Trials@uspto.gov
`571-272-7822
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`
`Paper No. 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
`____________
`
`Case IPR2017-00223
`Patent 8,724,622 B2
`____________
`
`
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BOUDREAU, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`1 Patent Owner’s Mandatory Notice filed pursuant to 37 C.F.R. § 42.8
`identifies Uniloc USA, Inc. and Uniloc Luxembourg S.A. as Patent Owner
`and as real parties in interest. Paper 4 at caption, 1. Therefore, we adjust the
`case caption to include Uniloc USA, Inc.
`
`

`

`IPR2017-00223
`Patent 8,724,622 B2
`
`
`I. INTRODUCTION
`
`Apple Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
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`an inter partes review of claims 3, 4, 6–8, 10–19, 21–23, and 38 (“the
`
`challenged claims”) of U.S. Patent No. 8,724,622 B2 (Ex. 1001, “the
`
`’622 patent”). Pet. 2. Uniloc USA, Inc. and Uniloc Luxembourg S.A.
`
`(“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”).
`
`We review the Petition under 35 U.S.C. § 314, which provides that an
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`inter partes review may not be instituted “unless . . . there is a reasonable
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`likelihood that the petitioner would prevail with respect to at least 1 of the
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`claims challenged in the petition.” 35 U.S.C. § 314(a). For the reasons that
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`follow and on this record, we are not persuaded that Petitioner demonstrates
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`a reasonable likelihood of prevailing in showing the unpatentability of any
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`of the challenged claims on the asserted grounds. Accordingly, we deny
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`Petitioner’s request to institute an inter partes review.
`
`II. BACKGROUND
`
`A. Related Matters
`
`Petitioner indicates that the ’622 patent is involved in Uniloc USA,
`
`Inc. v. Apple Inc., No. 2:16-cv-00638 (E.D. Tex.) and twenty-six other
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`actions in the U.S. District Court for the Eastern District of Texas. Pet. 71–
`
`73. The ’622 patent also is the subject of Case IPR2017-00224, which
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`Petitioner filed concurrently with the instant proceeding. See Pet. 2–3;
`
`Prelim. Resp. 1 & n.1.
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`B. Overview of the ’622 Patent
`
`The ’622 patent explains that “[v]oice messaging” and “instant text
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`messaging” in both the Voice over Internet Protocol (“VoIP”) and public
`
`switched telephone network environments are known. Ex. 1001, 2:22–46.
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`IPR2017-00223
`Patent 8,724,622 B2
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`In prior art instant text messaging systems, a server presents a user of a
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`client terminal with a “list of persons who are currently ‘online’ and ready to
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`receive text messages,” the user “select[s] one or more” recipients and types
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`the message, and the server immediately sends the message to the respective
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`client terminals. Id. at 2:34–46. According to the ’622 patent, however,
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`“there is still a need in the art for . . . a system and method for providing
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`instant VoIP messaging over an IP network,” such as the Internet.
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`Id. at 1:18–22, 2:47–59, 6:47–49.
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`In one embodiment, the ’622 patent discloses local instant voice
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`messaging (“IVM”) system 200, depicted in Figure 2 below. Id. at 6:22–24.
`
`
`As illustrated in Figure 2, local packet-switched IP network 204, which may
`
`be a local area network (“LAN”), “interconnects” IVM clients 206, 208 and
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`legacy telephone 110 to local IVM server 202. Id. at 6:50–7:2; see id.
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`at 7:23–24, 7:61–65. Local IVM server 202 enables instant voice messaging
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`functionality over network 204. Id. at 7:61–65.
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`Patent 8,724,622 B2
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`In “record mode,” IVM client 208, exemplified as a VoIP softphone
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`in Figure 2, “displays a list of one or more IVM recipients,” provided and
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`stored by local IVM server 202, and the user selects recipients from the list.
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`Id. at 7:57–59, 7:65–8:4. IVM client 208 then transmits the selections to
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`IVM server 202 and “records the user’s speech into . . . digitized audio
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`file 210 (i.e., an instant voice message).” Id. at 8:4–11.
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`When the recording is complete, IVM client 208 transmits audio
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`file 210 to local IVM server 202, which delivers the message to the selected
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`recipients via local IP network 204. Id. at 8:1529. “[O]nly the available
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`IVM recipients, currently connected to . . . IVM server 202, will receive the
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`instant voice message.” Id. at 8:3334. IVM server 202 “temporarily saves
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`the instant voice message” for any IVM client that is “not currently
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`connected to . . . local IVM server 202 (i.e., is unavailable)” and “delivers it
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`. . . when the IVM client connects to . . . local IVM server 202 (i.e., is
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`available).” Id. at 8:34–39; see id. at 9:17–21. Upon receiving the instant
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`voice message, the recipients can audibly play the message. Id. at 8:29–32.
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`C. Illustrative Claims
`
`Of the challenged claims, claims 3 and 38 are independent. Those
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`two independent claims, which are reproduced below, are illustrative of the
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`recited subject matter:
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`3. A system comprising:
`a network interface connected to a packet-switched network;
`a messaging system communicating with a plurality of instant
`voice message client systems via the network interface; and
`a communication platform system maintaining connection
`information for each of the plurality of instant voice
`message client systems indicating whether there is a current
`connection to each of the plurality of instant voice message
`client systems,
`
`
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`IPR2017-00223
`Patent 8,724,622 B2
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`
`wherein the messaging system receives an instant voice
`message from one of the plurality of instant voice message
`client systems, and
`wherein the instant voice message includes an object field
`including a digitized audio file.
`
`38. A system comprising:
`a client device;
`a network interface coupled to the client device and connecting
`the client device to a packet-switched network; and
`an instant voice messaging application installed on the client
`device, wherein the instant voice messaging application
`includes a client platform system for generating an instant
`voice message and a messaging system for transmitting the
`instant voice message over the packet-switched network via
`the network interface,
`a display displaying a list of one or more potential recipients
`for an instant voice message.
`
`Ex. 1001, 24:12–27, 27:11–23.
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`D. References Relied Upon
`
`Petitioner relies on the following references:
`
`Vuori
`
`US 2002/0146097 A1 Oct. 10, 2002 (Ex. 1005)
`
`Holtzberg US 6,625,261 B2
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`Väänänen US 7,218,919 B2
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`
`
`
`
`Sept. 23, 2003 (Ex. 1007)
`
`May 15, 2007 (Ex. 1008)
`
`European Telecommunications Standards Institute (ETSI), Technical
`Specification (TS) 123 040 v3.5.0 (2000-07): Universal Mobile
`Telecommunications System (UMTS); Technical realization of the
`Short Message Service (SMS) (“SMSS”; Ex. 1006)
`
`Pet. 2. Petitioner also relies on a declaration of Leonard J. Forys, Ph.D.
`
`(Ex. 1003).
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`E. Asserted Grounds of Unpatentability
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`Petitioner challenges the patentability of claims 3, 4, 6–8, 10–19, 21–
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`23, and 38 under 35 U.S.C. § 103 on the following grounds:
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`Reference(s)
`
`Claim(s) Challenged
`
`Vuori and SMSS
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`3, 4, 6–8, 11–13, 18, and 21–23
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`Vuori, SMSS, and Holtzberg 10 and 14–17
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`Vuori, SMSS, and Väänänen 19
`
`Vuori
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`38
`
`
`Pet. 2.
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`III. DISCUSSION
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`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are given
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`their broadest reasonable construction in light of the specification of the
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`patent in which they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed
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`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of
`
`the broadest reasonable interpretation standard as the claim construction
`
`standard to be applied in an inter partes review proceeding). 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
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`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`
`Petitioner proposes constructions for “object field,” as recited in
`
`independent claim 3; “action field,” as recited in dependent claim 4;
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`“identifier field,” as recited in dependent claim 6; “source field,” as recited
`
`in dependent claim 7; “destination field,” as recited in dependent claim 8;
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`and “display[ing] at least one of the plurality of instant voice messages,” as
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`recited in dependent claim 16. Pet. 6–8.2 Patent Owner does not proffer any
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`terms for construction, but contends that Petitioner’s construction of “object
`
`field” “risks rending other claim language superfluous” and “should also be
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`rejected as seeking to eviscerate the expressly recited ‘object’ qualifier.”
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`Prelim. Resp. 20–23. Patent Owner contends, however, that regardless
`
`whether we adopt Petitioner’s proposed construction of “object field,”
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`Petitioner fails to meet its burden with respect to the asserted grounds. Id. at
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`23–24.
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`Based on our review of the record before us, we determine that no
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`claim terms require an express construction to resolve the issues presented
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`by the patentability challenges in this case. See Vivid Techs., Inc. v. Am. Sci.
`
`& Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that only claim
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`terms that “are in controversy” need to be construed and “only to the extent
`
`necessary to resolve the controversy”). Our determination infra that
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`Petitioner has not demonstrated a reasonable likelihood of prevailing with
`
`respect to any challenged claim does not turn on the construction of any
`
`disputed claim term.
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`B. Analysis of Asserted Grounds of Unpatentability
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`1. Principles of Law
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`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
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`differences between the claimed subject matter and the prior art are “such
`
`
`2 In the Petition, Petitioner identifies each of “object field,” “action field,”
`“identifier field,” “source field,” and “destination field” as being recited in
`claim 1. Pet. 6–7. As Patent Owner points out, however, claim 1 is not
`challenged in the Petition, and in any event, none of those terms is recited in
`claim 1. Prelim. Resp. 20.
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`that the subject matter as a whole would have been obvious at the time the
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`invention was made to a person having ordinary skill in the art to which said
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`subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
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`(2007). The question of obviousness is resolved on the basis of underlying
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`factual determinations, including: (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
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`(3) the level of skill in the art;3 and (4) objective evidence of
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`nonobviousness, i.e., secondary considerations.4 Graham v. John Deere Co.,
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`383 U.S. 1, 17–18 (1966). “To satisfy its burden of proving obviousness, a
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`petitioner cannot employ mere conclusory statements. The petitioner must
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`instead articulate specific reasoning, based on evidence of record, to support
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`the legal conclusion of obviousness.” In re Magnum Oil Tools Int’l, Ltd.,
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`829 F.3d 1364, 1380 (Fed. Cir. 2016). We analyze the asserted grounds
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`with the principles stated above in mind.
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`2. Obviousness over Vuori and SMSS (Claims 3, 4, 6–8, 11–13,
`18, and 21–23) or Vuori alone (Claim 38)
`
`Petitioner contends that Vuori teaches or suggests all limitations of
`
`claims 3, 4, 6–8, 11–13, 18, 21–23, and 38 of the ’622 patent. Pet. 12–19,
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`21–22, 24–25, 27, 29, 31, 33–34, 36–47, 65–71. Petitioner further contends,
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`however, that, “[t]o the extent Patent Owner argues” Vuori does not
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`explicitly teach or suggest “wherein the instant voice message includes an
`
`
`3 Petitioner proposes an assessment of the level of skill in the art with
`respect to the ’622 patent. Pet. 5. Patent Owner does not challenge this
`assessment or propose an alternative assessment. For purposes of this
`Decision and to the extent necessary, we adopt Petitioner’s assessment.
`4 Patent Owner does not contend in its Preliminary Response that such
`secondary considerations are present.
`
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`object field including a digitized audio file,” as recited in independent
`
`claim 3, and certain limitations recited in claims 4 and 6–8, those limitations
`
`are taught or suggested by SMSS. Id. at 19–20, 22–23, 25, 27–30, 32, 34–
`
`35.
`
`Patent Owner raises several arguments in its Preliminary Response,
`
`including that the Petition does not identify anything in Vuori that satisfies
`
`the “network interface” limitations of independent claims 3 and 38.
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`Prelim. Resp. 25–26, 35–37.
`
`We begin with a brief overview of Vuori and relevant legal principles
`
`and then address the parties’ arguments.
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`a. Overview of Vuori
`
`Vuori is titled “Short Voice Message (SVM) Service Method,
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`Apparatus and System.” Ex. 1005, [54]. Vuori discloses a method for
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`sending voice-type short messages using an SVM service. Ex. 1005, [57],
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`¶ 31. Vuori teaches that SVMs “are recorded in the sending terminal and
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`sent to an SVM service center (SVMSC),” and a “second terminal may then
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`commence a bidirectional communication so that an instant voice message
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`session can be established.” Id. ¶ 31.
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`In one embodiment, a user initiates a short voice message by pressing
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`a menu key on a user equipment, which prepares to receive the message and
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`may emit a sound to alert the user to commence speaking. Id. ¶ 32, Figs. 1–
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`2. The user equipment then receives and stores the short voice message. Id.
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`Next, the user “select[s] one or more intended recipients” and initiates the
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`transfer. Id. ¶ 33. The short voice message is then sent to the SVMSC,
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`which “check[s]” and “determines the availability of the one or more
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`intended recipients.” Id. ¶¶ 34, 50; see id. ¶ 37. The SVMSC sends the
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`short voice message “immediately to the intended recipients who are
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`available.” Id. ¶ 34; see id. ¶ 50. For recipients who are not available,
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`however, the SVMSC “temporarily stor[es]” the message and “continue[s]
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`attempting to send [the message] . . . until the[ recipients] become available
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`or until a time out occurs.” Id. ¶¶ 34, 50. Upon delivery of the short voice
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`message, the recipient may play back the message. Id. ¶ 35, Figs. 1–2.
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`Vuori teaches that the SVM service may be carried out in a Global
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`System for Mobile communications (“GSM”) network as shown in Figure 3,
`
`reproduced below. Id. ¶ 37.
`
`Figure 3 of Vuori.
`
`
`
`In Figure 3, SVMSC 50 is shown along with interworking mobile
`
`switching center (“MSC”) 52 connected by line 54 to GSM Network
`
`Subsystem 56. Id. Gateway 58 is provided for interworking between
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`SVMSC 50 and “MSC 58”5 of another GSM network 59. Id. Vuori
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`explains that GSM Network Subsystem 56 also includes MSC 66 connected
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`to a base station subsystem (“BSS”) 68 as well as other base station
`
`subsystems 70 for communication with a plurality of mobile stations, but
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`that only one mobile station 72 is shown in Figure 3. Id. According to
`
`Vuori, MSC 66 is also connected to public switched telephone network
`
`(“PSTN”)/Integrated Services Digital Network (“ISDN”) network 78 for
`
`allowing mobile stations to communicate with wired telephone sets in a
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`circuit-switched manner, as well as to a plurality of databases that may in
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`turn be connected directly to MSC 66 or via data network 80 and operation
`
`and maintenance center 82. Id.
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`b. Analysis
`
`As reproduced above, independent claim 3 recites, in part, “a network
`
`interface connected to a packet-switched network” and “a messaging system
`
`communicating with a plurality of instant voice message client systems via
`
`the network interface.” Ex. 1001, 24:13–17. Independent claim 38 similarly
`
`recites “a network interface coupled to [a] client device and connecting the
`
`client device to a packet-switched network.” Id. at 27:13–14.
`
`In support of its contention that the combination of Vuori and SMSS
`
`renders claim 3 unpatentable, Petitioner contends “Vuori teaches or suggests
`
`a network interface (i.e., interconnected interfaces) connected to a
`
`
`
`
`5 It appears from Figure 3 that Vuori may have intended to refer instead to
`“MSC 60,” which is within the dotted line encompassing GSM Network
`Subsystem 59.
`
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`packet-switched network (i.e., a GPRS infrastructure).” Pet. 13 (citing
`
`Ex. 1003 ¶¶ 123–125). According to Petitioner:
`
`For example, in FIG. 3, reproduced below, Vuori provides that:
`
`At the subscriber side, a user equipment 124 is
`connected by one or more radio links (Uu) to one
`or more corresponding Node Bs 126 which are in
`turn connected (Iub)
`to corresponding radio
`network controllers (RNCs) 128… The RNCs 128
`are connected to the UMTS infrastructure 120 via
`Iu
`interfaces
`to a
`third generation-serving
`[General Packet Radio Service] GPRS support
`node (3G-SGSN) 140… It may also be connected
`to an SVM service 146 similar to the SVM service
`center 50 of FIG. 3, according to the present
`invention for connection to a GSM Network
`Subsystem, to another UMTS infrastructure, to a
`GPRS infrastructure, or similar.
`
`([Ex. 1005 ¶ 40].) A General Packet Radio Service (“GPRS”)
`infrastructure, as disclosed in Vuori, is a packet-switched
`network. ([Ex. 1003] ¶ 124.) Further, the interconnected
`interfaces that provide a connection between the radio network
`controllers and the data network act as a network interface. (Id.)
`
`([Ex. 1005], FIG. 3.)
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`Thus, Vuori teaches or suggests a network interface
`connected to a packet-switched network ([Ex. 1003] ¶ 125.).
`
`Pet. 13–14 (alterations in block quote in Petition).
`
`In connection with the “messaging system” limitation of claim 3,
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`Petitioner additionally points to Figure 11 of Vuori and contends that
`
`“FIG. 11 illustrates a plurality of instant voice message client systems
`
`connected to the messaging system via the network interface.” Id. at 15
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`(citing Ex. 1003 ¶ 127). According to Petitioner, “[i]n FIG. 11, . . . Vuori
`
`discloses that the ‘SVM [short voice message] 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
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`before sending it.’” Id. at 14 (third alteration in original) (quoting Ex. 1005,
`
`Abstract).
`
`With respect to the “network interface” limitation of claim 38,
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`Petitioner makes substantially the same arguments as for the corresponding
`
`limitation of claim 3, relying again on the same portion of paragraph 40 and
`
`Figure 3 of Vuori. Pet. 66–67 (quoting Ex. 1005 ¶ 40) (citing Ex. 1003
`
`¶¶ 317–319; Ex. 1005, Fig. 3).
`
`In the Preliminary Response, Patent Owner argues that “[i]ndependent
`
`Claim 3 introduces the term ‘network interface’ in the recitation ‘a network
`
`interface connected to a packet-switched network,’” and “[t]hus, the
`
`‘messaging system’ and ‘network interface’ limitations collectively require,
`
`on their face, ‘a messaging system communicating with a plurality of instant
`
`voice message client systems via the network interface [connected to the
`
`packet-switched network].’” Prelim. Resp. 25–26 (third alteration in
`
`original). Patent Owner further argues that “[t]he Petition does not identify
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`anything in Vuori that satisfies the above claim language.” Id. at 26.
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`According to Patent Owner, “[w]hile the Petition points to Figure 11 of
`
`Vuori . . . , Vuori discloses that the SVMSC (50) interfaces with the 1st and
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`2nd user terminals over dedicated circuits of respective circuit-switched
`
`GSM networks, neither of which is a packet-switched network.” Id. Patent
`
`Owner further points out that, contrary to Petitioner’s assertions,
`
`paragraph 40 of Vuori block-quoted by the Petition does not describe
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`Figure 3 of Vuori. Id. at 28. Moreover, according to Patent Owner,
`
`Even if Petitioner had, instead, relied on another figure of
`Vuori, the Petition nevertheless fails to articulate a theory that
`satisfies all limitations of the claimed “network interface” of a
`“messaging
`system.”
` While Petitioner alleges “the
`interconnected interfaces that provide a connection between the
`radio network controllers and the data network act as a network
`interface,” Vuori does not disclose “communicating with a
`plurality of instant voice message client systems via” that
`interface (and Petitioner does not argue otherwise). On the
`contrary, Figure 5 of Vuori clearly illustrates the identified
`“interface” as connecting RNCs (128) to UMTS infrastructure
`(120), whereas “[a]t the subscriber side, a user equipment 124 is
`connected by one or more radio links (Uu) to one or more
`corresponding Node Bs 126 which are in turn connected (Iub) to
`corresponding radio network controllers (RNCs) 128. Ex. 1005,
`[0040].
`
`Prelim. Resp. 28–29. Patent Owner makes similar arguments with respect to
`
`the “network interface” limitation of claim 38. Id. at 35–37.
`
`On the record before us, we are not persuaded by Petitioner’s
`
`arguments and evidence that Vuori teaches or suggests “a network interface
`
`connected to a packet-switched network,” as recited in claim 3, or “a
`
`network interface . . . connecting [a] client device to a packet-switched
`
`network,” as recited in claim 38. We agree with Patent Owner that, although
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`the Petition cites paragraph 40 and Figure 3 of Vuori as teaching or
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`suggesting those limitations, the Petition fails to identify precisely what,
`
`within that figure and cited text, constitutes the claimed “network interface.”
`
`See Prelim. Resp. 35.6 Accordingly, the Petition does not identify with
`
`particularity “the evidence that supports the grounds for the challenge to
`
`each claim,” 35 U.S.C. § 312(a)(3), or “specify where each element of the
`
`claim is found in the prior art patents or printed publications relied upon,”
`
`37 C.F.R. § 42.104(b)(4). Petitioner asserts, without identifying any
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`particular element or elements depicted in Figure 3 or described in paragraph
`
`40, that “the interconnected interfaces that provide a connection between the
`
`radio network controllers and the data network act as a network interface.”
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`Pet. 13 (citing Ex. 1003 ¶ 124); see also id. at 66 (similar argument
`
`regarding claim 38; citing Ex. 1003 ¶ 317). The only purported support
`
`Petitioner provides for that assertion, namely, paragraph 124 of Dr. Forys’s
`
`declaration, simply repeats, word for word, the Petition’s arguments and
`
`quotation of paragraph 40 of Vuori, adding only the prefatory phrases “[t]his
`
`excerpt is significant” and “a POSITA would have understood” at the
`
`beginning of two sentences. Ex. 1003 ¶¶ 124, 318.7 That testimonial
`
`
`6 Although Patent Owner makes this argument in connection with claim 38,
`it applies equally to claim 3.
`7 Although Petitioner includes an “Id.” citation in support of its assertion
`with respect to claim 38 that ostensibly refers to paragraph 317 of
`Dr. Forys’s declaration (Pet. 66), that paragraph merely states “Vuori
`teaches or suggests a network interface coupled to the client device and
`connecting the client device to a packet-switched network” (Ex. 1003
`¶ 317). We assume that Petitioner intended instead to cite paragraph 318 of
`Dr. Forys’s declaration, which states, inter alia, “a POSITA would have
`understood that the interconnected interfaces that provide a connection
`
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`Patent 8,724,622 B2
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`evidence provides no disclosure of the underlying facts on which the stated
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`opinions are based, and accordingly, is entitled to little or no weight. See
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`37 C.F.R. § 42.65(a) (“Expert testimony that does not disclose the
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`underlying facts or data on which the opinion is based is entitled to little or
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`no weight.”).
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`Further, notwithstanding Petitioner’s assertions, we do not understand
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`Figure 3 to show any connections with a “packet-switched network” at all,
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`and accordingly, we discern in Figure 3 of Vuori nothing that could be
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`termed a “network interface connected to a packet-switched network.”
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`Vuori describes Figure 3 as showing an “SVM service method . . . applied to
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`GSM network subsystems.” Ex. 1005 ¶ 21; see also id. ¶¶ 37, 39, Fig. 3
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`(describing and illustrating elements 56 and 59 labelled as “GSM Network
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`Subsystem[s]”). Paragraph 37 of Vuori explains that mobile switching
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`center (MSC) 58 is “connected to a public switched telephone network
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`(PSTN) and/or ISDN network 78 for allowing mobile stations to
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`communicate with wired telephone sets in a circuit-switched manner.”
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`Ex. 1005 ¶ 37 (emphasis added). Moreover, we understand Vuori to
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`distinguish the GSM-based embodiment shown in Figure 3 from
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`packet-based systems, which Vuori characterizes as a development over
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`GSM:
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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
`development of GSM networks into a packet-based infrastructure
`
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`between the radio network controllers, user equipment, and the data network
`act as a network interface.” Id. ¶ 318.
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`IPR2017-00223
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`via the General Packet Radio Service (GPRS) and subsequently
`the Universal Mobile Telecommunication System (UMTS).
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`Id. ¶ 39 (emphases added).
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`Paragraph 40 of Vuori, cited by Petitioner, describes a UMTS
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`(packet-based) embodiment, but despite Petitioner’s assertions (Pet. 13), that
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`paragraph relates to Figure 5 of Vuori, not to Figure 3. Ex. 1005 ¶ 40; see
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`also id. ¶ 23 (“FIG. 5 shows the SVM service method of the present
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`invention applied to a UMTS system.”). We agree with Patent Owner,
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`moreover, that even if Petitioner had cited and relied upon Figure 5 instead
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`of Figure 3, Figure 5 merely illustrates the identified “interface” as
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`connecting radio network controllers (RNCs) 128 to UMTS infrastructure
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`120, whereas “at the subscriber side, [] user equipment 124 is connected by
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`one or more radio links (Uu) to one or more corresponding Node Bs 126
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`which are in turn connected (Iub) to corresponding radio network controllers
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`(RNCs) 128,” and that Vuori does not disclose “communicating with a
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`plurality of instant voice message client systems via” that interface. Prelim.
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`Resp. 28; Ex. 1005 ¶ 40.
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`For the reasons given, we are not persuaded by Petitioner’s evidence
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`that Vuori teaches or suggests the “network interface” limitations of claims 3
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`and 38. Although Petitioner challenges claim 3 as obvious over the
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`combination of Vuori and SMSS, Petitioner does not cite SMSS as teaching
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`or suggesting this limitation of claim 3. See Pet. 13–15. Accordingly, we
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`conclude that Petitioner has not established a reasonable likelihood that it
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`would prevail in showing that independent claims 3 and 38—or claims 4, 6–
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`8, 11–13, 18, and 21–23, which directly or indirectly depend from claim 3—
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`are unpatentable on the proffered grounds.
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`3. Obviousness over Vuori, SMSS, and Holtzberg (Claims 10 and
`14–17) or Vuori, SMSS, and Väänänen (Claim 19)
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`Each of claims 10, 14–17, and 19 depends directly or indirectly from
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`claim 3. Petitioner contends that Holtzberg teaches certain limitations of
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`claims 10 and 14–17 and that Väänänen teaches certain limitations of
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`claim 19 not taught or suggested by Vuori and SMSS, and that a person of
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`ordinary skill in the art would have had reason to combine Holtzberg or
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`Väänänen with Vuori and SMSS. Pet. 47–64. Petitioner, however, does not
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`allege in the Petition that either Holtzberg or Väänänen teaches or suggests
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`the “network interface” limitation of claim 3. Accordingly, for the same
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`reasons as set forth in Section III.B.2 with respect to claim 3, we conclude
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`that Petitioner has not established a reasonable likelihood that it would
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`prevail in showing that claims 10, 14–17, and 19 are unpatentable on the
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`proffered grounds.
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`C. Conclusion
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`For the reasons discussed above, Petitioner has not established a
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`reasonable likelihood that it would prevail with respect to any of the claims
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`challenged in the Petition.
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`
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`IV. ORDER
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`Accordingly, it is
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`ORDERED that the Petition is denied, and no trial or inter partes
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`review is instituted on any asserted ground.
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`IPR2017-00223
`Patent 8,724,622 B2
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`For PETITIONER:
`
`Jason D. Eisenberg
`Michael D. Specht
`Trent W. Merrell
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`jasone-PTAB@skgf.com
`mspecht-PTAB@skgf.com
`tmerrell-PTAB@skgf.com
`
`
`
`For PATENT OWNER:
`
`Brett Mangrum
`Ryan Loveless
`ETHERIDGE LAW GROUP
`brett@etheridgelaw.com
`ryan@etheridgelaw.com
`
`Sean D. Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`
`
`19
`
`