UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE, INC.,
`Petitioner
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
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`IPR2017-00225
`PATENT 8,995,433
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`PATENT OWNER RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.120
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`APPLE, INC.,
`Petitioner
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
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`
`
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`
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`IPR2017-00225
`PATENT 8,995,433
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`PATENT OWNER RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.120
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`INTRODUCTION
`I.
`II. RELATED MATTERS
`III. THE '433 PATENT
`Priority of the '433 Patent through its Patent Family
`Overview of the '433 Patent
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`IV. LEVEL OF ORDINARY SKILL IN THE ART
`V.
`THE PETITION FAILS TO PROVE UNPATENTABILITY
`Claim Construction
`1. “displays at least one of the plurality of instant voice
`messages”
`2. “instant voice messaging application”
`No proof of 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)
`1. Ground 3 (based on Logan)
`1. Ground 4 (based on Väänänen)
`No proof of 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)
`1. Grounds 1 through 3 (based primarily on Abburi)
`1. Grounds 4 and 5 (based primarily on Väänänen)
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`TABLE OF CONTENTS
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`IPR2017-00225
`U.S. Patent 8,995,433
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`1
`1
`2
`2
`3
`6
`7
`7
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`8
`8
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`15
`15
`17
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`18
`19
`28
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`ii
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`IPR2017-00225
`U.S. Patent 8,995,433
` No proof of 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)
`1. Grounds 1 through 3 (based primarily on Abburi)
`2. Grounds 4 and 5 (based primarily on Väänänen)
`The Office already found the claims patentable over
`Väänänen
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`29
`30
`32
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`33
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`PATENT OWNER’S EXHIBIT LIST
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`Ex. 2001 Declaration of Chuck Easttom in support of Patent Owner Response
`(“EX2001”).
`Ex. 2002 Deposition Transcript of Leonard Forys (“EX2002”).
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`iii
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`IPR2017-00225
`U.S. Patent 8,995,433
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`I.
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`INTRODUCTION
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107(a), Uniloc Luxembourg
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`S.A. (“Patent Owner”) submits this Response to the Petition for Inter Partes Review
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`(“the Petition”) of U.S. Patent No. 8,995,433 (“the '433 Patent”) filed by Apple, Inc.
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`(“Petitioner”). For the reasons set forth herein, the Petition fails to “specify where
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`each element of the claim is found in the prior art patents or printed publications
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`relied upon.” 37 C.F.R. § 42.104(b)(4).
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`II. RELATED MATTERS
`As the Board has already recognized, the '433 Patent is the subject of litigation
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`before the U.S. District Court for the Eastern District of Texas, including an action
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`filed against Petitioner (Case No. 2-16-cv-00638).
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`The '433 Patent is part of a chain of continuation applications, as shown in the
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`family tree below, which also identifies six related petitions filed by Petitioner
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`against this patent family.
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`1
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`IPR201 7-00225
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`US. Patent 8,995,433
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`App. No: 10-"'40.03O
`Filed: 11-18-1003
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`
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`Challenged by Petitioner in
`lPR2017—00220 & IPR2017—00221
`Pat. No: '.535.890
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`1st Inventor: Michael Rojas
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`IPR2017-00222
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`Pat. No: 8.243723
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`App. No: 11398063
`Filed: 03-04-2009
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`1st Inventor: Michael Rojas
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`IPR2017—00223 &
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`IPR2017-00224
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`App. No: 13"546.6‘3
`Filed: 0‘-11-2012
`Pat. No: 8724.622
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`1st Inventor: Michael Rojas
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`IPR2017-00225
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`App. No: 14224.125
`Filed: 03-25-2014
`Pat. No: 8.995.433
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`1st Inventor: Michael Rojas
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`III. THE '433 PATENT
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`A.
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`Priority of the '433 Patent through its Patent Family
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`The '433 Patent is titled “SYSTEM AND METHOD FOR INSTANT VOIP
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`MESSAGING.” Ex. 1001. The '433 Patent issued from US. Patent Application No.
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`14/244,125, which is a continuation of US. Patent No. 8,724,622, 8,243,723, which
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`is a continuation of US. Patent No. 7,535,890, filed on Dec. 18, 2003. The '433
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`Patent issued on March 31, 2015.
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`IPR2017-00225
`U.S. Patent 8,995,433
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` Overview of the '433 Patent
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`The
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`'433 Patent
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`recognized
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`that
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`conventional
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`circuit-switched
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`communications enabled traditional telephony yet had a variety of technical
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`disadvantages that limited developing other forms of communication over such
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`networks. According
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`to
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`the
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`'433 Patent, “[c]ircuit switching provides a
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`communication path (i.e., dedicated circuit) for a telephone call from the telephone
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`terminal to another device 20 over the [public switched telephone network or] PSTN,
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`including another
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`telephone
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`terminal. During
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`the
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`telephone call, voice
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`communication takes place over that communication path.” (EX1001, 1:29−34.)
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`The '433 Patent expressly distinguishes circuit-switched networks from
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`packet-switched networks (e.g., the Internet) at least in that the latter routes
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`packetized digital information, such as “Voice over Internet Protocol (i.e., “VoIP”),
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`also known as IP telephony or Internet telephony.” (1:35−36.) Because legacy
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`circuit-switched devices were unable to communicate directly over packet-switched
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`networks, media gateways (114) were designed to receive circuit-switched signals
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`and packetize them for transmittal over packet-switched networks, and vice versa.
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`(2:8−18.) The conversion effected by media gateways (e.g., 114 and 118) highlights
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`the fact that packetized data carried over packet-switched networks (e.g., IP network
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`102) are different from, and are incompatible with, an audio signal carried over a
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`dedicated packet-switched circuit. (2:8−21.)
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`3
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`IPR2017-00225
`U.S. Patent 8,995,433
`The '433 Patent further recognized that, notwithstanding the advent of instant
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`text messages, at the time of the claimed invention there was no similarly convenient
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`analog to leaving an instant voice message over a packet-switched network.
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`(2:22−53.) Rather, “conventionally, leaving a voice message involves dialing the
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`recipient’s telephone number (often without knowing whether the recipient will
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`answer), waiting for the connection to be established, speaking to an operator or
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`navigating through a menu of options, listening to a greeting message, and recording
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`the message for later pickup by the recipient. In that message, the user must typically
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`identify himself or herself in order for the recipient to return the call.” (2:26−33.)
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`The inventor observed, therefore, that “notwithstanding the foregoing
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`advances in the VoIP/PSTN voice communication and voice/text messaging, there
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`is still a need in the art for providing a system and method for providing instant VoIP
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`messaging over an IP network.” (2:47−51.) In certain disclosed embodiments, the
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`'433 Patent addressed that need, in part, by providing a user-accessible client (208)
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`that is specially configured for instant voice message (IVM) and for direct
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`communication over a packet-switched network (e.g., through an Ethernet card).
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`(12:13−14.) More specifically, the '433 Patent teaches that certain clients (208) are
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`specially configured to “listen[] to the input audio device 212,” “record[] the user’s
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`speech into a digitized audio file 210 (i.e., instant voice message) stored on the IVM
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`client 208,” and “transmit[] the digitized audio file 210” as packetized data (e.g.,
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`4
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`IPR2017-00225
`U.S. Patent 8,995,433
`using TCP/IP) over a packet-switched network (e.g., network 204) “to the local IVM
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`server 202.” (8:8−11 and 8:21−22.)
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`The Petition proposes redundant combinations
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`in challenging
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`two
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`independent claims (1 and 6) and five dependent claims (2, 3, 4, 5, and 8). For the
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`convenience of the Board, independent Claims 1 and 6 are reproduced below:
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`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 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.
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`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;
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`5
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`IPR2017-00225
`U.S. Patent 8,995,433
`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.
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`IV. LEVEL OF ORDINARY SKILL IN THE ART
`Patent Owner’s expert, Chuck Easstom, testified that “a POSA would be
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`someone with a baccalaureate degree related to computer technology and 2 years of
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`experience with communications technology, or 4 years of experience without a
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`baccalaureate degree.” EX2001 ¶12. Mr. Easstom further testified that “[w]hile my
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`opinion appears to largely overlap with that offered by Dr. Forys, I disagree with Dr.
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`Forys’ definition to the extent ‘ordinary skill’ is interpreted to require more than 4
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`years of academic or industry experience exclusively in the fields of in VoIP and
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`mobile telephony. In any event, I qualify as a person of ordinary skill in the art, even
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`under Dr. Forys apparent interpretation.” Id. ¶13.
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`6
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`IPR2017-00225
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`US. Patent 8,995,433
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`V. THE PETITION FAH.S TO PROVE UNPATENTABILITY
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`The Petition challenges the patentability of certain claims of the '433 Patent
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`under 35 U.S.C. § 103(a) over the following grounds:
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`'
`
`Abburi &Holtzber'
`IPR201700225 [-d 1, 2, 4, 8
`—— Abburi, Holtzber ,& Vuori3
`_— Abburi Holtzber:
`_ 1,2,4, 5, 6, 8
`Va'a'na'nen5 &Holtzber;
`_— Vddnanen, Holtzber
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`Petitioner has the burden of proof to establish they are entitled to their
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`requested relief. 37 CPR. § 42.108(c). The Petition does not satisfy this burden
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`for the reasons set forth herein and in the attached Declaration of Mr. Easttom
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`(EX2001).
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`A.
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`Claim Construction
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`The Board did not expressly construe any term for purposes of determining
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`whether to instate trial. Paper 7 at 7. The Board nevertheless observed that Petitioner
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`proposes a construction for the phrase “display[ing] at least one of the plurality of
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`instant voice messages,” as recited only in dependent Claim 3. Id. Petitioner also at
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`least implicitly offers a construction for the recitation “the instant voice messaging
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`1 Ex. 1005, US. Patent Application Publication No. 2003/0147512 (“Abburi”).
`2 Ex. 1007, US. Patent No. 6,625,261 (“Holtzberg”).
`3 Ex. 1009, US. Patent Application Publication No. 2002/0146097 (“Vouri”).
`4 Ex. 1008, US. Patent No. 5,732,216 (“Logan”).
`5 Ex. 1006, US. Patent No. 7,218,919 (“Vadnc'inen”).
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`7
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`IPR2017-00225
`U.S. Patent 8,995,433
`application includes a message database storing the instant voice message.” For
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`purposes of trial, Petitioner’s explicit and implicit constructions should be rejected
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`as violating fundamental canons of claim construction, as set forth below.
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`1.
`“displays at least one of the plurality of instant voice messages”
`Petitioner seeks to construe “displays at least one of the plurality of instant
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`voice messages” (as recited in dependent Claim 3) to mean “displaying the content
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`or identifying information of at least one of the plurality of instance voice messages.”
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`Petitioner suggests its construction is the broadest reasonable interpretation ostensibly
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`because Petitioner derived those additional and extraneous limitations from example
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`embodiments disclosed in the specification. Pet. 9. Petitioner provides no justification
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`in support of its overt attempt to read in example embodiments as claim limitations.
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`Cf. Phillips v. AWH Corp. Inc., 415 F.3d 1303, 1323 (repeating the caution against
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`importing limitations from the specification into the claims, even when only one
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`embodiment is disclosed.) That oversight is particularly egregious because
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`Petitioner has effectively conceded there is no clear disavowal in the Specification
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`concerning the claim language at issue. Pet. 9.
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`2.
`“instant voice messaging application”
`Independent Claims 1 and 6 both recite specific limitations concerning an
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`“instant voice messaging application.” Although the Board has not made a final
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`determination on the construction of any term, the Board agreed with Patent Owner
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`8
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`IPR2017-00225
`U.S. Patent 8,995,433
`that “the instant voice message application …, by the plain reading of the claim
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`language, is directed to the application at the client.” Paper 7 at 18‒19, 27 (emphasis
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`added). A plain reading of the claim language as a whole further confirms the
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`claimed features of “the instant voice messaging application” are recited from the
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`perspective of the same application residing at the particular client where the claimed
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`“instant voice message” originates.
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`The challenged claims all recite that the “instant voice messaging application”
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`must include a “client platform system for generating an instant voice message and
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`a messaging system for transmitting the instant voice message over a packet-
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`switched network via a network interface.” The words “client platform system,”
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`“generating,” and “transmitting” all confirm the “instant voice messaging
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`application” resides at the originating client, as opposed to a recipient client or at a
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`server. Further, the same “instant voice messaging application” that generates and
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`transmits the “instant voice message,” must also “display[] a list of one or more
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`potential recipients for the instant voice message.” Use of the qualifier “potential
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`recipients” means the recipient(s) have not yet received the “instant voice message,”
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`which further confirms the features of the “instant voice messaging application” are
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`recited from the perspective of the message-originating client.
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`Independent Claim 1 further requires that the same “instant voice messaging
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`application” must also “include[] a message database storing the instant voice
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`9
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`IPR2017-00225
`U.S. Patent 8,995,433
`message.” Accordingly, Claim 1 expressly requires that “the instant voice message”
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`must be stored in a “message database” of the same “instant voice messaging
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`application” that both generates and transmits that “instant voice message” and
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`“displays a list of one or more potential recipient”—i.e., a “message database” at the
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`originating client. Notably, the Board observed that “the recited message database,
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`by the plain reading of the, claim language, is directed to the application at the
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`client.” Paper 7 at 18‒19.
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`This plain reading of the claim language is supported by the specification of
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`the '433 Patent. For example, the '433 Patent discloses that Figure 3 (copied below)
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`is “an exemplary illustration of the architecture in the IVM client 208 for enabling
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`instant voice messaging according to the present invention.” EX1001, 12:6‒8.
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`10
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`IPR2017-00225
`U.S. Patent 8,995,433
`In the illustrated embodiment, the IVM client 208 “comprises a client
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`platform 302 for generating an instant voice message and a messaging system 320.”
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`Id. 12:9‒8. The description further states “[t]he file manager [308] accesses a
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`message database 310, in which both the received and recorded instant voice
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`messages are represented as database records, each record comprising a message
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`identifier and the instant voice message.” Id. 36‒40. Accordingly, each recited
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`feature of the claimed “instant voice messaging application” is described, by way of
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`example, with reference to the IVM client 208 of Figure 3. Dr. Forys confirmed this
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`same understanding during his deposition. See generally EX2002 89:11−95:2.
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`While both the originating client and the recipient client(s) may each have a
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`respective instance of an instant voice messaging application, the claim language
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`unambiguously refers to the same “instant voice messaging application” for the
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`recited operations directed to the same “instant voice message.” EX2001 ¶¶28−33.
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`As Mr. Easttom testified, because each client has its own independent application,
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`“two clients may privately exchange instant voice messages without having to
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`involve, for example, the applications of other clients which are intentionally
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`excluded from those private communication.” Id.
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`The claim language does not refer to all instances of instant voice messaging
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`applications for the entire system. Id. Rather, the claim language is unambiguously
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`directed to a singular “instant voice messaging application” having certain features
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`11
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`
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`specially-programmed
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`IPR2017-00225
`U.S. Patent 8,995,433
`to execute respective operations (e.g., “generating,”
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`“transmitting,” “display[ing],” “storing,” etc.) for the same “instant voice message.”
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`EX2001 ¶¶28−33. Moreover, the claim language itself expressly distinguishes the
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`“system” referenced in the preamble from the “the instant voice message
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`application” directed to execution at the originating client. Id.
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`The Petition appears to at least agree with Patent Owner and the Board that
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`the “instant voice messaging application” must reside at the client. In all Grounds 1
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`through 5, the Petition relies exclusively on features of client devices as allegedly
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`rendering obvious certain limitations of the “instant voice messaging application.”
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`In Grounds 1 through 3, for example, Petitioner points exclusively to the “user
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`device 300” of Abburi as allegedly disclosing both the “client platform system” and
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`the “messaging system” of the “instant voice messaging application.” Pet. 22‒24. In
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`Grounds 4 and 5, based primarily on Väänänen, Petitioner also relies exclusively on
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`a “subscriber terminal” as allegedly satisfying the recited limitations of the “instant
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`voice messaging application.”
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`The Petition injects a claim construction dispute, however, by at least
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`implicitly arguing “the instant voice message” need not be stored in a “message
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`database” of the same “instant voice messaging application” that (1) “generat[es]”
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`that message, (2) “displays a list of one or more potential recipients” for that
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`message, and (3) “transmit[s]” that message. As explained further below, Petitioner
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`12
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`IPR2017-00225
`U.S. Patent 8,995,433
`alleges that one application at an originating client renders obvious certain
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`limitations but then relies on a separate application at a distinct recipient client for
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`the “storing” limitations. The consistent reference in Claim 1 to “the instant voice
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`messaging application” proscribes Petitioner’s interpretation.
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`The Petition also injects a more general dispute (applicable to both challenged
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`independent Claims 1 and 6) concerning the meaning of the word “application,”
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`which was a known term of art at the time. Petitioner argues through its declarant
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`that “application” means nothing more than “a set of coded instructions that enable
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`a machine (e.g., a computer) to perform a sequence of operations.” EX1003 ¶94;
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`EX2002, 84:4−19 and 87:1−9. Because virtually all software satisfies that
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`definition, Petitioner evidently equates “application” with any form of software.
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`During his deposition, Dr. Forys at least tacitly admitted his definition for
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`“application” is unreasonably broad. Dr. Forys acknowledged a POSITA would
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`readily distinguish an “application” from an “operating system,” yet he admitted his
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`overbroad definition for “application” encompasses both. EX2002, 84:4−19, 87:1−9
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`(defining “application” as a “set of instructions” which “enables a machine to
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`perform a sequence of operations.”); see also EX2001 ¶32.
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`Contrary to what Petitioner and its declarant suggest, the claim language does
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`not merely recite disconnected software functionality in the abstract. Rather, the
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`challenged claims expressly attribute multiple and interrelated limitations to the
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`13
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`IPR2017-00225
`U.S. Patent 8,995,433
`same “instant voice messaging application” specially-programmed to locally
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`perform operations on the same “instant voice message.” The distinction is
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`significant and meaningful. Mr. Easttom offered the following explanation:
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`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.”)
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`EX2001 ¶31.
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`While the Board need not construe a known term of art, the Board should
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`reject Petitioner’s attempt to read the word “application” (and its inherent meaning)
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`out of the challenged claims by reducing the “instant voice messaging application”
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`and all its recited features to distinct and disconnected pieces of software.
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`14
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`IPR2017-00225
`U.S. Patent 8,995,433
` No proof of 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)
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`1. Ground 3 (based on Logan)
`In addressing Ground 3 of the Petition, the Board observed that “Petitioner
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`relies on Logan’s teaching of compressing audio program segments for download
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`to subscribers and decompressing the programs when downloaded to the
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`client/player.” Paper 7 at 21 (citing Pet. 45−46). Petitioner’s citations to Logan are
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`taken primarily from a section appearing under the header “Host File Server.” Pet.
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`45−46 (citing EX1008, 4:46−50, 4:53−54). That section confirms Logan’s host
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`server 101 compresses the audio. EX2001 ¶35. Consistent with that description,
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`Logan discloses in another cited passage that its compression step 440 is server-
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`executed. Pet. 45−46 (citing EX1008, 40:9−13); see also EX2001 ¶35.
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`Logan does not cure the conceded deficiencies of Abburi and Holtzberg
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`because compressing data at a server for subsequent download to a user device does
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`not disclose or suggest a client-side “instant voice messaging application [which]
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`includes a compression/decompression system for compressing the instant voice
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`messages to be transmitted over the packet-switched network.” As the Board
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`observed, “the instant voice message application …, by the plain reading of the
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`claim language, is directed to the application at the client.” Paper 7 at 18‒19. Thus,
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`U.S. Patent 8,995,433
`the client application which generates an instant voice message, displays a list of
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`one or more recipients, transmits that message, etc., must also be the same client
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`application that “includes a compression/decompression system for compressing the
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`instant voice message to be transmitted.” Logan simply does not supply the missing
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`client application which must further include a “compression/decompression
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`system” as claimed; and the Petition does not allege otherwise. EX2001 ¶36.
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`Petitioner concedes that Logan does not disclose the claimed client-side
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`“compression/decompression system” by speculating
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`that
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`the compression
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`“capabilities described in Logan could be placed [instead] within user device 300 to
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`enable compression of audio message before sending.” Pet. 47 (emphasis added).
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`The law proscribes using such hindsight “could be” speculation to fill in gaps
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`missing from the four corners of a reference. Alza Corp., 464 F.3d at 1290; see also
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`37 C.F.R. § 42.104(b)(4) (requiring petitions to “specify where each element of the
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`claim is found in the prior art patents or printed publications relied upon”)
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`(emphasis added).
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`Moreover, the claim language does not attribute compression capabilities to
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`a client device in general, as Petitioner suggests by its speculative “could be”
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`argument. Rather, the claim language explicitly requires the “compression …
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`system” must be included within “the instant voice messaging application” itself.
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`Petitioner cannot escape the undisputed fact that Logan relies on a centralized
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`server-based compression and, therefore, fails to disclose or suggest a client-based
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`“instant voice messaging application” which includes a “compression … system.”
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`For at least the foregoing reasons, Ground 3 of the Petition fails to prove
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`obviousness of independent Claim 6.
`
`1. Ground 4 (based on Väänänen)
`In its order instituting trial, the Board does not address the sufficiency of the
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`evidence presented in Ground 4 of the Petition for the recitation “the instant voice
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`messaging application includes a compression/decompression system ….” The
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`Petition refers to Väänänen’s “compression methods” in general yet fails to identify
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`any particular client-side “instant voice messaging application” that includes a
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`“compression/decompression system” in addition to all the other recited limitations
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`for that same application.
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`Without identifying any application in particular, Petitioner argues through
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`its declarant that Väänänen discloses the data file is created at the outset in MP3
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`format. Pet. 64 (citing EX1003 ¶196); see also EX1003 ¶207. That testimony is both
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`irrelevant and misleading. EX2001 ¶¶37−39. Creating a new and previously non-
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`existing data file according to the MP3 format is distinguishable from, and does not
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`render obvious, compressing an already existing instant voice message. Id.
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`The claim language itself confirms there is a distinction. Independent Claim
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`6 recites both “a client platform system for generating an instant voice message”
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`U.S. Patent 8,995,433
`and “a compress/decompression system for compressing the instant voice messages
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`to be transmitted ….” Accordingly, there can be no question that “compressing” in
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`the context of Claim 6 refers to a different function applied to an existing “instant
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`voice message” generated by a distinct system. EX2001 ¶40. The allegation that
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`Väänänen teaches creating a data file in the form of an MP3 does not address that
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`clear distinction.
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`For at least the foregoing reasons, Ground 4 of the Petition fails to prove
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`obviousness of independent Claim 6.
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` No proof of 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)
`As explained above in the section addressing claim construction, independent
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`Claim 1 expressly requires that “the instant voice message” must be stored in a
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`“message database” of the same “instant voice messaging application” that both
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`generates and transmits that “instant voice message” and “displays a list of one or
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`more potential recipient”—i.e., a “message database” at the originating client. The
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`Petition glosses over this requirement in presenting redundant challenges based
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`primarily on either Abburi (Grounds 1‒3) or Väänänen (Grounds 4‒5).
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`To give some perspective, the local “message database” aspect of the claimed
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`invention enables, for example, a user to locally access and listen to various stored
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`instant voice messages he/she had previously sent, regardless whether the user’s
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`U.S. Patent 8,995,433
`client device is online. Such a feature is distinguishable, for example, from using
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`temporary memory (e.g., Random Access Memory or “RAM”) only for purposes of
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`transmitting a message and, immediately thereafter, deleting that message from the
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`temporary memory. EX2001 ¶42.
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`1. Grounds 1 through 3 (based primarily on Abburi)
`Petitioner concedes through its declarant that “Abburi does not provide
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`explicit details of audio message storage.” EX1003 ¶88. Nevertheless, as the Board
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`observed, Petitioner appears to assert, without explanation, that Abburi teaches
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`storing an audio message locally in a “message database” as claimed. Paper 7 at 17
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`n.2 (citing Pet. 27).6 Petitioner evidently overlooked Abburi’s explicit distinction
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`between “recording” the message into an audio file (i.e., digitizing sound) and
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`subsequently “storing” the recorded message. The express distinction in Abburi
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`between “recording” and “storing” is significant because it confirms that Abburi
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`fails to disclose or suggest “storing” the same instant voice message within a
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`“message database” of the same “instant voice messaging application” that
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`generates and transmits that message and displays one or more potential recipients
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`for that message (i.e., locally “storing” at the originating client).
`
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`6 Notably, Petitioner’s declarant, Dr. Forys, also purports to rely on a statement in
`Abburi that “the recipient can store and subsequently playback at his or her option.”
`EX1003 ¶88 (citing EX1005, ¶32). Dr. Forys (and hence the Petition) evidently
`failed to differentiate between local storage at a “message database” of the
`originating device and remote storage somewhere else.
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`U.S. Patent 8,995,433
`Abburi discloses two alternative embodiments for “recording” the message.
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`EX2001 ¶45. In the first embodiment, “[t]he user provides the audio message to the
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`microphone 310” and “[t]he audio message is … transmitted … to the system 200
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`for recording, storage and delivery to the intended recipient(s).” Id. (citing EX1005
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`¶39). Significantly, that description confirms Abburi uses the words “recording” and
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`“storing” to refer to distinct processes. In the second embodiment, “[r]ather than
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`transmitting the audio message to the system 200 for recording as the message is
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`received by the device 300, the device 300 may be configured to record the audio
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`message locally (e.g., into an audio file), and then transmit this prerecorded message
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`to the system.” Id. (citing EX1005 ¶40). Abburi distinguishes those first and second
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`embodiments only in terms of where the message is recorded (i.e., created). Id.
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`Abburi further discloses that, regardless where the recording occurs, a key
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`function of the centralized system 200 is to store the previously-recorded message.
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`EX2001 ¶46 (citing EX1005 ¶31). Indeed, Abburi states that system 200 has an
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`aptly-named “audio message store 206” dedicated to this very purpose: “[t]his audio
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`message is stored by the IVR system 208 in the audio message 206.” EX1005 ¶31;
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`see also id. (“… to initiate delivery of the audio message stored in the audio message
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`store 206.”); id. ¶33 (“the computer server 202 retrieves the audio message from the
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`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
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