Easttom’s argument. (EX1028, ¶20.)
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`Fourth, further evidence that the SVM watcher is indeed user-facing, and
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`that Mr. Easttom’s conclusions are misguided, can be found in Vuori’s description
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`of the term “status.” (EX1028, ¶21.) For example, Vuori teaches that each
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`“element comprises a status marker 298, 300 (which might convey information
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`such as on-line/off-line/busy/away/do not disturb)...Status can be interpretable by
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`programs or by persons and can consist of single or multiple values as spelled out
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`in the IETF model of RFC 2778.” (Vuori, [0047].) For status information to be
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`interpretable by a person, the status information must be transmitted to a device
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`capable of, for example, displaying the information for the person to see or
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`otherwise informing the person. (EX1028, ¶21.) Thus, Vuori discloses or suggests
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`that the status (i.e. connectivity) information is available to a person and that the
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`SVM watcher is user-facing. (EX1028, ¶21.)
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`Finally, the term “buddy list” was a well-known term in the art. (See
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`EX2002, Forys Deposition, 56:3-58:3; 71:4-12.) Vuori describes the term buddy
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`list in the context of a sender determining whether or not the potential recipient is
`
`available to receive a message. (See Vuori [0035].) Specifically, “the sender first
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`determines whether the intended recipient is available by means of a presence
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`service and the intended recipient has effectively acquiesced to availability by
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`previously joining a ‘buddy list’ or otherwise subscribing to the service.” (Id.)
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`Vuori teaches “joining a ‘buddy list’” as an example for subscribing to a
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`presence service. Vuori’s presence service tracks presence information including
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`information such as whether a user is on-line/off-line/busy/away/do not disturb.
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`(Vuori, [0047].) So a sender is able to determine whether an intended recipient is
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`available because the recipient has acquiesced to availability by previously joining
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`a buddy list. (EX1028, ¶22.) That is, the connectivity information of a potential
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`recipient connected to the network is distributed to the sender. (Vuori, [0035] and
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`[0047]; EX1028, ¶22.)
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`Vuori additionally teaches:
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`An SVM presence service 248 serves to accept SVM presence
`information e.g. on a line 250, store it, and distribute it, e.g., on a
`line 252. An SVM presentity 254 is a client that provides the presence
`information on the line 250 to be stored and distributed. Another set
`of clients called SVM watchers such as an SVM watcher 256 in FIG.
`7, receives SVM presence information on the line 252 from the SVM
`presence service 248.
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`(Vuori, [0043].)
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`Again, according to Vuori, when a user joins a buddy list, he/she acquiesces
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`in their availability information being shared with others, using, for example,
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`Vuori’s presence service. (EX1028, ¶24.) Thus, a user’s availability is stored and
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`distributed to the clients associated with the buddy list that the potential recipient
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`has joined. (EX1028, ¶24.) By joining a “buddy list” in Vuori, a user allows his/her
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`presence information (i.e. connectivity) to be transmitted to all of the nodes
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`associated with the buddy lists he/she has joined. (Forys Deposition, 73:7-11.) That
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`is, Vuori’s “buddy list” is not a list belonging to the recipient, but rather it belongs
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`to the sender who is able to see which recipients are available.
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`*****
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`Based on the foregoing, a POSITA would have understood that Vuori’s
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`SVM watcher is user-facing and that Vuori teaches distributing the presence
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`information because, as the Board agreed, “[d]istributing connectivity information
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`‘on a line’ means to distribute the information to other users connected to the
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`network,” as recited in claim 1. (Institution Decision, 17-18; EX1028, ¶25.)
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`Because Vuori’s SVM watcher is user facing, Mr. Easttom’s entire rebuttal fails.
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`2.
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`Even if “list” requires connectivity status of more than one
`node – Vuori still teaches the “transmitting” feature.
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`Vuori determines the availability of one or more recipients, and “[t]he user
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`10 then uses the menu key to select one or more intended recipients.…” (Vuori,
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`[0033].) And “[t]he SVM is then sent to an SVM service center. This could be a
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`short message service (SMS) service center which determines the availability of
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`the one or more intended recipients.” (Vuori, [0034].) To the extent PO may
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`argue that the short message service center is different than, or does not include,
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`Case IPR2017-00222
`U.S. Pat. No. 8,243,723
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`Vuori’s presence service, one would apply the foregoing teachings (i.e.,
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`determining the availability of one or more intended recipients) to the presence
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`service. (EX1028, ¶26.)
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`3.
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`Vuori’s buddy list teaches or suggests “a list of the recorded
`connectivity status for each of the nodes in the sub-set
`corresponding to the client.”
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`PO argues that “Vuori does not disclose or suggest its ‘buddy list’ is ‘a list
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`of the recorded connectivity status for each of the nodes’” and that “Vuori’s
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`‘buddy list’ merely indicates those whom a potential recipient had preauthorized
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`for messaging, regardless of the connectivity status of that intended recipient’s
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`device.” (POR, 15) PO’s arguments are unfounded and incorrect.
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`Joining a buddy list in Vuori is an example of a user joining a presence
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`service. (Section III.A.1.) Vuori’s presence service tracks presence information
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`including information such as whether a user is on-line/off-line/busy/away/do not
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`disturb. (Id.; Vuori, [0047]; Section III.A.1.) Vuori additionally teaches:
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`An SVM presence service 248 serves to accept SVM presence
`information e.g. on a line 250, store it, and distribute it, e.g., on a
`line 252. An SVM presentity 254 is a client that provides the presence
`information on the line 250 to be stored and distributed. Another set
`of clients called SVM watchers such as an SVM watcher 256 in FIG.
`7, receives SVM presence information on the line 252 from the SVM
`presence service 248.
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`(Vuori, [0043].)
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`U.S. Pat. No. 8,243,723
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`As illustrated in Figure 7, each user agent is associated with a principal. The
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`term “principal” refers to “people, groups and/or software in the ‘real world’
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`outside of the system that use the system as a means of coordination and
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`communication...A principal interacts with the system via one of several user
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`agents (UAs),” within Vuori’s presence service, to which a person may join by
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`joining a buddy list. (Vuori, [0035] and [0046]; Section III.A.1.) Vuori’s buddy
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`lists perform every function prescribed by a presence service making them a type
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`of presence service. Dr. Forys explains that a POSITA would have understood that
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`the term “buddy list” in Vuori was a term of art and its purpose and functionality
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`would have been understood by a POSITA. (Forys Deposition, 56:3-58:3 (“[t]his
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`buddy list thing is a term of the art. In fact I refer to it in my report using the AOL
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`buddy system and others as well … the term buddy list appears in several of my
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`prior art submissions here. Vuori has it, Abburi has it. It was a term of art. There is
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`nothing mysterious about it.”); 71:4-12 (“the prime example in RFC2778 which is
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`an Internet standard document is the buddy list. It's a term of art. And so everyone
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`-- the term buddy list appears in at least three of my prior art. It appears in Malek
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`(sic). It appears in Vuori. It appears in Abburi. It was a term of art. And I say it
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`appears also as early as 1997 in AOL. That's in my report and other systems. It’s a
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`term of art.”).)
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`Case IPR2017-00222
`U.S. Pat. No. 8,243,723
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`Dr. Forys and Vuori each draw on RFC 2778 (EX1025) to explain Vuori’s
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`Figures 7-9 that teach how a user’s presence is sent to corresponding clients –
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`where RFC 2778 references to buddy lists as an example of presence services. (See
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`Vuori, [0043]-[0049]; see also EX1003, ¶¶111-112.) RFC 2778 states: “A simple
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`example of applying the model is to describe a generic ‘buddy list’ application.
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`These applications typically expose the user’s presence to others, and make it
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`possible to see the presence of others. So we could describe a buddy list as the
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`combination of a PRESENCE USER AGENT and WATCHER USER AGENT for
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`a single PRINCIPAL, using a single PRESENTITY and a single SUBSCRIBER.”
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`Because Vuori discloses distributing presence and connectivity information
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`to other users connected to the network referencing RFC 2778 and buddy lists,
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`Vuori teaches that buddy lists also teach or suggest transmitting a signal including
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`a list of the recorded connectivity status.
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`4.
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`Even if “list” includes connectivity status of more than one
`node – Vuori still teaches the recited “list” feature.
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`In the event that the Board determines that the term “list” must include the
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`connectivity status of more than one node, Vuori’s buddy list still teaches or
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`suggests “a list of the recorded connectivity status for each of the nodes in the sub-
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`set corresponding to the client” because Vuori determines the availability of one or
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`more recipients. (Section III.A.2; EX1028, ¶26.)
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`Case IPR2017-00222
`U.S. Pat. No. 8,243,723
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`B. Vuori teaches or suggests “associating a sub-set of the nodes with
`a client.”
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`As PO provides, “Petitioner relies on Dr. Forys’ testimony that ‘a POSITA
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`would have understood that by joining Vuori’s buddy list, a user allows his/her
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`presence information (i.e., connectivity) to be transmitted to all of the nodes
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`associated with that user’s [meaning, the sender’s] buddy list.” (POR, 17; EX1028,
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`¶24.) PO’s arguments that follow appear to have misunderstood Dr. Forys because
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`PO’s analysis is misguided when it argues that Vuori fails to meet this feature. PO
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`is wrong for at least four reasons.
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`First, joining a buddy list is an example of a user joining a presence service.
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`(Section III.A.1). Vuori’s presence service tracks presence information including
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`information such as whether a user is on-line/off-line/busy/away/do not disturb.
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`(Vuori, [0047]; Section III.A.1.) Vuori’s Figure 7 illustrates a presence service,
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`where the SVM presence UA and the SVM watcher UA are user devices
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`associated with a principal. (See Vuori, Figure 7.) In Vuori, the term “principal”
`
`refers to “people, groups and/or software in the ‘real world’ outside of the system
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`that use the system as a means of coordination and communication...A principal
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`interacts with the system via one of several user agents (UAs) such as shown in
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`FIGS. 7 and 9.” (Vuori, [0046].)
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`When a user in Vuori (i.e., principal) interacts with the system via a user
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`agent associated with that user (i.e., principal), presence information including
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`Case IPR2017-00222
`U.S. Pat. No. 8,243,723
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`information such as whether a user is on-line/off-line/busy/away/do not disturb is
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`shared with that user, based on his/her joining the presence service via joining a
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`buddy list. “More specifically a POSITA would have understood that by joining
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`Vuori's buddy list a user allows his/her presence information (i.e. connectivity) to
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`be transmitted to all of the nodes associated with that user's buddy list.” (Forys
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`Deposition, 73:7-11.)
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`Second, Vuori’s Figure 10 discloses that the presence information is shared
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`with other users. For example, Figure 10 (shown below) teaches an “SVM
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`presence tuple” that comprises status information and a communication address.
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`“A communication address 302, 304 includes a communication means which,
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`according to the present invention, is an SVM service 310, 312.” (Vuori, [0047].)
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`Therefore, the presence information is distributed to SVM services that are
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`associated with specific users.
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`Case IPR2017-00222
`U.S. Pat. No. 8,243,723
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`The presence information comprises an arbitrary number of elements,
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`“[e]ach such element comprises a status marker 298, 300 (which might convey
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`information such as online/off-line/busy/away/do not disturb), an optional
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`communication address 302, 304, and optional other presence markups 306, 308.”
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`Case IPR2017-00222
`U.S. Pat. No. 8,243,723
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`(EX1003, ¶112 (citing Vuori, [0047]).) Vuori’s communication address teaches
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`that the information is associated with a specific node, as claimed.
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`Third, Vuori also teaches that each “element comprises a status marker 298,
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`300 (which might convey information such as on-line/off-line/busy/away/do not
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`disturb).…Status can be interpretable by programs or by persons and can consist of
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`single or multiple values as spelled out in the IETF model of RFC 2778.” (Vuori,
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`[0047].) So Vuori’s status information that can be interpretable by a person teaches
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`the claimed status (i.e. connectivity) information is transmitted to a node associated
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`with a specific person.
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`Finally, PO has misconstrued the arguments presented in the Petition and
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`the Forys Declaration. For example, PO argues that Vuori’s “buddy list” does not
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`“record[ ] the connectivity status for multiple nodes within a ‘packet-switched
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`network.” (POR, 17.) While Vuori’s Figure 3 may show portions of a circuit-
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`switched network, Vuori expressly discloses that the system may be implemented
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`on a packet-switched network. (Pet., 8 -10; EX1003, ¶¶106-109.) For example,
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`Vuori discloses:
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`In addition to carrying out the present invention on the GSM network
`subsystems 56,59 of FIG. 3, it should be realized that other
`approaches are possible, especially considering the d