Trials@uspto.gov
`571-272-7822
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` Paper 7
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` Entered: May 25, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`v.
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,1
`Patent Owner.
`____________
`
`Case IPR2017-00225
`Patent 8,995,433 B2
`____________
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, and
`CHARLES J. BOUDREAU Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`1 The Mandatory Notice filed by Patent Owner pursuant to 37 C.F.R.
`§ 42.8(a)(2) states that Uniloc USA, Inc. and Uniloc Luxembourg S.A. are
`both Patent Owners and real parties-in-interest. Paper 4. Accordingly, the
`caption shall reflect that the Patent Owner in this proceeding encompasses
`both “Uniloc” entities.
`
`
`571-272-7822
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`
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`
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`
`
`
`
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` Paper 7
`
`
` Entered: May 25, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`v.
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,1
`Patent Owner.
`____________
`
`Case IPR2017-00225
`Patent 8,995,433 B2
`____________
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, and
`CHARLES J. BOUDREAU Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`1 The Mandatory Notice filed by Patent Owner pursuant to 37 C.F.R.
`§ 42.8(a)(2) states that Uniloc USA, Inc. and Uniloc Luxembourg S.A. are
`both Patent Owners and real parties-in-interest. Paper 4. Accordingly, the
`caption shall reflect that the Patent Owner in this proceeding encompasses
`both “Uniloc” entities.
`
`
`
`IPR2017-00225
`Patent 8,995,433 B2
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`
`INTRODUCTION
`
`I.
`Apple Inc. (“Petitioner”) filed a Petition requesting inter partes review
`of claims 1−6 and 8 of U.S. Patent No. 8,995,433 B2 (Ex. 1001, “the
`’433 patent”). Paper 2 (“Pet.”). Uniloc USA, Inc. and Uniloc Luxembourg
`S.A. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim.
`Resp.”).
`We have jurisdiction under 35 U.S.C. § 314. Upon considering the
`record developed thus far, for reasons discussed below, we institute inter
`partes review of the ’433 patent as to challenged claims 1−6 and 8.
`
`A. Related Matters
`The parties indicate that the ’433 patent is involved in Uniloc USA,
`Inc. v. Apple, Inc., Case No. 6-16-cv-00638 (E.D. Tex.) and other
`proceedings. Pet. 75−77; Paper 6.
`
`B. The ’433 Patent
`The ’433 patent relates to Internet telephony, and more particularly, to
`instant Voice over IP (“VoIP”) messaging over an IP network, such as the
`Internet. Ex. 1001, 1:19−23. The ’433 patent acknowledges that “[i]nstant
`text messaging is [] known” in the VoIP and public switched telephone
`network (“PSTN”) environments, with its server presenting the user with a
`“list of persons who are currently ‘online’ and ready to receive text
`messages on their own client terminals.” Id. at 2:35−42. In one
`embodiment, such as depicted in Figure 2 (reproduced below), the system of
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`the ’433 patent involves an instant voice message (IVM) server and IVM
`clients. Id. at 7:21−22.
`
`
`
`Figure 2 illustrates IVM clients 206, 208 and legacy telephone 110
`interconnected via network 204 to the local IVM server 202, where IVM
`client 206 is a VoIP telephone, and where legacy telephone 110 is connected
`to legacy switch 112 and further to media gateway 114. Id. at 6:65–7:6,
`7:27−49. The media gateway converts the PSTN audio signal to packets for
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`transmission over a packet-switched IP network, such as local network 204.
`Id. at 7:49−53. In one embodiment, when in “record mode,” the user of an
`IVM client selects one or more IVM recipients from a list. Id. at 8:2−5. The
`IVM client listens to the input audio device and records the user’s speech
`into a digitized audio file at the IVM client. Id. at 8:12−15. “Once the
`recording of the user’s speech is finalized, IVM client 208 generates a send
`signal indicating that the digitized audio file 210 (instant voice message) is
`ready to be sent to the selected recipients.” Id. at 8:19−22. The IVM client
`transmits the digitized audio file to the local IVM server, which, thereafter,
`delivers that transmitted instant voice message to the selected recipients via
`the local IP network. Id. at 8:25−26. Only the available IVM recipients,
`currently connected to the IVM server, will receive the instant voice
`message. Id. at 8:36−38. If a recipient “is not currently connected to the
`local IVM server 202,” the IVM server temporarily saves the instant voice
`message and delivers it to the IVM client when the IVM client connects to
`the local IVM server (i.e., is available). Id. at 8:38−43.
`The ’433 patent also describes an “intercom mode” of voice
`messaging. Id. at 11:34−37. The specification states that the “intercom
`mode” represents real-time instant voice messaging. Id. at 11:37−38. In this
`mode, instead of creating an audio file, one or more buffers of a
`predetermined size are generated in the IVM clients or local IVM servers.
`Id. at 11:38−41. Successive portions of the instant voice message are
`written to the one or more buffers. Id. at 11:41−46. As the buffers fill, the
`content of each buffer is automatically transmitted to the IVM server for
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`transmission to the one or more IVM recipients. Id. Buffering is repeated
`until the entire instant voice message has been transmitted to the IVM
`server. Id. at 11:46−59.
`
`C. Illustrative Claim
`Of the challenged claims, claims 1 and 6 are independent. Each of
`claims 2−5 and 8 depends directly or indirectly from claim 1. Claim 1 is
`illustrative:
`1. A system comprising:
`
`an instant voice messaging application 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 the instant voice messaging application displays a list of
`one or more potential recipients for the instant voice message;
`
`wherein the instant voice messaging application 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 the instant voice messaging application includes a file
`manager system performing at least one of storing, deleting and
`retrieving the instant voice messages from the message database
`in response to a user request.
`
`Ex. 1001, 23:65–24:15.
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`D. Asserted Prior Art and Grounds of Unpatentability
`
`This proceeding relies on the following prior art references:
`
`a) Abburi: U.S. Patent Appl. Pub. No. US 2003/0147512 A1,
`published Aug. 7, 2003, filed in the record as Exhibit 1005;
`
`b) Holtzberg: U.S. Patent No. 6,625,261 B2, issued Sept. 23, 2003,
`filed in the record as Exhibit 1007;
`
`c) Vuori: U.S. Patent Appl. Pub. No. US 2002/0146097 A1,
`published Oct. 10, 2002, filed in the record as Exhibit 1009;
`
`d) Logan: U.S. Patent No. 5,732,216, issued Mar. 24, 1998, filed in
`the record as Exhibit 1008; and
`
`e) Väänänen: U.S. Patent No. 7,218,919 B2, issued May 15, 2007,
`filed in the record as Exhibit 1006.
`
`Petitioner asserts the following grounds of unpatentability (Pet. 2−3):
`
`Challenged
`Claim(s)
`1, 2, 4, and 8
`3
`5 and 6
`1, 2, 4−6, and 8
`3
`
`Basis
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`§ 103(a)
`
`Reference(s)
`Abburi and Holtzberg
`Abburi, Holtzberg, and Vuori
`Abburi, Holtzberg, and Logan
`Väänänen and Holtzberg
`Väänänen, Holtzberg, and Vuori
`
`Petitioner also relies on a Declaration of Leonard J. Forys, Ph.D., filed
`as Exhibit 1003.
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`
`II. DISCUSSION
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the
`broadest reasonable interpretation standard as the claim interpretation
`standard to be applied in inter partes reviews). Under the broadest
`reasonable interpretation standard, claim terms generally are given their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art in the context of the entire disclosure. See In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). We note that only those
`claim terms that are in controversy need to be construed, and only to the
`extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. &
`Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
`Petitioner proposes a construction for the phrase “display[ing] at least
`one of the plurality of instant voice messages,” recited in claim 3. Pet. 9−10
`(alteration added in Petition) (arguing that “displaying the content or
`identifying information of at least one of the plurality of instant voice
`messages” is the broadest reasonable construction). Patent Owner argues
`that construction of the term is unnecessary. Prelim. Resp. 20. For purposes
`of determining whether to institute review, we need not construe expressly
`any term.
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`B. Level of Ordinary Skill in the Art
`
`In determining the level of ordinary skill in the art, various factors
`may be considered, including the “type of problems encountered in the art;
`prior art solutions to those problems; rapidity with which innovations are
`made; sophistication of the technology; and educational level of active
`workers in the field.” In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995)
`(internal quotation and citation omitted). In that regard, Petitioner proffers,
`via its declarant, Dr. Forys, that a person having ordinary skill in the art
`would have “a four-year degree in electrical engineering, computer science,
`or related field . . . as well as at least 3−5 years of academic or industry
`experience in communication systems, particularly in messaging systems,
`data networks including VoIP and mobile telephony, or comparable industry
`experience.” Pet. 8 (citing Ex. 1003 ¶ 30). On the current record, Patent
`Owner does not offer any argument or testimony on the appropriate level of
`ordinary skill in the art.
`We note that Petitioner’s assessment appears consistent with the level
`of ordinary skill in the art at the time of the invention as reflected in the prior
`art in the instant proceeding. See Okajima v. Bourdeau, 261 F.3d 1350,
`1355 (Fed. Cir. 2001). For example, Vuori (Ex. 1009) describes short voice
`messaging service in connection with several network environments and
`infrastructures, such as a Global System for Mobile Communications
`(“GSM”), General Packet Radio Service (“GPRS”), and Universal Mobile
`Telecommunication Systems (“UMTS”). Ex. 1009 ¶¶ 35−39, Figs. 3, 6. For
`purposes of this Decision, we adopt Petitioner’s assessment.
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`C. Obviousness over Abburi in Combination with Other References
`
`Three of Petitioner’s asserted grounds rely primarily on Abburi as
`teaching or suggesting the limitations of the challenged claims, except for, at
`least, the following recited limitations: “message database” and “database
`record” (claims 1, 2); “instant voice message application [that] displays at
`least one of the plurality of instant voice messages” (claim 3);
`“encryption/decryption system” (claim 5); and “compression/decompression
`system” (claim 6). Pet. 12−47. Petitioner relies on Holtzberg, Vuori, and
`Logan as disclosing the missing limitations.
`Given our discussion that follows, a short overview of Abburi,
`Holtzberg, and Vuori is in order.
`1. Overview of Abburi (Ex. 1005)
`Abburi is entitled “Audio Messaging System and Method,” and is
`directed more particularly to audio (including voice) messaging between
`individuals through telecommunications and/or computer networks.
`Ex. 1005, [54], ¶ 1. Abburi recognizes that “the ability to conveniently
`record and send voice and other audio messages via any desired type of
`communication device (e.g., from computer devices in addition to phone
`devices), and to promptly receive such messages in audio form via any
`desired type of communication device, is still lacking.” Id. ¶ 5. Abburi
`solves this need by providing a system that upon receiving the audio
`message on behalf of a recipient, accesses a user profile to determine how
`the intended recipient should be contacted. Id. ¶ 6.
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`Figure 2 of Abburi, reproduced below, illustrates one embodiment of
`a system for implementing the method of supporting audio messaging
`between individuals. Id. ¶¶ 17, 23.
`
`
`
`Figure 2 depicts system 200 including computer server 202, user
`profile store 204, audio message store 206, and interactive voice response
`(“IVR”) system 208. Id. ¶ 23, Fig. 2. As a result of the connections of IVR
`system 208 and computer server 202 with the depicted telecommunication
`network 212 and widely distributed computer network 210, system 200 can
`receive audio messages from and send audio messages to any device
`connected to computer network 210 or telecommunications network 212.
`Id.
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`
`The user profile store contains configuration settings for each user of
`system 200. Id. ¶ 25. A person interested in sending a voice or other audio
`message to a particular individual dials into the IVR system. Id. ¶ 30. Once
`the intended recipient is specified, the caller may speak to provide an audio
`message to the IVR system, which stores the message in audio message store
`206. Id. ¶ 31. If the user profile indicates that the intended recipient should
`receive an email notification, the IVR system sends appropriate information
`to the computer server, which then produces and sends the email
`notification. Id. The audio messages are delivered via audio streaming or as
`an electronic audio file. Id. ¶ 32.
`In one embodiment, Abburi describes the user device including a
`network presence application for maintaining a “subscription” with the
`system when the device is connected to the computer network. Id. ¶ 42.
`With this application, “system 200 may determine whether the intended
`recipient of the message has a presence on the computer network 210 . . .
`and, if so, send an electronic message (e.g., an email message) notifying the
`intended recipient of the received audio message.” Id. Alternatively, if
`several of the user devices include the application, each such device
`receives, when connected to computer network 210, information from
`system 200 indicating which of the corresponding user’s “buddies” or
`contacts have a presence on computer network 210 at that time. Id. ¶ 43.
`When a user accesses system 200 via IVR system 208, the IVR system
`advises the user as to which of his buddies or contacts are online.
`
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`
`2. Overview of Holtzberg (Ex. 1007)
`Holtzberg is titled “Method, System, and Article of Manufacture for
`Bookmarking Voicemail Messages.” Ex. 1007, [54]. Holtzberg relates to
`audio recording devices, and in particular, to voicemail systems that permit
`users to bookmark messages during message playback. Id. at 1:7−9,
`1:61−63. The “[b]ookmarks can be set by entering appropriate touch-tone or
`voice commands.” Id. at 1:64−65. In operation, a user connects to the
`voicemail system to access the user’s voicemail box. Id. at 2:4−11. During
`playback of a voicemail message, the user can enter a command to set a
`voicemail bookmark by using one or more touch-tone digits or voice
`commands at the user’s telephone. Id. at 2:11−16. “The voicemail system
`responds to this command by setting a bookmark pointer corresponding to
`the message being played back.” Id. at 2:16−19.
`Holtzberg discloses a telecommunication system, shown in Figure 2
`(reproduced below) in connection with its voicemail bookmark operation.
`Id. at 2:40−42.
`
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`Figure 2 depicts telecommunication system 60 including terminal
`units 64 in communication with switch 66 over a commercially available
`telecommunication network 62. Id. at 2:42–47. Switch 66, which is located
`at a private branch exchange (“PBX”) or central office, allows terminal
`units 64 to access the voicemail services of voicemail system 68. Id. at
`2:48−52. Voicemail system 68 can be a voicemail server that includes,
`among other features, a voicemail database. Id. at 2:53–61. For each user, a
`voicemail box, associated with the user’s User ID, is stored in voicemail
`database 72. Id. at 3:5−8. A message ID identifies the voicemail messages
`stored in the database for the user with the associated User ID. Id. at
`3:8−10. In addition, one or more bookmark IDs are associated with the User
`ID for identifying voicemail bookmarks associated with the owner of the
`voicemail box. Id. at 3:10−12.
`
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`3. Overview of Vuori (Ex. 1009)
`Vuori is titled “Short Voice Message (SVM) Service Method,
`Apparatus and System.” Ex. 1009, [54]. According to Vuori,
`Tiresome entry of numerous letters of the alphabet into a
`hand-held device for assembling a short text message for
`transmission via a short message service (SMS) to a second
`terminal is avoided by the sending of a short voice message
`(SVM). The SVM is recorded in the sending terminal and
`sent to a SVM service center (SVMSC). The SVMSC may
`notify the intended recipient of the arrival of the SVM and
`await acceptance before sending it. The second terminal
`may then commence a bidirectional communication so that
`an instant voice message session can be established.
`Alternatively, the problem can be overcome by converting
`the spoken SVM to text in the user terminal by means of
`voice recognition software and sending the converted text
`to the recipient by means of the traditional SMS
`infrastructure for display as text or for playback as text
`converted to voice.
`
`
`Id. at Abstract. Figure 2 of Vuori, reproduced below, illustrates the short
`voice messaging method. Id. ¶ 20.
`
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`SENDER USER EQUIPMENT RECEIVES SIGNAL FROM SENDING
`PRINCIPAL THAT SVM IS TO BE ENUNCIATED
`
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`SENDER USER EQUIPMENT PREPARES TO RECEIVE SVTVI
`
`
`SENDER USER EQUIPMENT PROVIDES SIGNAL T0 SENDING
`PRINCIPAL TO BEGIN ENUNCIATING SVM
`
`IS
`
`18
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`SENDER USER EQUIPMENT RECEIVES AND STORES SVM DURING
`ENUNCIATION
`
`
`
`SVM CONCLUDED
`
`24
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`RECIPIENT SELECTED BY SENDING PRINCIPAL
`
`SVM SENT TO IMISMS SERVICE BY SENDER EQUIPMENT AND
`FROM THERE TO INSTANT INBOX 0F RECIPIENT
`
`RECIPIENT RECEIVES A NOTIFICATION VIA INBOX UA
`
`FOR DELIVERVIPLAYBACK
`
`RECIPIENT DECIDES TO RECEIVE SVM AND SIGNALS REQUEST
`
`
`
`IMISMS SERVICE OR INBOX PROVIDES DELIVER‘IVPLAYBACK OF
`SVM TO RECIPIENT
`
`35
`
`FIG. 2
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`According to Figure 2, a user initiates a SVM by pressing a menu key
`on a user equipment, which prepares to receive the SVM and emits a beep
`sound to alert the user he may commence speaking. Id. ¶ 32. The user
`equipment receives and stores the SVM. Id. The user selects one or more
`intended recipients and initiates the transfer. Id. ¶ 33. The SVM is sent to
`the SVMSC, “which determines the availability of the one or more intended
`recipients.” Id. ¶ 34. The SVMSC sends the SVM immediately to the
`intended recipients who are available, and continues attempting to send it to
`those not available until they become available or until a time out occurs.
`Id. Alternatively, the SVMSC notifies the available recipients that an SVM
`has been received, and the recipient may decide to decline or accept the
`SVM received from the sender. Id. ¶ 35. In the embodiment where the
`SVMSC sends the SVM directly to the recipient, the intended recipient has
`acquiesced to availability by previously joining a “buddy list” or otherwise
`has subscribed to the service. Id.
`
`4. Reasonable Likelihood Determination
`After considering Petitioner’s contentions and Patent Owner’s
`arguments in opposition, we are persuaded that Petitioner has demonstrated
`a reasonable likelihood of prevailing in showing that claims 1−6 and 8 of the
`’433 patent would have been obvious over Abburi in combination with the
`other applied references.
`
`Independent Claims 1 and 6
`i.
`On this record, we are satisfied that the Petition proffers arguments
`and evidence supporting the contention that Abburi discloses:
`
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`a) An instant voice messaging application including a client platform
`system (Abburi’s user device 300 configured to record an audio
`message locally and transmit the message to the system)
`(Pet. 20−24);
`b) The application displays a list of one or more potential recipients
`(Abburi’s user interface in user device 300 including a visual
`display and user input and disclosure of information identifying
`one or more intended recipients through a selection of individuals
`from a contact list) (id. at 24−25); and
`c) The application includes a file manage (Abburi’s disclosure of
`playback of received electronic audio file at the user’s option)
`(id. at 31−32.).
`With regard to the limitations concerning the instant voice message
`application including a message database and database record, Petitioner
`relies on Holtzberg’s disclosure of voicemail database 72. Id. at 25−33.2
`In particular, Petitioner argues that “storing voice messages in a database
`was well-known in the prior art, e.g., as explicitly taught in Holtzberg.” Id.
`at 27. According to Petitioner, it would have been obvious for a person of
`
`
`2 The Petition appears to assert that Abburi teaches the message database
`limitation. Pet. 25−27. But that assertion is lacking an explanation of how
`Abburi’s disclosure of locally storing a voice message teaches or suggests
`the storing to occur in a message database. See id. at 27 (arguing that
`Abburi teaches storing in the form of an audio file prior to sending the audio
`file). Accordingly, we focus our discussion of this ground on the arguments
`presented regarding the combination with Holtzberg.
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`ordinary skill in the art “to incorporate Holtzberg’s database structure into
`Abburi because such incorporation amounts to nothing more than applying a
`known technique (e.g. storing voice messages in a database) to a known
`device (e.g., user device 300 of Abburi) ready for improvement to yield
`predictable results (a user device storing audio messages in a database).” Id.
`at 29 (citing Ex. 1003 ¶ 109). Petitioner also states that a person of ordinary
`skill in the art would have had motivation to improve the organization and
`retrieval of audio messages on a user’s device. Id.
`Patent Owner proffers four arguments against Petitioner’s assertions.
`First, Patent Owner argues that the claimed message database is part of the
`“sender-side” instant voice messaging application and Holtzberg’s voicemail
`database is not on the “sender-side.” Prelim. Resp. 25−28. Second, Patent
`Owner further contends that Petitioner proffers no rationale or motivation
`for “reconfiguring Holtzberg’s central database (72), which is designed to
`serve multiple terminal units (64), to operate, instead, as part of an
`application of a particular end-user client device.” Id. at 28. Third,
`according to Patent Owner, Abburi teaches away from the proposed
`modification. Id. at 28−29. Finally, Patent Owner argues the
`incompatibility of the teachings that Petitioner relies on because Holtzberg’s
`voicemail system applies to circuit-switched telecommunication networks,
`in contrast with the alleged packet-switched architecture of Abburi. Id.
`at 29−30. Based on the current, incomplete record, we are not persuaded by
`these arguments.
`First, we agree with Patent Owner that the instant voice message
`application and the recited message database, by the plain reading of the
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`claim language, is directed to the application at the client. See, e.g.,
`Ex. 1001, 23:66−67 (the application including a “client platform system for
`generating an instant voice message); id. at 23:4−6 (the application
`displaying “a list of one or more potential recipients”). We understand
`Petitioner, however, to rely on the application of Holtzberg’s voicemail
`database for Abburi’s storing of the audio file at the user device.
`Accordingly, we find unpersuasive the distinction of Holtzberg’s voicemail
`database being “central” while the claims are “sender-side” focused.
`Second, we are not persuaded by the “teaching away” argument.
`Merely stating that there are limitations to the effectiveness and convenience
`of voicemail does not constitute a “disparagement of voice systems in
`general” as Patent Owner asserts. See Prelim. Resp. 29. For instance,
`Abburi discusses the likelihood that a voicemail message might not be
`retrieved by the recipient of a message for an extended period of time.
`Ex. 1005 ¶ 3. The statement contrasts this feature of voicemail with features
`of other communication options, such as email and instant messaging. Id.
`This explanation, however, addresses Abburi’s desired goal of improving the
`prompt receipt of messages in audio form from any desired type of
`communication device, among other features. Id. ¶¶ 5−6. It does not
`advocate abandoning voicemail systems altogether, much less the use of a
`voicemail database. See Meiresonne v. Google, Inc., 849 F.3d 1379, 1383
`(Fed. Cir. 2017) (finding that the reference’s negative descriptions of a
`feature did not amount to promoting abandonment of the feature). Nor do
`we see how this statement in Abburi disparages voicemail systems in general
`such that the teaching of Holtzberg’s voicemail database to store voice
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`messages would be unlikely to produce the result sought and Abburi would
`be said to “teach away” from the claimed invention. See Medichem, S.A. v.
`Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (citing In re Gurley, 27
`F.3d 551, 553 (Fed. Cir. 1994)).
`Finally, we address Patent Owner’s challenge to the proffered
`rationale for the asserted combination. At the outset, we do not agree with
`Patent Owner that Petitioner “fails to provide any rationale” for the asserted
`combination. Prelim. Resp. 28−29. As stated above, we understand the
`Petition to allege that a person of ordinary skill in the art would seek to
`improve the organization and retrieval of audio messages stored on the
`user’s device by incorporating a database that stores audio messages, as
`taught in Holtzberg. See Pet. 29. On this record, we are persuaded that the
`proffered rationale is sufficient for Petitioner to meet the reasonable
`likelihood threshold for institution. Further, to the extent Patent Owner
`argues that the motivation is negated by an alleged incompatibility of the
`references, such argument is unsupported by factual evidence and is not
`persuasive at this time. Whether sufficient evidence supports Petitioner’s
`proffered motivation to combine Holtzberg’s voicemail database teachings
`with Abburi’s user device 300 is a fact-dependent determination for which
`Petitioner has provided evidence adequate for institution, and we defer a
`final determination on the sufficiency of Petitioner’s supporting evidence
`until the full record is before us.
`Before concluding our determination concerning the challenged
`independent claims, we note that claim 6 recites limitations similar to
`claim 1 with the addition of a compression/decompression system in the
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`application. See Ex. 1001, 24:46−51. For this added limitation, Petitioner
`relies on Logan’s teaching of compressing audio program segments for
`download to subscribers and decompressing the programs when downloaded
`to the client/player. See Pet. 45−46 (citing Ex. 1008, 9:18−22, 40:9−13).
`According to Petitioner, a person of ordinary skill in the art,
`would have found it obvious to combine the
`compression/decompression capabilities of Logan
`with Abburi
`and Holtzberg because
`such
`incorporation amounts to nothing more than applying
`a known technique (e.g. compressing/decompressing
`an audio recording) to a known device (e.g., user
`device 300 of Abburi) ready for improvement to yield
`predictable
`results
`(a user device providing
`encryption and decryption of audio messages).
`
`
`Pet. 46−47 (citing Ex. 1003 ¶ 150). Further, Petitioner alleges that Abburi
`suggests the benefit of providing compression of audio files prior to sending
`to recipients and that an ordinarily skilled artisan would have looked to
`Logan for decompression at the user device. Id. at 47. On this record, we
`are persuaded that the proffered rationale is sufficient for Petitioner to meet
`the reasonable likelihood threshold for institution.
`Having reviewed the information presented in the Petition and the
`Preliminary Response, we determine that Petitioner has shown a reasonable
`likelihood of prevailing in its challenge of claims 1 and 6 as unpatentable
`over Abburi and Holtzberg (claim 1) and Abburi, Holtzberg, and Logan
`(claim 6).
`
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`Dependent Claims 2−5, 8
`ii.
`For the challenged dependent claims, Petitioner argues that (1) Abburi
`teaches the limitations further recited in claims 2, 4, and 8; (2) Vuori teaches
`the limitations further recited in claim 3;3 and (3) Logan teaches the
`limitations further recited in claim 5. Pet. 33−43. Vuori is relied upon for
`its disclosure of converting the spoken short voice message to text and
`sending the converted text to the recipient by means of the traditional short
`messaging service. Id. at 38 (citing Ex. 1009 ¶ 82). Logan is relied upon for
`its disclosure of using conventional RSA encryption for encrypting
`transmission between client and server. Pet. 41−42 (citing Ex. 1008,
`10:54−59) (arguing also that Logan teaches decryption at the subscriber’s
`player/recorder unit).
`As for the addition of Vuori to the combination of Abburi and
`Holtzberg, Petitioner argues that an ordinarily skilled artisan would have
`been motivated to incorporate Vuori’s teaching of converting voice
`messages to text to allow viewing of audio messages without requiring
`playback. Id. at 39 (citing Ex. 1003 ¶ 133). With regard to Logan,
`Petitioner argues that a person of ordinary skill in the art would have looked
`to incorporate Logan’s teaching of encryption and decryption of audio
`
`
`3 We note that the Petition also asserts that Abburi discloses the limitation
`recited in claim 3 because Abburi describes that an instant text message to
`the user may include a hyperlink to the audio message. Pet. 37. The
`Petition, however, lacks explanation of how Abburi’s instant text message
`would be applied to an instant voice message application, as recited in claim
`3. Accordingly, Petitioner’s assertion in this regard is not persuasive.
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`recording transmissions with Abburi and Holtzberg as this would have been
`a known technique applied to a known device to provide encryption and
`decryption at Abburi’s user device 300. Id. at. 42−43 (citing Ex. 1003
`¶ 141).
`On the record before us, Petitioner’s arguments and evidence
`concerning the challenge of dependent claims 2−5 and 8 are sufficient to
`meet the reasonable likelihood threshold for institution.
`
`D. Obviousness over Väänänen in Combination with Other References
`
`The remaining unpatentability grounds rely on the combination of
`Väänänen with other references. Pet. 3, 47−73.
`1. Overview of Väänänen (Ex. 1006)
`Väänänen is titled “Voicemail Short Message Service Method and
`Means and a Subscriber Terminal.” Ex. 1006, [54]. More specifically,
`Väänänen concerns instantaneous voice mail between Internet compatible
`computers, personal digital assistants, telephones, and mobile stations. Id. at
`1:8−11. Further, Väänänen notes that prior art subscriber terminals did not
`allow the use of audio features with an Internet connection and that for prior
`art voicemail systems, a specific voicemail central server was an essential
`requirement that introduced unnecessary network hardware. Id. at 1:34−42.
`In one embodiment, the method of Väänänen is “arranged with a
`mobile station” or more specifically, for example, a computer program
`within a SIM card in the mobile station. Id. at 5:42−45, 10:3−8. A message
`recipient (or several recipients or group) may be chosen from the memory of
`the SIM card or the memory of the mobile station, or may be input into the
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