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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APPLE INC., SNAP INC., FACEBOOK, INC., and WHATSAPP, INC.
`Petitioner
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.
`Patent Owner
`_____________________
`
`Case IPR2017-002251
`Patent 8,995,433
`_____________________
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`PETITIONER APPLE INC.’S
`REPLY TO PATENT OWNER RESPONSE
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`O. Box 1450
`Alexandria, VA 22313-1450
`
`
`1 Snap Inc., which filed a petition in IPR2017-01611, as well as Facebook,
`Inc. and WhatsApp, Inc., which filed a petition in IPR2017-01634, have been joined
`as petitioners in this proceeding.
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`

`

`TABLE OF CONTENTS
`
`Case IPR2017-00225
`U.S. Pat. No. 8,995,433
`
`
`I.
`II.
`
`B.
`
`Introduction ........................................................................................................ 1
`Claim Construction ............................................................................................ 1
`A.
`The specification does not describe the “instant voice messaging
`application” as being limited to residing on a single device since
`it is not mentioned once in the specification. .......................................... 1
`“displays at least one of the plurality of instant voice messages” .......... 8
`B.
`III. Ground 1: Claims 1, 2, 4, and 8 are invalid over the combination of
`Abburi and Holtzberg. ....................................................................................... 9
`A. Abburi-Holtzberg teaches “wherein the instant voice messaging
`application includes a message database storing the instant
`voice message,” as recited in independent claim 1. ................................ 9
`Abburi-Holtzberg teaches the “file manager system” limitation of
`independent claims 1 and 6. ..................................................................16
`IV. Ground 3: Claims 5 and 6 are invalid over the combination of Abburi,
`Holtzberg, and Logan. ..................................................................................... 18
`A.
`The combination of Abburi, Holtzberg, and Logan teaches the
`“compression/decompression” limitation of independent claim 6. ......18
`V. Ground 4: Claims 1, 2, 4, 5, and 8 are invalid over the combination of
`Väänänen and Holtzberg. ................................................................................ 20
`A. Väänänen-Holtzberg teaches “wherein the instant voice
`messaging application includes a message database storing the
`instant voice message,” as recited in independent claim 1. ..................20
`Väänänen-Holtzberg teaches the “compression/decompression”
`limitation of independent claim 6. ........................................................21
`Väänänen-Holtzberg teaches the “file manager system”
`limitation of independent claims 1 and 6. .............................................23
`The Board correctly decided to institute Grounds 4 and 5 of the
`Petition based on Väänänen. .................................................................24
`VI. PO relies on a flawed level of ordinary skill by removing the
`requirement of experience in VoIP and mobile telephony, which is
`contradicted by its own expert’s testimony. .................................................... 25
`VII. Conclusion. ...................................................................................................... 27
`
`B.
`
`C.
`
`D.
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`UPDATED EXHIBIT LIST
`
`Case IPR2017-00225
`U.S. Pat. No. 8,995,433
`
`Description
`Rojas, U.S. Patent No. 8,995,433 (filed March 25, 2014, issued March
`31, 2015).
`File History for U.S. Patent No. 8,995,433.
`Declaration of Leonard J. Forys, Ph.D.
`Curriculum Vitae of Leonard J. Forys, Ph.D.
`Abburi, U.S. Patent Application Publication No. 2003/0147512 (filed
`February 1, 2002, published August 7, 2003).
`Väänänen, U.S. Patent No. 7,218,919 (filed August 8, 2001, issued
`May 15, 2007).
`Holtzberg, U.S. Patent No. 6,625,261 (filed December 20, 2000,
`issued September 23, 2003).
`Logan et al., U.S. Patent No. 5,732,216 (filed October 2, 1996, issued
`March 24, 1998).
`Vuori, U.S. Patent Application Publication No. 2002/0146097 (filed
`July 23, 2001, published October 10, 2002).
`Excerpts from Microsoft Computer Dictionary, 5th ed. (2002).
`Clarke et al., Experiments with packet switching of voice traffic, IEE
`Proceedings G - Electronic Circuits and Systems, V.130, N.4 , 105-13
`(August 1983).
`Sharma, VoP (voice over packet), IEEE Potentials, V. 21, N. 4,
`Oct./Nov. 2002, 14-17 (October, 2002).
`Locascio, U.S. Patent No. 6,603,757 (filed April 14, 1999, issued
`August 5, 2003).
`Lotito et al., U.S. Patent No. 4,625,081 (filed November 30, 1982,
`issued November 25, 1986).
`Excerpts from American Heritage Dictionary, 4th ed. (2001).
`File History of U.S. Patent No. 7,535,890.
`Pershan, U.S. Patent No. 5,260,986 (filed April 23, 1991, issued
`November 9, 1993).
`Deposition Transcript of William C. Easttom, II, November 28, 2017
`Declaration of Leonard J. Forys, Ph.D. in support of Petitioner’s Reply
`Excerpts from Dictionary of Information Science and Technology,
`First Edition (2007).
`Excerpts from Dictionary of Information Science and Technology,
`Second Edition (2013).
`
`Exhibit
`No.
`1001
`
`1002
`1003
`1004
`1005
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`1006
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`1007
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`1008
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`1009
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`1010
`1011
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`1012
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`1013
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`1014
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`1015
`1016
`1017
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`1018
`1019
`1020
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`1021
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`Case IPR2017-00225
`U.S. Pat. No. 8,995,433
`
`Exhibit
`No.
`1022
`
`Description
`“MP3 (MPEG Layer III Audio Encoding)”. The Library of Congress.
`27 July 2017, accessible at
`https://www.loc.gov/preservation/digital/formats/fdd/fdd000012.shtml,
`last accessed December 14, 2017.
`
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`Case IPR2017-00225
`U.S. Pat. No. 8,995,433
`
`I.
`
`Introduction
`
`The Board should find that claims 1-6 and 8 of the ’433 Patent are not
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`patentable based upon the instituted grounds of this proceeding. The ’433 Patent
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`broadly claims conventional voice messaging and storage techniques already
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`known and employed at the time of the patent. To avoid the compelling evidence
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`showing obviousness, Patent Owner (“PO”) hangs its arguments on an overly
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`narrow interpretation of the term “instant voice messaging application” being
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`required to reside only on a single client device—which is unsupported by any
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`disclosure in the patent specification—although the prior art provided in this
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`proceeding renders the claims obvious even under Patent Owner’s narrow
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`construction. And the PO attempts to articulate reasons why storage, i.e., the
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`claimed message database and file manager system, is somehow different based on
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`its location—central vs. local—even when a same system can be used at either
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`location without modification.
`
`II. Claim Construction
`A. The specification does not describe the “instant voice messaging
`application” as being limited to residing on a single device since it
`is not mentioned once in the specification.
`
`PO banks almost its entire case on the “instant voice messaging application”
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`only being able to reside on a single device “at the particular client where the
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`claimed ‘instant voice message’ originates.” (Paper 11, POR, 9.) As shown below,
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`this position is incorrect for several reasons. Moreover, the cited prior art teaches
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`Case IPR2017-00225
`U.S. Pat. No. 8,995,433
`both parties’ interpretations—either residing on a single device or distributed and
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`either being at the originating client, recipient client, or both. (Paper 2, Petition,
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`20-21, 52-53.) For example, Dr. Forys testified the term “application” is “a general
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`term to one of ordinary skill in the art,” and “the application could reside across
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`multiple computers.” (EX2002, Forys Deposition, 82:18-83:7, 83:19-84:3.)
`
`1.
`
`The recited “instant voice messaging application” is not
`restricted to any particular location or device.
`
`PO speculates that “[t]he words ‘client platform system,’ ‘generating,’ and
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`‘transmitting’ all confirm the ‘instant voice messaging application’ resides at the
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`originating client, as opposed to a recipient client or at a server.” (POR, 9.) But
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`Patent Owner’s rationale fails upon a basic examination of the claims and the ’433
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`Patent for at least three reasons.
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`First, it is the recited “client platform system” and “messaging system,”
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`which are part of a larger “instant voice messaging application,” that generate and
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`transmit the recited “instant voice message.” This claim language, unaided by any
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`description of an “application” in the specification, is insufficient to restrict the
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`“instant voice messaging application,” and the remaining claim limitations, to a
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`single device under the broadest reasonable interpretation (BRI). The limitations
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`referenced by PO are specific to the recited “client platform system” and
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`“messaging system,” and impart no restriction on the remaining claim limitations
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`besides generally operating on the same “instant voice message.”
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`Case IPR2017-00225
`U.S. Pat. No. 8,995,433
`Second, Mr. Easttom admits that an “application,” in the context of the ’433
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`Patent, is not restricted to a single device. For example, Mr. Easttom testified that
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`“within the context of the ’433 patent, a distributed application will be an
`
`application that’s residing on more than one physical location.” (EX1018,
`
`Easttom Deposition, 32:16-18 (emphasis added).) Mr. Easttom’s testimony
`
`comports with the well-understood meaning of distributed application, which is
`
`encompassed by the general term “application.” For example, the Dictionary of
`
`Information Science and Technology defines “distributed application” as “an
`
`application composed of distinct components running in separate runtime
`
`environments, usually on different platforms connected via a network.”
`
`(EX1021, Dictionary of Information Science and Technology, Second Edition, 287
`
`(emphasis added); EX1019, Forys Reply Decl., ¶9.) Furthermore, and most fatally
`
`for Patent Owner, Mr. Easttom confirmed that the term “application” does not
`
`appear at all in the ’433 Patent specification outside of the claims. (Easttom
`
`Deposition, 84:17-21.)
`
`Third, to support its assertions, PO improperly relies on one example
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`embodiment described in the specification. (POR, 10.) Specifically, PO points to
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`Figure 3 of the ’433 Patent, which describes “an exemplary illustration of the
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`architecture in the IVM client 208 for enabling instant voice messaging according
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`to the present invention.” (POR, 10; EX1001, ’433 Patent, 12:6-8.) But PO ignores
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`Case IPR2017-00225
`U.S. Pat. No. 8,995,433
`the remaining description in the ’433 Patent. For example, IVM client 208, as
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`illustrated in Figure 3 of the ’433 Patent, is part of a larger global instant
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`messaging system 500, as illustrated in Figure 5 of the ’433 Patent (reproduced
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`below).
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`
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`(’433 Patent, Figure 5.)
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`In embodiments described in the ’433 Patent, Global IVM Server System
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`502 further includes Transport Servers 604 and 606, illustrated in Figure 7 of the
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`’433 Patent (reproduced below). (Id. at 21:64-22:5.) Each transport server may also
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`include a message database 712. (Petition, 7; ’433 Patent, 22:39-43.)
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`Case IPR2017-00225
`U.S. Pat. No. 8,995,433
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`
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`(’433 Patent, Figure 7.)
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`The ’433 Patent describes that “[w]hen an IVM client communicates an
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`instant voice message within the global IVM system 500, the user manager 706
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`notifies the server engine 704 whether the one or more recipients are unavailable,
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`and thereby the instant voice message is saved in the message database 712.”
`
`(Id. at 22:53-58 (emphasis added).) Thus, the ’433 Patent provides multiple
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`embodiments utilizing message databases residing at different devices, and
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`importantly the claims merely require the “message database” to be part of the
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`overarching “instant voice messaging application,” and not the “client platform
`
`system.” So Patent Owner’s attempt to import one particular embodiment
`
`illustrated in Figure 3 into the claims is improper. SuperGuide Corp. v. DirecTV
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`Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (holding that “it is important
`
`not to import into a claim limitations that are not a part of the claim. For example,
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`Case IPR2017-00225
`U.S. Pat. No. 8,995,433
`a particular embodiment appearing in the written description may not be read into a
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`claim when the claim language is broader than the embodiment.”).
`
`As Dr. Forys opined, the ’433 Patent does not restrict the recited “instant
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`voice messaging application” solely to a particular computing device or prevent the
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`application from being distributed to or residing on multiple computing devices,
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`under its BRI. (Petition, 20; Forys Decl., ¶94.) In this manner, operations
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`performed on multiple computing devices may fall within the context of the same
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`overarching application. (Forys Decl., ¶94.) Even if the claims were restricted to
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`the embodiment described in Figure 3 of the ’433 Patent, this does not restrict the
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`recited “instant voice messaging application” to a single device. (See, e.g., Forys
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`Deposition, 91:5-16 (testifying that the “application” would cover both the sending
`
`and receiving clients); Forys Reply Decl., ¶¶8-9.)
`
`For these reasons, the Board should reject Patent Owner’s narrow
`
`interpretation of “instant voice messaging application.”
`
`2.
`
`PO mischaracterizes the testimony of Dr. Forys, improperly
`attempting to distinguish an application from an operating
`system.
`
`To support its proposed construction, PO asserts that “Dr. Forys at least
`
`tacitly admitted his definition of ‘application’ is unreasonably broad” by
`
`distinguishing an “application” from an “operating system.” (POR, 13.)
`
`Specifically, PO alleges that Dr. Forys distinguished the terms, but contrastingly
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`Case IPR2017-00225
`U.S. Pat. No. 8,995,433
`Dr. Forys “admitted his overbroad definition for ‘application’ encompasses both.”
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`(POR, 13.)
`
`In contrast to Patent Owner’s characterizations, Dr. Forys consistently
`
`testified that “operating system” is simply a narrower term than “application.”
`
`(Forys Deposition, 84:14-19, 87:9-15; Forys Reply Decl., ¶10.) Dr. Forys never
`
`stated that the terms are mutually exclusive, or that an operating system would not
`
`be considered an application under its BRI. Although Mr. Easttom alleges a
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`distinction between an application and an operating system “upon which
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`applications are run” (EX2001, Easttom Decl., ¶32), this description is not the BRI
`
`of “application.”
`
`For example, the Dictionary of Information Science and Technology defines
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`application as: “a program, script, or other collection of instructions that direct the
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`operation of a processor. This is a wide definition of ‘application.’ It does not
`
`distinguish Web-based software from stand-alone software. Nor does this
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`definition distinguish system software from goal-specific software.” (EX1020,
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`25 (emphasis added).) Thus, operating system software would be considered an
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`“application” under its BRI, and Patent Owner’s distinction is unnecessarily
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`limiting. (Forys Deposition, 85:17-87:15; Forys Reply Decl., ¶11.)
`
`Dr. Forys testified that the “instant voice messaging application” could cover
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`both the sending and receiving clients. (Forys Deposition, 91:5-16.) This is
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`Case IPR2017-00225
`U.S. Pat. No. 8,995,433
`exemplified by claim 6 of the ’433 Patent, which recites “wherein the instant voice
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`messaging application includes a compression/decompression system for
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`compressing the instant voice messages to be transmitted over the packet-
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`switched network and decompressing the instant voice messages received over
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`the packet-switched network.” As Dr. Forys testified, both the “compressing” and
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`“decompressing” elements operate on “the instant voice messages,” which, when
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`correctly interpreted under BRI, encompasses the messages compressed at the
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`sending client, and the same messages decompressed at the receiving client. (Id. at
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`97:3-19.)
`
`B.
`Petitioner
`
`Patent
`Owner
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`“displays at least one of the plurality of instant voice messages”
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`“displaying the content or identifying information of at least one of
`the plurality of instance voice messages”
`No construction provided.
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`PO continues to allege that Petitioner “attempt[s] to read in example
`
`embodiments as claim limitations.” (POR, 8.) But Petitioner’s proposed
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`construction does just the opposite, as the ’433 Patent provides no clear definition
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`for this claim element. (Petition, 9.) Instead, the ’433 Patent provides examples of
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`what could be displayed to a user at an IVM client. (Petition, 9 (citing ’433 Patent,
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`7:19-21, 13:6-9).) Accordingly, the BRI of this claim element must, at a minimum,
`
`encompass these examples, and thus the BRI of “display[ing] at least one of the
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`plurality of instant voice messages” is “displaying the content or identifying
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`Case IPR2017-00225
`U.S. Pat. No. 8,995,433
`information of at least one of the plurality of instance voice messages.” (Petition,
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`9-10, Forys Decl., ¶¶84-85.)
`
`PO misinterprets this construction as an attempt to limit the claim language,
`
`and provides no construction of its own or suggestion of how to construe this
`
`element. Petitioner’s construction properly adds clarification to the ambiguous
`
`language of displaying an audio message.
`
`III. Ground 1: Claims 1, 2, 4, and 8 are invalid over the combination of
`Abburi and Holtzberg.
`A. Abburi-Holtzberg teaches “wherein the instant voice messaging
`application includes a message database storing the instant voice
`message,” as recited in independent claim 1.
`1.
`
`Abburi’s server storage does not preclude storage at the
`sending and receiving client devices.
`
`Patent Owner’s attempt to rebut the Abburi-Holtzberg combination and its
`
`teachings fails for at least four reasons: first, Abburi’s employment of an audio
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`message store at a server is not mutually exclusive of storage at the client device;
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`second, Abburi does not restrict or even encourage storage in volatile memory at
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`the client device, as PO contends; third, the Abburi-Holtzberg combination does
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`not teach away from storage at the client device, employing a similar architecture
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`as described in the ’433 Patent; and fourth, Holtzberg’s embodiment of a database
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`residing in a centralized location does not restrict its storage scheme from being
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`employed at a client device.
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`U.S. Pat. No. 8,995,433
`First, PO attempts to argue a difference between recording and storing in
`
`Abburi, alleging that Abburi’s storing process is done at the server. (POR, 19-22.)
`
`But Abburi’s storage of audio messages at a server is irrelevant and is not mutually
`
`exclusive of storage at the client device.
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`Abburi teaches, “[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
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`then transmit this prerecorded message to the system. For instance, device 300 in
`
`one embodiment records an audio message provided by the user into a WAV file,
`
`compresses the file, and then routes it to the network interface 310 for transmission
`
`to the system 200.” (EX1005, Abburi, ¶40 (emphasis added); Petition, 27.) As Dr.
`
`Forys explains, the recorded audio file would have been stored at user device 300,
`
`even though it may also later be stored at the server. (Forys Decl., ¶106.) PO
`
`admits that an audio file may exist at the local client device in Abburi before being
`
`transmitted to the server. (POR, 20.) Therefore, there is no dispute that the “instant
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`voice message” is stored in some form at the originating client device in Abburi.
`
`The Petition further provides reasons that it would have been obvious to
`
`store the recorded voice message of Abburi in a “message database,” as taught in
`
`Holtzberg, to improve the organization and retrieval of audio messages stored on a
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`user’s device. (Petition, 17-18, 29; Forys Decl., ¶¶87-89, 109; Forys Reply Decl.,
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`¶¶12-13.) Thus, the combination of Abburi and Holtzberg meets this claim element
`
`even under Patent Owner’s narrow interpretation of “instant voice messaging
`
`application.”
`
`Second, PO attempts to combat the use of a database at Abburi’s user
`
`device, stating that “there would have been no motivation to replace temporary
`
`storage with database storage” in Abburi, alleging that temporary storage and
`
`database storage are “structurally different.” (POR, 23 (italics in original).)
`
`However, PO conflates the term “temporary storage” with the language in the
`
`Petition, which states that “the recorded audio file would have been stored at user
`
`device 300, at least temporarily.” (Petition, 27, Forys Decl., ¶106.) Although
`
`Petitioner does not acquiesce that “temporary storage” refers to storage in volatile
`
`memory, such as RAM, the use of the word “temporarily” in the Petition plainly
`
`refers to a period of time. (Forys Reply Decl., ¶¶16-17.) In other words, data may
`
`be stored in a database temporarily, such as when it is deleted after some period of
`
`time or upon some future event. (Id.) Thus, Patent Owner’s arguments are again
`
`irrelevant.
`
`Third, PO contends that both Abburi and Holtzberg teach away from storing
`
`its recorded audio file at the client device. With respect to Abburi, PO alleges that
`
`Abburi’s “explicit reliance on remote, server-side storage would lead a POSITA
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`‘in a direction divergent from the path that was taken by the Applicant.’” (POR, 21
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`(internal citations omitted).) But, again, Abburi’s centralized storage of audio
`
`messages is irrelevant and not mutually exclusive of storage on the client device.
`
`In other words, Abburi’s use of an audio message store at the server is not due to
`
`known disadvantages of storing messages locally. In re Gurley, 27 F.3d 551, 553
`
`(Fed. Cir. 1994) (citing United States v. Adams, 383 U.S. 39, 52 (1966)) (“known
`
`disadvantages in old devices which would naturally discourage the search for new
`
`inventions may be taken into account in determining obviousness”).
`
`In fact, the ’433 Patent makes use of a similar architecture, employing
`
`message databases at both the originating client and a transport server: “When an
`
`IVM client communicates an instant voice message within the global IVM system
`
`500, the user manager 706 notifies the server engine 704 whether the one or more
`
`recipients are unavailable, and thereby the instant voice message is saved in the
`
`message database 712,” which is located at the transport server. (’433 Patent,
`
`22:53-58 (emphasis added); see also Petition, 7.) The transport server “may be
`
`centrally located and configured to communicate (i.e., forward and receive
`
`messages with local IVM clients 206, 208, local IVM server 202 and global IVM
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`client 506, 508.” (’433 Patent, 22:5-9.) The ’433 Patent further explains that
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`“[w]hen the one or more IVM recipients become available, the user manager 706
`
`notifies the server engine 704, which instructs the storage manager 710 to retrieve
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`any undelivered instant voice messages for the one or more recipients and delivers
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`Case IPR2017-00225
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`the instant voice messages to the designated one or more IVM recipients.” (Id. at
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`22:58-63.)
`
`Thus, the ’433 Patent makes use of database storage at both the client device
`
`and a centrally located server to communicate voice messages between users.
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`Accordingly, PO cannot show that centralized storage of voice messages amounts
`
`to teaching away from locally storing audio files in a message database, or that
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`both local and centralized storage are “unnecessarily redundant.” (See POR, 22-
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`23.) Rather, Dr. Forys provides numerous reasons why it would have been obvious
`
`to implement database storage of audio messages at the user device of Abburi.
`
`(Forys Decl., ¶89; Forys Reply Decl., ¶¶12-13.)
`
`Fourth, PO similarly contends that “Holtzberg cannot be relied upon to cure
`
`the deficiencies of Abburi because Holtzberg also relies on central storage … at a
`
`server.” (POR, 23 (italics in original).) For the same reasons as discussed above,
`
`employment of centralized storage does not preclude or teach away from storage at
`
`the client. Moreover, the Petition’s combination of Abburi and Holtzberg relies
`
`only on Holtzberg’s specific storage scheme, as illustrated in Figure 3 of Holtzberg
`
`(reproduced below), and not Holtzberg’s storage location. (Petition, 17; Forys
`
`Decl., ¶88.)
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`
`
`(EX1007, Holtzberg, Figure 3.) That Holtzberg describes embodiments of its
`
`database residing at a central location is of no significance. No fields described in
`
`Holtzberg’s database structure are specific to centralized storage, nor has PO
`
`explained why the structure would in any way be incompatible with a database
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`located on a client device. Indeed, Patent Owner’s expert could not describe any
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`changes that would need to be made to Holtzberg’s structure in implementing the
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`structure in a local, client database. (Easttom Deposition, 42:11-43:3.) Rather,
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`Holtzberg’s database storage scheme enables storage of audio messages and
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`metadata associated with those audio messages, regardless of location of the
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`database. (Forys Decl., ¶89.)
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`
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`For these reasons, the combination of Abburi and Holtzberg teaches
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`“wherein the instant voice messaging application includes a message database
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`storing the instant voice message.”
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`2.
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`Case IPR2017-00225
`U.S. Pat. No. 8,995,433
`A POSITA would have been motivated to incorporate
`Holtzberg’s database structure, regardless of whether it is
`taught as centralized or local and whether it is employed
`within a circuit-switched or packet-switched network, into
`Abburi’s system.
`
`Patent Owner’s attacks on the combination of Abburi-Holtzberg fail for at
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`least two reasons.
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`First, PO argues that no POSITA would incorporate Holtzberg’s centralized
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`database into Abburi’s system, as Abburi already employs a centralized audio
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`message store. (POR, 23-27.) But PO misses the point. The Petition turns to
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`Holtzberg for its specific storage scheme, not the database itself or its location.
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`(Petition, 17-18.) Patent Owner’s cite to In re Ratti is inapposite because
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`implementing Holtzberg’s specific database structure at Abburi’s user device
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`would in no way change the basic principles under which Abburi operates.
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`Abburi’s centralized storage would not need to be “[r]elocat[ed] and multipl[ied],”
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`as PO contends, and Dr. Forys provides specifics of how and why Holtzberg’s
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`database storage scheme would be integrated into the system of Abburi. (POR, 26;
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`Petition, 17-18; Forys Decl., ¶¶87-89; Forys Reply Decl., ¶¶12-14.)
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`Second, PO argues that Holtzberg is designed specifically for a circuit-
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`switched network, and therefore its components are incompatible with Abburi’s.
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`(POR, 27-28.) Patent Owner’s arguments are again irrelevant, as the Petition does
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`not rely on any circuit-switched techniques of Holtzberg in its combination, and
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`Case IPR2017-00225
`U.S. Pat. No. 8,995,433
`none of the fields of Holtzberg’s database storage scheme are incompatible with
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`packet-switched networks. (Forys Reply Decl., ¶¶14-15.) For example, a message
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`ID, as shown in Figure 3 of Holtzberg, provides storage benefits whether employed
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`in a database connected to a circuit-switched or packet-switched network. (Forys
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`Decl., ¶87; Forys Reply Decl., ¶¶14-15.) One of ordinary skill in the art would
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`have looked to Holtzberg, regardless of Holtzberg’s disclosure of circuit-switched
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`networks, because both Abburi and Holtzberg are concerned with manipulation
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`and storage of audio messages. (Petition, 17; Forys Decl., ¶87.)
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`B. Abburi-Holtzberg teaches the “file manager system” limitation of
`independent claims 1 and 6.
`
`PO argues that the “instant voice messaging application,” as recited in the
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`independent claims, must include its own dedicated “file manager system.” (POR,
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`30-31.) But neither PO nor its expert provide support that the “file manager
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`system” must be dedicated to the “instant voice messaging application,” nor does
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`the ’433 Patent restrict the “file manager system” from interacting with other
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`components to achieve its function.
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`For example, the “file manager system” must interact with the message
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`database to achieve “one of storing, deleting and retrieving the instant voice
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`messages.” (Forys Reply Decl., ¶¶18-19.) For instance, the ’433 Patent describes
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`that “[t]he file manager accesses a message database 310, in which both the
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`received and recorded instant voice messages are represented as database records,
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`Case IPR2017-00225
`U.S. Pat. No. 8,995,433
`each record comprising a message identifier and the instant voice message. The
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`file manager 308 services requests from the user to record, delete or retrieve
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`messages to/from the message database 310.” (’433 Patent, 12:36-42 (emphasis
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`added).) The message database is described and claimed as a separate component
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`from the file manager system. Thus, the recited “file manager system” does not
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`perform “one of storing, deleting and retrieving the instant voice messages” in
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`isolation, without interacting with other components.
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`Consistent with the description in the ’433 Patent, the combination of
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`Abburi and Holtzberg employs a similar architecture that, even under Patent
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`Owner’s narrow interpretation of “instant voice messaging application,” includes a
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`“file manager system” at the originating user device of Abburi. Dr. Forys explains
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`that “[a] POSITA would also understand that storage and transmission of audio
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`messages occurs in response to a user request to record a voice message, and
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`that to transmit the recorded and stored audio file, the audio file would be retrieved
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`from storage. A POSITA would further understand that the storage and retrieval
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`of audio messages using ‘computer instructions’ would be part of a file
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`manager system.” (Petition, 58; Forys Decl., ¶113 (emphasis added).)
`
`Abburi describes that these “computer instructions configure the processor
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`to record in an audio file, in response to input from a user, an audio message
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`provided by the user to the microphone, and to transfer the audio file in which the
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`U.S. Pat. No. 8,995,433
`audio message is recorded to the communications network…” (Abburi, ¶8.) When
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`storing the audio files in a database, as described in the combination of Abburi and
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`Holtzberg, the “computer instructions” of Abburi would interact with the database
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`to perform storage and retrieval of the audio files. (See Petition, 31-33; Forys
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`Reply Decl., ¶19.) Thus, the operations provided by the described “computer
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`instructions” in Abburi perform similar operations to those described of file
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`manager 308 in the ’433 Patent.
`
`IV. Ground 3: Claims 5 and 6 are invalid over the combination of Abburi,
`Holtzberg, and Logan.
`A. The combination of Abburi, Holtzberg, and Logan teaches the
`“compression/decompression” limitation of independent claim 6.
`PO argues that Logan’s compression is executed by a server, rather than by a
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`client, and mere speculation that the compression capabilities of Logan “could be”
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`placed into Abburi’s client is improper. (POR, 15-17.) Here, PO ignores the fact
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`that Abburi already provides compression at its client prior to sending: “device 300
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`in one embodiment records an audio message provided by the user into a WAV
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`file, compresses the file, and then routes it to the network interface 310 for
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`transmission to the system 200.” (Abburi, ¶40 (emphasis added); Petition, 45.)
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`There is no hindsight in placing compression capabilities at Abburi’s user device
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`client as Abburi already discloses client-side compression. (See POR, 16.)
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`Logan then provides decompression capabilities at the client device: “After
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`the account has been established, utility programs and data may be downloaded
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`from the FTP server 125 to the client/player 103. These utility programs
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`advantageously include pr