UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`APPLE, LLC,
`
`Petitioner,
`
`v.
`
`UNILOC USA, INC. AND UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`______________________
`
`Case IPR2017-00225
`U.S. Patent 8,995,433
`______________________
`
`DECLARATION OF WILLIAM C EASTTOM II
`
`
`
`
`
`
`
`
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`Apple v. Uniloc, IPR2017-00225
`Uniloc's Exhibit 2001, page 1
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`

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`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION ...................................................................................... 1
`
`II.
`
`BACKGROUND AND QUALIFICATIONS ............................................. 2
`
`III. LEGAL STANARDS USED IN MY ANALYSIS ...................................... 2
`
`A. Obviousness ......................................................................................... 3
`
`B. Priority Date ......................................................................................... 4
`
`C. Person of Ordinary Skill in the Art ....................................................... 4
`
`D. Broadest Reasonable Interpretation ...................................................... 6
`
`IV. OVERVIEW OF THE ’433 PATENT ........................................................ 6
`
`V.
`
`CLAIM CONSTRUCTION ...................................................................... 10
`
`A. “instant voice messaging application” ................................................ 10
`
`VI. VALIDITY ANALYSIS ........................................................................... 15
`
`A. No obviousness for “the instant voice messaging 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” (independent Claim 6) ......................................................... 15
`
`1. Ground 3 (based on Logan)............................................................. 16
`2. Ground 4 (based on Väänänen) ....................................................... 17
`
`B. No obviousness for “the instant voice messaging application
`includes a message database storing the instant voice
`message” (Independent Claim 1 and dependent Claims 2-5
`and 8) ................................................................................................. 19
`
`1. Grounds 1-3 (based on Abburi) ....................................................... 20
`2. Grounds 4 and 5 (based on Väänänen) ............................................ 27
`
`
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`i
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`Apple v. Uniloc, IPR2017-00225
`Uniloc's Exhibit 2001, page 2
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`C. No obviousness for “wherein the instant voice messaging
`application includes a file manager system performing at
`least one of storing, deleting and retrieving [a/the] instant
`voice messages from a message database in response to a
`user request” (all challenged Claims 1‒6 and 8) ................................. 27
`
`1. Grounds 1 through 3 (based on Abburi) .......................................... 28
`2. Grounds 4 and 5 (based on Väänänen) ............................................ 30
`
`VII. CONCLUSION ........................................................................................ 30
`
`
`
`
`
`
`
`
`ii
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`Apple v. Uniloc, IPR2017-00225
`Uniloc's Exhibit 2001, page 3
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`

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`
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`I, Chuck Easttom, hereby declare as follows:
`
`I.
`
`INTRODUCTION
`
`1. My name is William Charles Easttom II (Chuck Easttom) and I
`
`have been retained by Uniloc, USA, Inc., and Uniloc Luxembourg S.A.
`
`(“Uniloc” or the “Patent Owner”) to provide my expert opinions regarding
`
`U.S. Patent No. 8,995,433 (the “’433 patent”). In particular, I have been asked
`
`to opine on whether claims 1-6 and 8 (the “challenged claims”) of the ’433
`
`patent would have been obvious to a person of ordinary skill in the art (POSA)
`
`at the time the inventions described in the ’433 patent were conceived. Based
`
`on my review of the prior art then available, my understanding of the relevant
`
`of the relevant requirements of patent law, and my decades of experience in
`
`the field of computer science including communications systems, it is my
`
`opinion that the challenged claims would not have been obvious in light of the
`
`references cited in the Petition. I note that in addition to the Petition and its
`
`accompanying exhibits, in formulating my opinions I further considered the
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`Deposition Transcript of Dr. Leonard Forys (filed as Ex. 2002).
`
`2.
`
`I am being compensated for my time at my standard consulting
`
`rate of $300 per hour. I am also being reimbursed for expenses that I incur
`
`during the course of this work. Apart from that, I have no financial interest in
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`
`
`1
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`Apple v. Uniloc, IPR2017-00225
`Uniloc's Exhibit 2001, page 4
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`

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`
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`Uniloc. My compensation is not contingent upon the results of my study or
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`the substance of my opinions.
`
`II. BACKGROUND AND QUALIFICATIONS
`
`3.
`
`In my 25 years of computer industry experience I have had
`
`extensive experience in communications systems, including data networks in
`
`general that have messaging capabilities. I hold 40 industry certifications,
`
`which include (among others) extensive certifications in server-based
`
`communication systems. I have authored 20 computer science books, several
`
`of which deal with communications topics including messaging. I also am
`
`named inventor on seven patents.
`
`4.
`
`A more detailed description of my professional qualifications,
`
`including a list of publications, teaching, and professional activities, is
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`contained in my curriculum vitae, a copy of which is attached hereto as
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`Appendix A.
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`III. LEGAL STANARDS USED IN MY ANALYSIS
`
`5.
`
`Although I am not an attorney and I do not offer any legal
`
`opinions in this proceeding, I have been informed of and relied on certain legal
`
`principles in reaching the opinions set forth in this Declaration.
`
`
`
`2
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`Apple v. Uniloc, IPR2017-00225
`Uniloc's Exhibit 2001, page 5
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`A. Obviousness
`
`6.
`
`I understand that a patent claim is invalid if the differences
`
`between the subject matter and the prior art are such that the subject matter as
`
`a whole would have been obvious to a POSA at the time of the alleged
`
`invention. I further understand that an obviousness analysis involves a review
`
`of the scope and content of the asserted prior art, the differences between the
`
`prior art and the claims at issue, the level of ordinary skill in the pertinent art,
`
`and objective indicia of non-obviousness such as long-felt need, industry
`
`praise for the invention, and skepticism of others in the field.
`
`7.
`
`I have been informed that if a single limitation of a claim is
`
`absent from the cited prior art, the claim cannot be considered obvious.
`
`8.
`
`I have further been informed that it is improper to combine
`
`references where the references teach away from a proposed combination; and
`
`that the following factors are among those relevant in considering whether
`
`prior art teaches away:
`
`• whether a POSA, upon reading the reference would be led in a
`
`direction divergent from the path that was taken by the applicant;
`
`• whether the prior art criticizes, discredits, or otherwise discourages
`
`investigation into the claimed invention;
`
`
`
`3
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`Apple v. Uniloc, IPR2017-00225
`Uniloc's Exhibit 2001, page 6
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`• whether a proposed combination would produce an inoperative
`
`result; and
`
`• whether a proposed combination or modification would render the
`
`teachings of a reference unsatisfactory for its intended purpose.
`
`9.
`
`In addition, I have been informed that a proposed combination
`
`that changes the basic principles under which the prior art was designed to
`
`operate may fail to support a conclusion of obviousness.
`
`B.
`
`Priority Date
`
`10. The ’433 patent issued from U.S. Patent Application No.
`
`14/244,125, which is a continuation of U.S. Patent No. 8,724,622, 8,243,723,
`
`which is a continuation of U.S. Patent No. 7,535,890, filed on Dec. 18, 2003.
`
`The ’723 Patent issued on March 31, 2015. For purposes of this declaration, I
`
`have assumed the priority date for the ’433 patent is Dec. 18, 2003.
`
`C.
`
`Person of Ordinary Skill in the Art
`
`11.
`
`I understand that a POSA is a hypothetical person who is
`
`presumed to have ordinary skill in the art as of the priority date. I understand
`
`that factors that may be considered in determining the level of ordinary skill
`
`in the art may include: (a) the type of problems encountered in the art; (b)
`
`prior art solutions to those problems; (c) the rapidity with which innovations
`
`
`
`4
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`Apple v. Uniloc, IPR2017-00225
`Uniloc's Exhibit 2001, page 7
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`are made; (d) the sophistication of the technology; and (e) the educational
`
`level of active workers in the field.
`
`12.
`
`I have been asked to provide my opinion as to the qualifications
`
`of the person of ordinary skill in the art to which the ’723 patent pertains as
`
`of August 15, 2003. In my opinion, a POSA would be someone with a
`
`baccalaureate degree related to computer technology and 2 years of
`
`experience with communications technology, or 4 years of experience without
`
`a baccalaureate degree.
`
`13.
`
`I understand that Dr. Forys opines that a person of ordinary skill
`
`in the art would have had “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).1 While my opinion appears
`
`to largely overlap with that offered by Dr. Forys, I disagree with Dr. Forys’
`
`definition to the extent “ordinary skill” it is interpreted to require more than 4
`
`years of academic or industry experience exclusively in the fields of in VoIP
`
`
`1 I note that Dr. Forys’ declaration largely repeats, nearly verbatim, the same
`arguments presented in the Petition. The citations to the Petition herein are
`intended to also address the corresponding (if not identical) language in Dr.
`Forys’ declaration.
`
`
`
`5
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`Apple v. Uniloc, IPR2017-00225
`Uniloc's Exhibit 2001, page 8
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`

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`
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`and mobile telephony. In any event, I qualify as a person of ordinary skill in
`
`the art, even under Dr. Forys apparent interpretation.
`
`D. Broadest Reasonable Interpretation
`
`14.
`
`I have been informed that, for purposes of this Inter Partes
`
`Review (IPR), the terms in the claims of the ’723 patent are to be given their
`
`Broadest Reasonable Interpretation (BRI) in light of the specification of the
`
`’723 patent as understood by a POSA on the priority date. I have used this
`
`standard throughout my analysis.
`
`IV. OVERVIEW OF THE ’433 PATENT
`
`15. The ’433 patent, titled “System and method for instant VoIP
`
`Messaging,” generally is directed to “a system and method for enabling local
`
`and global instant VoIP messaging over an IP network, such as the Internet,
`
`with PSTN support.” Ex. 1001, 1:21-23.
`
`16. The Background section of the ’433 patent provides a historical
`
`context by noting that “Traditional telephony is based on a public switched
`
`telephone network (i.e., ‘PSTN’).” Id., 1:25-35. According to the ’433 Patent,
`
`“[c]ircuit switching provides a communication path (i.e., dedicated circuit) for
`
`a telephone call from the telephone terminal to another device 20 over the
`
`PSTN, including another telephone terminal. During the telephone call, voice
`
`communication takes place over that communication path.” Id.
`
`
`
`6
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`Apple v. Uniloc, IPR2017-00225
`Uniloc's Exhibit 2001, page 9
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`

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`
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`17. The ’433 patent further explains “An alternative to the PSTN is
`
`Voice over Internet Protocol (i.e., ‘VoIP’), also known as IP telephony or
`
`Internet telephony.” Id. 1:36-38. Because legacy circuit-switched devices
`
`were unable to communicate directly over packet-switched networks, media
`
`gateways (114) were designed to receive circuit-switched signals and
`
`packetize them for transmittal over packet-switched networks, and vice versa.
`
`Id., 2:12-2:33. The conversion performed by media gateways (e.g., 114 and
`
`118) highlights the fact that packetized data carried over packet-switched
`
`networks (e.g., IP network 102) are different from and are incompatible with
`
`an audio signal carried over a dedicated packet-switched circuit. Id.
`
`18. The ’433 further recognized that “notwithstanding the foregoing
`
`advances in the VoIP/PSTN voice communication and voice/text messaging,
`
`there is still a need in the art for providing a system and method for providing
`
`instant VoIP messaging over an IP network. More particularly, there is a need
`
`in the art for providing local and global instant voice messaging over VoIP
`
`with PSTN support.” Id., 1:48-54.
`
`19. FIG. 5 of the ’433 patent (copied below) is an illustration of an
`
`example global instant voice messaging (IVM) system 500 that includes both
`
`a global IVM server system 502 and a local IVM server 202 operating on the
`
`Internet and a local IP network, respectively. Id., at 15:33-37.
`
`
`
`7
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`Apple v. Uniloc, IPR2017-00225
`Uniloc's Exhibit 2001, page 10
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`20. The Petition challenges claims 1-6 and 8 under alternatively
`
`proposed combinations of references. Independent Claims 1 and 6 (the only
`
`
`
`independent claims at issue) are copied below:
`
`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 or 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
`
`
`
`8
`
`Apple v. Uniloc, IPR2017-00225
`Uniloc's Exhibit 2001, page 11
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`

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`
`
`
`
`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.
`
`6. 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 file manager system performing at
`least one of storing, deleting and retrieving the
`instant voice messages from a message database
`in response to a user request; and
`
`wherein the instant voice messaging 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.
`
`9
`
`Apple v. Uniloc, IPR2017-00225
`Uniloc's Exhibit 2001, page 12
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`

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`
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`V. CLAIM CONSTRUCTION
`
`21.
`
`I have been asked to provide my opinions regarding the
`
`construction of certain disputed terms as would be understood by a POSA
`
`using the BRI.
`
`A. “instant voice messaging application”
`
`22. A plain reading of the claim language confirms the features of
`
`“the instant voice messaging application” are recited from the perspective of
`
`a particular “client” where that application must generate, transmit, and store
`
`the same “instant voice message”—i.e., the originating client for that
`
`particular “instant voice message.”
`
`23. The challenged claims all recite that the “instant voice messaging
`
`application” must include 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.” A POSA
`
`would interpret the words “client platform system,” “generating,” and
`
`“transmitting” as requiring the “instant voice messaging application” to reside
`
`at the originating client, as opposed to a server or a recipient client.
`
`24. Further, the same “instant voice messaging application” that
`
`generates and transmits the “instant voice message,” must also “display[] a
`
`list of one or more potential recipients for the instant voice message.” A POSA
`
`
`
`10
`
`Apple v. Uniloc, IPR2017-00225
`Uniloc's Exhibit 2001, page 13
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`

`

`
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`would understand that use of the qualifier “potential recipients” means the
`
`recipient(s) have not yet received the “instant voice message,” which further
`
`confirms the features of the “instant voice messaging application” are recited
`
`from the perspective of the message-originating client.
`
`25.
`
`Independent Claim 1 further requires that the same “instant voice
`
`messaging application” must also “include[] a message database storing the
`
`instant voice message.” Accordingly, Claim 1 expressly requires that “the
`
`instant voice message” must be stored in a “message database” of the same
`
`“instant voice messaging application” that both generates and transmits that
`
`“instant voice message” and “displays a list of one or more potential
`
`recipient”—i.e., a “message database” at the originating client.
`
`26. This plain reading of the claim language is supported by the
`
`specification of the ’433 Patent. For example, Figure 3 of the ’433 patent
`
`(copied below) is “an exemplary illustration of the architecture in the IVM
`
`client 208 for enabling instant voice messaging according to the present
`
`invention.” Ex. 1001, 12:6-8.
`
`
`
`11
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`Apple v. Uniloc, IPR2017-00225
`Uniloc's Exhibit 2001, page 14
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`27.
`
`In the illustrated embodiment, the IVM client 208 “comprises a
`
`client platform 302 for generating an instant voice message and a messaging
`
`system 320.” Id., 12:9-8. The description further states “[t]he file manager
`
`[308] accesses a message database 310, in which both the received and
`
`recorded instant voice messages are represented as database records, each
`
`record comprising a message identifier and the instant voice message.” Id.,
`
`36-40. The inclusion of message database 310 within client platform 302, as
`
`illustrated and described with reference to Figure 3, is consistent with the
`
`corresponding claim language. I therefore conclude that all the claimed
`
`features for the “instant voice messaging application” are shown, by way of
`
`
`
`12
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`Apple v. Uniloc, IPR2017-00225
`Uniloc's Exhibit 2001, page 15
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`
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`example, in Figure 3 of the ’433 Patent and its accompanying description. I
`
`understand Dr. Forys agree with me on this point. Ex. 2002, 89:11−95:2.
`
`28. The teachings of the ’433 Patent further confirm each client has
`
`its own independent instance of an entire and complete instant voice
`
`messaging application. Ex. 1001, 12:6-8 (FIG. 3 is an exemplary illustration
`
`of the architecture in the IVM client 208 enabling instant voice messaging
`
`according to the present invention.”). In this manner, two clients may
`
`privately exchange instant voice messages without having to involve, for
`
`example, the applications of other clients which are intentionally excluded
`
`from those private communication.
`
`29. However, I do not interpret the claim language as referring to all
`
`instances of instant voice messaging applications for the entire system.
`
`Rather, the claim language is unambiguously directed to a singular “instant
`
`voice messaging application” having certain features specially-programmed
`
`to execute respective operations (e.g., generating, transmitting, display[ing],
`
`“storing,” etc.) on the same “instant voice message.” I therefore disagree with
`
`Dr. Forys to the extent he has interpreted “instant voice messaging
`
`application” to generally refer to all software of the “system” recited in the
`
`preamble, regardless of where the software resides and is executed.
`
`
`
`13
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`Apple v. Uniloc, IPR2017-00225
`Uniloc's Exhibit 2001, page 16
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`

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`30.
`
`I also find Dr. Forys’ definition for “application” to be
`
`unreasonably broad and not supported by the extrinsic evidence he cites. I
`
`understand Dr. Forys defines “application” as “a set of coded instructions that
`
`enable a machine (e.g., a computer) to perform a sequence of operations.” Ex.
`
`1003 ¶94; Ex. 2002, 84:4-19 and 87:1-9. Because virtually all software
`
`satisfies that definition, Dr. Forys evidently equates “application” with any
`
`form of software. I disagree.
`
`31. Not all software is correctly characterized as an application, let
`
`alone part of the same application. I find it significant that the plain reading
`
`of the claim language expressly attributes several coordinated and interrelated
`
`features to the same user-facing “instant voice messaging application.” This
`
`is consistent with how a POSA would have understood the word “application”
`
`at the time of the invention. The term of art “application” at that time (and
`
`even today) generally refers to specialized program(s) designed to permit an
`
`end user to interface with a computer to perform a coordinated group of tasks
`
`applicable to the purpose of the application. This is more consistent with the
`
`dictionary definition cited in the Petition, though I do not necessarily find that
`
`non-technical dictionary to be the most appropriate source here. Ex. 1015, p.
`
`4 (defining “application” as “A computer program with a user interface” and,
`
`as an adjective, “Of or being a program designed for a specific task.”).
`
`
`
`14
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`Apple v. Uniloc, IPR2017-00225
`Uniloc's Exhibit 2001, page 17
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`32. By way of contrast, an operating system or (O/S) generally refers
`
`to low-level computer software that runs the hardware and upon which
`
`applications are run. For example, Microsoft Windows was then (and is today)
`
`a type of operating system while Microsoft Word was then (and is today) an
`
`application that runs on the Microsoft Windows O/S. It appears Dr. Forys at
`
`least agrees with me that not all software is an application because he testified
`
`a POSA would have been able to readily differentiate an application from an
`
`operating system. Ex. 1002, 84:4-19.
`
`33. For the foregoing reasons, a POSA would not interpret the claim
`
`language as referring to disconnected software in general or to all instances of
`
`instant voice messaging applications for the entire system. Rather, a plain
`
`reading of the claim language confirms it is directed to a particular “instant
`
`voice messaging application” having certain features specially-programmed
`
`to execute several recited operations on the same “instant voice message.”
`
`VI. VALIDITY ANALYSIS
`
`A. No obviousness for “the instant voice messaging 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”
`(independent Claim 6)
`
`
`
`15
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`Apple v. Uniloc, IPR2017-00225
`Uniloc's Exhibit 2001, page 18
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`

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`
`
`1. Ground 3 (based on Logan)
`
`34.
`
`In my opinion, Logan’s teachings of a server compressing audio
`
`program does not render obvious a client-side “instant voice messaging
`
`application”
`
`that
`
`includes “a compression/decompression system for
`
`compressing the instant voice messages to be transmitted,” as recited in
`
`independent claim 6.
`
`35. Petitioner’s citations to Logan are taken primarily from a section
`
`appearing under the header “Host File Server.” Pet. 45-46 (citing Ex. 1008,
`
`4:46-50, 4:53-54). That section confirms Logan’s host server 101 compresses
`
`the audio. Consistent with that description, Logan discloses in another cited
`
`passage that its compression step 440 is server-executed. Pet. 45-46 (citing
`
`Ex. 1008, 40:9-13).
`
`36. Compressing data at a server for subsequent download to a user
`
`device does not disclose or suggest a client-side “instant voice messaging
`
`application [which] includes a compression/decompression system for
`
`compressing the instant voice messages to be transmitted over the packet-
`
`switched network.” I agree with the Board that “the instant voice message
`
`application …, by the plain reading of the claim language, is directed to the
`
`application at the client.” Paper 7 at 18-19. Thus, the client application which
`
`generates an instant voice message, displays a list of one or more recipients,
`
`
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`16
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`Apple v. Uniloc, IPR2017-00225
`Uniloc's Exhibit 2001, page 19
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`

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`
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`transmits that message, etc., must also be the same client application that
`
`“includes a compression/decompression system for compressing the instant
`
`voice message to be transmitted.” I therefore conclude Logan does not render
`
`obvious a client-side “instant voice messaging application” which must
`
`further include a “compression/decompression system” as claimed.
`
`2. Ground 4 (based on Väänänen)
`
`37. Väänänen’s alleged “compression methods” in general, relied
`
`upon in the Petition and the testimony cited therein, do not render obvious a
`
`client-side “instant voice messaging application” which
`
`includes a
`
`“compression/decompression system” in addition to all the other recited
`
`limitations for that same application.
`
`38. A POSA would not interpret the claim language at issue as
`
`merely requiring software functionality in the abstract. While all applications
`
`may be characterized as a form software, not all software is correctly
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`characterized as an application, let alone part of the same application. I find it
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`significant that the plain reading of the claim language expressly attributes
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`several coordinated and interrelated features to the same user-facing “instant
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`voice messaging application.” This is consistent with how a POSA would
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`have understood the word “application” at the time of the invention. The term
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`of art “application” at that time (and even today) generally refers to a
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`
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`17
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`Apple v. Uniloc, IPR2017-00225
`Uniloc's Exhibit 2001, page 20
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`program(s) designed to permit an end user to interface with a computer to
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`perform a coordinated group of tasks directly applicable to the purpose of the
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`application. By way of contrast, an operating system or (O/S) generally refers
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`to low-level computer software that runs the hardware and upon which
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`applications are run. For example, Microsoft Windows was then (and is today)
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`a type of operating system while Microsoft Word was then (and is today) an
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`application that runs on the Microsoft Windows O/S. It appears Dr. Forys at
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`least agrees with me that not all software is an application because a POSA
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`would have been able to readily differentiate an application from an operating
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`system. Ex. 1002, 84:4−19.
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`39. Given the explicit claim language, I find misleading and
`
`irrelevant Dr. Forys testimony that Väänänen teaches using compression
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`methods by creating a data file in the form of an MP3. Ex. 1003 ¶¶ 196, 207.
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`Creating a new and previously non-existing data file according to the MP3
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`format is distinguishable from, and does not render obvious, an “instant voice
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`messaging application [which] includes a compression/decompression system
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`for compressing the instant voice messages to be transmitted over the packet-
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`switched network.”
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`40. A plain reading of the claim language confirms the distinction.
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`Independent Claim 6 recites both “a client platform system for generating an
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`18
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`Apple v. Uniloc, IPR2017-00225
`Uniloc's Exhibit 2001, page 21
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`
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`instant voice message” and “a compress/decompression system for
`
`compressing the instant voice messages to be transmitted.” I therefore
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`interpret “compressing” in the context of Claim 6 as referring to a different
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`function applied to an existing “instant voice message” generated by a distinct
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`system.
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`B. No obviousness for “the instant voice messaging application
`includes a message database storing the instant voice message”
`(Independent Claim 1 and dependent Claims 2-5 and 8)
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`41. The Petition relies on two alternative combinations of references
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`for the recitation “the instant voice messaging application includes a message
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`database storing the instant voice message,” as recited in all challenged
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`claims. Neither of those combinations discloses a message database that is
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`part of an “instant voice messaging application” at the originating client.
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`42. To give some perspective, the local “message database” aspect
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`of the claimed invention enables, for example, a user to locally access and
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`listen to various stored instant voice messages he/she had previously sent,
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`regardless whether the user’s client device is online. I find such a feature to
`
`be distinguishable, for example, from using temporary memory (e.g., Random
`
`Access Memory or “RAM”) only for purposes of transmitting a message and,
`
`immediately thereafter, deleting that message from the temporary memory.
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`
`
`19
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`Apple v. Uniloc, IPR2017-00225
`Uniloc's Exhibit 2001, page 22
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`

`

`
`
`1. Grounds 1-3 (based on Abburi)
`
`43. The proposed combination of Abburi with Holztberg does not
`
`render obvious “the instant voice messaging application includes a message
`
`database storing the instant voice message,” as recited in all the challenged
`
`claims.
`
`44. Petitioner appears to assert, without explanation, that Abburi
`
`teaches storing an audio message locally in a “message database” as claimed.
`
`Pet. 27. Petitioner appears to have erroneously conflated Abburi’s disclosure
`
`of “recording” a message with Abburi’s separate disclosure of “storing” a
`
`recorded message (at a location other than the originating client).
`
`45. Abburi discloses two alternative embodiments for “recording”
`
`the message. In the first embodiment, “[t]he user provides the audio message
`
`to the microphone 310” and “[t]he audio message is … transmitted … to the
`
`system 200 for recording, storage and delivery to the intended recipient(s).”
`
`Ex. 1005 ¶39. Significantly, that description confirms Abburi uses the words
`
`“recording” and “storing” to refer to distinct processes. In the second
`
`embodiment, “[r]ather than transmitting the audio message to the system 200
`
`for recording as the message is received by the device 300, the device 300
`
`may be configured to record the audio message locally (e.g., into an audio
`
`file), and then transmit this prerecorded message to the system.” Id. ¶40.
`
`
`
`20
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`Apple v. Uniloc, IPR2017-00225
`Uniloc's Exhibit 2001, page 23
`
`

`

`
`
`Abburi distinguishes those first and second embodiments only in terms of
`
`where the message is recorded (i.e., created). Id.
`
`46. Abburi further discloses that, regardless where the recording
`
`occurs, a key function of the centralized system 200 is to store the recorded
`
`message. Ex. 1005 ¶31. Abburi states that system 200 has an “audio message
`
`store 206” dedicated to this very purpose: “[t]his audio message is stored by
`
`the IVR system 208 in the audio message 206.” Id. ¶31; see also id. (“… to
`
`initiate delivery of the audio message stored in the audio message store 206.”);
`
`id. ¶33 (“the computer server 202 retrieves the audio message from the audio
`
`message store 206”). Abburi teaches that its centralized system 200, including
`
`the audio message store 206, is physically separate from the particular user
`
`device (e.g., 214‒222, 300) where the message originates. This is perhaps best
`
`illustrated in Figure 2 of Abburi, copied and highlighted below to emphasize
`
`the physical separation:
`
`
`
`21
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`Apple v. Uniloc, IPR2017-00225
`Uniloc's Exhibit 2001, page 24
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`

`

`
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`47. Abburi identifies the remote connection to the audio message
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`store 206 as one of the essential features which enables system 200 to “receive
`
`audio messages from and send audio message to any device connected to the
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`computer network 210 or the telecommunications network 212.” Ex. 1005
`
`1[24. Abburi’s explicit reliance on remote, server-side storage would lead a
`
`POSA away from the claimed invention. Indeed, given the intended and
`
`essential fimctionality of the audio message store 206 in Abburi, it would be
`
`unnecessarily redun