Apple Inc. et a].
`
`v
`
`Uniloc Luxembourg S.A.
`
`Case IPR2017-00221
`
`(Patent 7,353 ,890)
`
`Case IPR2017-00222
`
`(Patent 8,243,723)
`
`Case IPR2017-00225
`
`(Patent 8,995,433)
`
`Hearing Before Jennifer S. Bisk,
`
`Miram L. Quinn, and
`
`Charles J. Bourdreau
`
`February 8, 2018
`
`Uniloc's Exhibit 2005
`
`
`
`v
`
`Uniloc Luxembourg S.A.
`
`Case IPR2017-00221
`
`(Patent 7,353 ,890)
`
`Case IPR2017-00222
`
`(Patent 8,243,723)
`
`Case IPR2017-00225
`
`(Patent 8,995,433)
`
`Hearing Before Jennifer S. Bisk,
`
`Miram L. Quinn, and
`
`Charles J. Bourdreau
`
`February 8, 2018
`
`Uniloc's Exhibit 2005
`
`
`
`“local network” and “external network”
`
`lPR2017-0221, ’890 Claim Construction:
`
`14. An instant voice messaging system for delivering instant
`messages over a plurality of packet-switched networks, the
`
`system comprising:
`
`a client connected to a- network, the client selecting one or
`Scipients connected to an- network
`
`network, generating an instant voice
`outside the
`message therefor, and transmitting the selected recipients
`and the instant voice message therefor over the -
`network and the- network; and
`
`a server connected to the- network, the server receiving
`the selected recipients and the instant voice message
`therefor, and delivering the instant voice message to the
`selected recipients over the- network, the selected
`recipients being enabled to audibly play the instant voice
`message, and the server temporarily storing the instant voice
`
`message if a selected recipient is unavailable and delivering
`the stored instant voice message to the selected recipient
`
`
`
`lPR2017-0221, ’890 Claim Construction:
`“local network” and “external network”
`
`
`
`Local IP Network 504—i.e.,
`
`not all networks outside
`
`
`in...“
`
`
`
`Local IP Network 204 are
`
`deemed “external networks"
`
`Apple’s Ex. 1001 in IPR2017-00221, ’890 patent at Fig. 5
`
`
`
`“local network” and “external network”
`
`|PR2017-0221, ’890 Claim Construction:
`
`“local network” and “external network” refer to different types of network:
`
`\/ The Petition concedes (at page 6) that claim terms “local" and “external”
`refer to the QLp_e of network:
`
`The other independent claims recite substantially similar limitations. The
`
`differences among the independent claims mostly relate to—
`
`-connecting the client. server(s). and recipient(s). Based on these
`
`differences, the six independent claims can be categorized into three groups. (Forys
`
`Dec.. 1l56.)
`
`J Petitioner’s declarant repeated the same nearly verbatim:
`
`The variations among the independent claims are mostly related to-
`
`- connecting the client. sewer(s). and recipient(_s). Based on these
`
`variations. the six independent claims can be categorized into three groups.
`
`IPR2017-0221, Apple's Ex. 1003 at 156.
`
`s/ The Internet cannot be considered a “local network" but rather is only a type
`
`
`
`“local network” and “external network”
`
`lPR2017-0221, ’890 Claim Construction:
`
`~/ Uniloc’s expert, Mr. Easttom, agreed that the expressly-distinct
`qualifiers “local” and “external” refer to the type of network:
`
`23.
`
`In my opinion. a POSA would understand from the context of the
`
`claim language as a whole. when read in light of the rest of ’890 patent
`
`specification. that the recited "local network“ and “external network“ - [PR2017-0221’
`
`— ”“1065 Ex 2001 at '"23-
`
`— See. e.g.. Ex. 1001 25:25-26. I note that
`
`Dr. Forys appears to agree with me on this point. Ex. 1003 $56: Ex. 2002
`
`3519—362.
`
`25.
`
`This plain reading of the claim language is also confirmed by the
`
`fact that in certain independent claims the sending “client“ is connected to a
`
`“local network“ (e.g.. Claim 8) and in other independent claims the sending
`
`[PR2017-022 1 I
`
`“client" is connected. instead. to an “external network" (e.g.. Claim 28). I UHilOC'S EX. 2001 at 1125.
`
`
`
`“local network” and “external network”
`
`lPR2017-0221, ’890 Claim Construction:
`
`Petitioner’s construction for “external network" (i.e., “a network
`that is outside another network”) is inconsistent with fundamental
`canons of claim construction:
`
`~/ In six independent claims of the ’890 patent, “external network” is
`recited in the context “an external network outside the local
`
`network.” See claims 14, 26, 27, 51, 60, 61. The remainder of the
`
`independent claims do not recite that additional clause. See claims
`
`1, 12,13, 28, 40, 49, 50, and 62. Accordingly, under the doctrine of
`claim differentiation, the qualifier “external” must mean something
`other than “outside the local network." See also Ex. 2001 at 112 5.
`
`~/ Petitioner’s construction for “external" would render the recited
`
`Clause “outside the local network" superfluous. See Apple Inc. v.
`
`ContentGuard Holdings, Inc., IPR2015-00353, Paper No.9, Decision
`Denying Institution of Inter Partes Review (P.T.A.B. June 25, 2015).
`
`~/ Petitioner’s construction would render the express distinction
`between “local network" and “external network” a nullity because
`every network (including the example “local” networks disclosed in
`
`
`
`No proof of obviousness for two distinct tyges of networks: “local network” and “external network”
`
`(-221, ’890 patent)
`
`Malik (Ex. 1007 to IPR2017-0221) does not teach that the
`clients use different types of networks to connect to the server:
`
`‘ 105
`
`@®
`
`217
`
`‘
`
`JABBER
`SERVER
`
`£204
`
`216:
`IABBER
`
`SERVER ¢=v JABBER meg
`
`2
`
`IABBER CLIENT
`
`21.5
`
`jABBER
`sertzk
`
`JABBER L'LIbNI
`
`JIO
`
`VIM CLIENT ORA
`FIRST USER
`_
`
`‘
`
`AUDIO PLAYER
`
`{-300
`
`20I
`
`
`
`-
`
`SECOND USER
`
`VOICE RECORDER
`
`r10. 3
`
`
`
`322
`
`JABBER CLIENT
`
`
`
`'
`
`'\
`
`ll”
`
`
`
`mom”? (‘I ”NT
`
`
`
` FIG. 2
`PRIOR ART
`
`Q. As shown in Figure 3 of Malik, do you
`understand that the same communication
`
`network 325 is used for client 310 and 320?
`
`A. Yes.
`
`“As discussed above with respect to claim 2,
`it would have been obvious to connect Client
`
`200 and its local server 215 over a local
`
`network. (Id., 4:45-47.) Malik states that
`
`
`
`No proof of obviousness for two distinct types of networks: “local network” and “external network” (-221, ’890 patent)
`
`Malik (Ex. 1007 to lPR2017-0221) does not teach that the “prior
`art" configuration of its Fig. 2 enables instant voice messages:
`
`s/ “Yet another reason a POSA would not consider the systems of Figures 2
`and 3 interchangeable is that Malik disparages Figure 2 as ‘prior art’ that
`lacks certain capabilities of Figure 3. Ex. 2001 (Easttom Dec.) 1136.
`
`V “Malik states its VIM server 330 of Figure 3 requires new voice instant
`messaging (VIM) capabilities in addition to the instant messaging (IM)
`capabilities of conventional servers: ‘the VIM server 330 includes the
`
`capabilities of conventional IM servers and the additional capabilities
`for handling VIM message delivery and storage.’ Ex. 1007, 4:45-53. Dr.
`
`Forys appears to agree with me on this point. Ex. 2002 (Forys Depo)
`55:17—21 (‘Q And you agree that the VIM server 330 enabled new VIM
`functionality beyond what conventional IM servers provided? A Yes. It
`
`builds on it. That is the whole point.').” Id. 113 7.
`
`V “Given the dual IM and VIM functionality of the VIM server 330, the most
`
`plausible interpretation, in light of the disclosure, is that the VIM server
`330 ‘acts’ as a legacy Jabber Server 215 by continuing to enable the
`‘prior art' IM functionality described with reference to Fig. 2." Id. 1138.
`
`
`
`No proof of obviousness for two distinct types of networks: “local network” and “external network” (-221, ’890 patent)
`
`Vdc'im'inen does not supply the missing heterogeneous
`“local" and “external" network elements:
`
`40.
`
`I have reviewed Véiananen and do not find that it supplies the
`
`missing arrangement of a “client“ and “recipient“ connected to mutually-
`
`exclusive ones of either a “local network" or an expressly-distinct “external
`
`network." The sole quotation from Véiananen ofi‘ered in the Petition states that
`
`the same type of network is used to connect the “terminals" and “servers“
`
`together: “the connmmications connections used between the terminal and the
`
`servers ... are typically compliant with
`
`LAN." Pet. 34. That statement fails
`
`to disclose, and teaches away. from the heterogeneous architecture recited in
`
`the claim language.
`
`IPR2017-0221, Uniloc's EX. 2001 [Easttom Dec.) at 1140.
`
`
`
`No proof of obviousness for the recited distinction between the “external server system” and the “local server” (-221, ’890 patent)
`
`s/ Independent claim 28 recites limitations
`directed to both an “external server
`
`system" and a “local server”.
`
`~/ The intrinsic evidence confirms the
`
`distinction made by the “system”
`qualifier was intentional and cannot be
`overlooked. Response at 25 (citing
`EXZ 001 (Easttom Dec.) 111142—43).
`
`~/ Figure 6 of the ’890 patent and its
`accompanying description teaches that
`the global lVM server system 502
`
`502
`
`.
`
`
`
`13%;ch
`
`includes a system of distinct servers
`intercommunicating for the specific
`purpose of instant voice messaging.
`
`FIG. 6
`
`
`
`“external server system” and the “local server” (-221, ’890 patent)
`
`No proof of obviousness for the recited distinction between the
`
`Petitioner's papers fail to identify anything in the cited
`references that meets the “external server system” limitations:
`
`® Rather than interpret “server system” in light of the specification
`and the context of the claim language as a whole, Petitioner newly
`argues in its Reply “[a] server system can include a server [in the
`singular] with multiple components performing multiple functions,
`which Malik discloses." Reply at 15; see also Response 24-25.
`
`8 Based on that erroneous interpretation, Petitioner points to Malik’s
`VIM server 330: “To do both VIM message delivery functionality
`(capabilities) and message storage functionality (capabilities)
`would typically require multiple components, i.e., a system.
`(EX1029, 1[22.)." Id. However, the claimed “local server” must also
`implement both delivery and storage, yet that element is explicitly
`recited as a “local server” and not a “local server system".
`
`8 In addition, to the extent not already waived, none of Petitioner’s
`new arguments in its Reply identify an “external server system” that
`receives certain information and then routes that information over
`
`ho_t_h the claimed “external network" m the “local network".
`
`
`
`
`
`|PR2017-0222 ’723
`Independent Claim 1
`
`1. A method for instant voice messa in over a acket-switched
`
`network, the method comprising: said
`
`connectivity status being available and unavailable;
`recording the connectivity status—;
`
`
`
`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
`
`
`
`|PR2017-0222 ’723: The “list” claim term expressly refers to multiple “nodes”
`
`Independent claim 1 of the ’723 patent recites the term “list" in
`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."
`
`~/ It is significant that “nodes" is recited in the plural in the phrase “each
`of the nodes in the sub-set." Response at 8 (citing Ex. 2001 at 1123).
`
`J The '723 Patent specification teaches that in certain embodiments
`“[t]he lVM client 208 displays a list of one Q more IVM recipients on
`its display". This is shorthand referring to either a list of one recipient
`(in the singular) or, alternatively, a list of multiple recipients (in the
`plural). The claim language exclusively refers to the latter by reciting
`“each of the nodes in the sub-set"—i.e., “nodes" in the plural. Id.
`
`\/ Claim 1 further recites delivering the instant voice message to “one
`or more recipients." The recitation of "each of the nodes in the sub-
`set," without the same modifying phrase “one or more," further
`confirms to a POSA that the transmitted “list” must have the recorded
`
`connectivity status for multiple "nodes." Id. at 9 (citing Ex. 2001 1125).
`
`
`
`(-222, ’723 patent)
`
`No proof of obviousness for transmitting a “list” as Claimed
`
`Petitioner’s reliance on Vouri’s “line 252” fails to prove obviousness:
`
`
`
`248
`
`SVM PRESENCE SERVlCE
`CO
`
`SVM WATCHER
`
`278
`
`
`
`276
`
`SVM
`
`
`
`
`
`
`
`
`
`254
`256
`%
`2
`FIG. 7
`
`PRINCIPAL
`
`PRINCIPAL
`
`1. As shown in Figure 7, presence information is not distributed to a “user
`agent" or “UA” device (2 76, 278) of either end user. Rather, presence
`information is distributed only from SVM presence service 248 “on a line
`252" to SVM watcher 256. Response at 12-13 (citing Ex. 1005 111143, 47 and
`Ex. 2002 66:8—14).
`
`2. The disclosure cited in the Petition concerning “SVM presence server 248"
`refers to distributing presence information to SVM watcher 256 one value
`at a time (i.e., not a “hit” as Claimed); and the Petition does not argue
`
`
`
`No proof of obviousness for transmitting a “list” as claimed (-222, ’723 patent)
`
`ln presenting an alternative theory, Petitioner has at least failed
`to prove that Vouri’s so-called “buddy list”:
`
`1.
`
`includes the connectivity status of more than one node;
`
`2.
`
`is transmitted, in its entirety, to the “client" as claimed;
`
`3. records the “connectivity status for each of the nodes"; and
`
`-
`
`availability" (in the context of Vouri’s
`The phrase “acquiesced
`single-sentence description of its “buddy list”) connotes a
`predetermined relationship status between people, which is
`distinguishable from the real-time “available" or “unavailable"
`“connectivity status” of multiple "nodes” as claimed. Response at 15.
`
`4. records the connectivity status for multiple nodes within a
`“packet-switched network”.
`
`- The Board’s Institution Decision states that “none of the nodes
`
`identified in the Petition are ‘within the packet-switched network'" as
`
`claimed. Response at 16 (citing Paper 7 at 16 and Ex. 2001 1134).
`
`
`
`(-222, ’723 patent)
`
`No proof of obviousness for the “associating” limitations
`
`Petitioner has also at least failed to prove that Vouri’s
`“buddy list” renders obvious “associating a sub-set of the
`nodes with a client":
`
`® Petitioner alleged through its declarant that Vouri’s “buddy
`list” purportedly belongs to the intended recipient, as
`opposed to the sender of an instant voice message. Even if
`this is correct, Vouri does not disclose or suggest, but rather
`teaches away from, transmitting the intended recipient's
`
`entire buddy list to the user who wishes to transmit a
`
`message.
`Response at 18 (citing EX. 2001 1137 and Ex. 2002 743—10).
`
`8 A POSA would not be motivated to modify Vouri to make
`such a transmission because doing so would violate the
`
`privacy of the intended recipient for no reason, as the
`sender would not need to know who else the intended
`
`recipient may have preauthorized for messaging.
`
`
`
`|PR2017-0225 ’433 “instant voice messaging application” at the originating client
`
`The Board’s lnstitution Decision states “We agree with Patent
`Owner that the instant voice message application and the recited
`message database, by the plain reading of the claim language, is
`directed to the application at the client." Paper 7 at 18—19.
`
`1. A system comprising:
`— including a client
`platform system for generating an instant voice message and a
`messaging system for transmitting the instant voice message
`
`over a packet-switched network via a network interface;
`wherein— displays a list
`of one or more potential recipients for the instant voice
`
`message;
`wherein—includes a
`message database storing the instant voice message, wherein
`the instant voice message is represented by a database record
`
`including a unique identifier; and
`wherein— includes a file
`manager system performing at least one of storing, deleting
`and retrieving the instant voice messages from the message
`
`
`
`No proof of obviousness for “the instant voice messaging application includes a message database storing the instant voice message”
`
`Abburi’s and Holtzberg’s explicit reliance on server-side storage
`(remote from the client) would lead a POSA in a direction
`
`divergent from the path that was taken by the applicant.
`
`Response at 19-28.
`
`_
`______
`FIG. 2
`_.--..-..----_-___
`usenmomsJ/ 200
`206‘
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`
`212\
`
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`
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`
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`
`TELECOMMUNICATIONS
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`E‘s.
`
`220
`
`.2“;
`
`Abburi (Ex. 1005) at Fig. 2
`
`
`
`-._ \
`L I
`m
`
`222
`
`Holtzberg (Ex. 1007) at Fig. 2
`
`
`
`No proof of obviousness for “the instant voice messaging application
`
`includes a message database storing the instant voice message”
`
`Abburi 5 recording at storing
`The Petition erroneously conflates Abburi’s (Ex. 1005) distinct
`“recording” and “storing” processes by arguing “Abburi discloses
`storage of the voice message at the user device when sending an audio
`message." Response at 22 (citing Pet. at 26).
`
`1.
`
`The citations to Abburi in the Petition make no mention of
`
`temporary local storage at the originating client. Rather, the cited
`portions of Abburi only address the expressly distinct recording
`process which converts microphone input into an audio file.
`Response at 22 (citing EX. 1005 118).
`
`2.
`
`The claim language itself explicitly distinguishes “generating an
`instant voice message" from “storing the instant voice message.”
`The limitation “a message database storing the instant voice
`message” would be rendered superfluous if it required nothing
`more than the temporary storage allegedly already necessitated
`[under Petitioner’s reasoning) by the limitation “generating an
`instant voice message.” Id. [citing Ex. 2001 1149).
`
`3.
`
`Volatile temporary storage is neither the structural nor functional
`
`
`
`No proof of obviousness for “the instant voice messaging application includes a message database storing the instant voice message”
`
`Uniloc's Response articulates several independent reasons
`why the Petition fails to prove a POSA would have been
`
`motivated to incorporate Holtzberg's centralized database 72
`into Abburi’s system (including those summarized below):
`
`1.
`
`2.
`
`3.
`
`4.
`
`Abburi’s system already has a centralized audio message store
`206; and, consequently, there would be nothing to gain by
`replacing that essential and operational feature in Abburi with
`Holtzberg’s centralized database 72 instead. Response at 25.
`
`Petitioner has not proven that Holtzberg’s centralized database
`72, which is designed specifically for server-side use, could even
`be implemented as part of a client-side application, let alone an
`“instant voice messaging application" specifically-programmed
`in the manner set forth in the claims. Id.
`
`The proposed modification of Abburi would change the basic
`principles under which both Abburi and Holztberg were
`designed to operate. Id. at 25-26.
`
`Petitioner fails to explain how there could possibly be sufficient
`motivation to modify Abburi using incompatible components of
`Holzberg designed specifically for a circuit-switched network.
`
`
`
`No proof of obviousness for “the instant voice messaging application
`
`includes a message database storing the instant voice message”
`
`The “message database” limitations are missing from
`Grounds 4 and 5, based primarily on Vdc’im‘inen:
`
`1. Petitioner concedes that Vc'ic'ina'nen does not explicitly
`disclose either the details of audio message storage in
`general or that the data file is stored in a message
`database in particular.
`Response at 28-29 (citing Ex. 2001 1157—58).
`
`2. Storing only received messages at a recipient client, as
`allegedly disclosed in the Petitioner’s citation to
`Vc'ic'ina'nen, does not disclose or suggest “a message
`database storing the instant voice message" at the
`originating client—i.e., the m client that generates the
`instant voice message in question, displays a list of one
`or more potential recipients, and transmits the instant
`voice message. Id.
`
`3. The proposed modification of Vc'ic'inc'inen based on
`Holtzberg fails for analogous reasons to those articulated
`
`
`
`No proof of obviousness for “the instant voice messaging application
`
`includes a com ression/decom ression s stem ”(claim 6)
`
`Combining Abburi’s alleged client-
`side compression in general (i.e.,
`not part of the same instant voice
`messaging application, which must
`also include decompression, among
`the other recited features)
`
`
`
`with Logan’s alleged compression by
`Host Server 101 [i.e., not a client-side
`compression/decompression system)
`and Logan’s teaching that a separate
`“utility program” is downloaded to the
`client for “program decompression”
`
`wherein the same client-side instant voice messa in
`
`application includes a compression[decompression
`system for compressing the instant voice messages to be
`transmitted over the packet-switched network and
`decompressing the instant voice messages received over the
`packet-switched network.
`
`
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