UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FACEBOOK, INC., WHATSAPP INC.,
`Petitioner
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner
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`IPR2017-01257
`PATENT 8,199,747
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FACEBOOK, INC., WHATSAPP INC.,
`Petitioner
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner
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`IPR2017-01257
`PATENT 8,199,747
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`INTRODUCTION
`I.
`RELATED MATTERS
`II.
`III. THE ’747 PATENT
`Effective Filing Date of the ’747 Patent
`Overview of the ’747 Patent
`IV. NO REASONABLE LIKELIHOOD THAT AT LEAST ONE OF
`THE CHALLENGED CLAIMS IS UNPATENTABLE
`Claim Construction
`1.
`“Nodes”
`2.
`The received “list of nodes” must include “a connectivity
`status of each node”
`Independent Claim 1 is Not Obvious Over Zydney
`1.
`No prima facie obviousness for “generating an instant
`voice message, wherein generating includes recording
`the instant voice message in an audio file…”
`No prima facie obviousness for “attaching one or more
`files to the audio file”
`Zydney teaches away from “attaching one or more files
`to the audio file”
`Independent Claim 3 Is Not Obvious Over Zydney
` Dependent Claim 13 Is Not Obvious Over Zydney
`Independent Claim 2 Is Not Obvious Over the proposed
`combination
`1.
`No prima facie obviousness for “receiving a list of nodes
`within the packet-switched network, the list of nodes
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`2.
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`3.
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`IPR2017-1257
`U.S. Patent 8,199,747
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`Table of Contents
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`1
`2
`2
`2
`2
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`4
`5
`5
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`7
`7
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`7
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`11
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`13
`14
`16
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`16
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`ii
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`IPR2017-1257
`U.S. Patent 8,199,747
`including a connectivity status of each node, said
`connectivity status being available and unavailable”
`No prima facie obviousness for “wherein a node within
`the list is adapted to be selected as a recipient of an
`instant voice message … wherein the instant voice
`message is temporarily stored when at least one recipient
`is unavailable”
`Appelman teaches away from combination with Zydney,
`and the Petition’s asserted combination of Zydney and
`Appelman would render Zydney unsatisfactory for an
`intended purpose explicitly stated in Zydney
`Dependent Claim 12 Is Not Obvious Over the proposed
`combination
`1.
`No prima facie obviousness for “playing the instant
`voice message”
`CONCLUSION
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`16
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`23
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`25
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`28
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`28
`29
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`2.
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`3.
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`V.
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`iii
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`IPR2017-1257
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`US. Patent 8,199,747
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`List of Exhibits
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`Exhibit No.
`m Declaration of Dr. Val DiEuliis
` Mifflin Co. 3rd Ed. 1992)
`m Excerpts from The American Heritage Dictionary (Houghton
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`iv
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`IPR2017-1257
`U.S. Patent 8,199,747
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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 USA, Inc. and
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`Uniloc Luxembourg S.A. (“Patent Owner”) submit this Preliminary Response to the
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`Petition for Inter Partes Review (“Petition” or “Pet.”) of U.S. Patent No. 8,199,747
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`(“the ’747 Patent”) filed by FACEBOOK, INC. and WHATSAPP INC.
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`(“Petitioner”).
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`In view of the reasons presented herein, the Petition should be denied in its
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`entirety as failing to meet the threshold burden of proving there is a reasonable
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`likelihood that at least one challenged claim is unpatentable. As a general overview,
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`the Petition asserts a single-reference obviousness challenge against three of the five
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`challenged claims; and the Petition adds an additional reference in a proposed
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`combination for two other challenged claims. The Petition fails to satisfy the All
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`Elements Rule for both the single-reference challenges and the combination
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`challenges. Petitioner impermissibly attempts to fill in missing limitations, at least
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`in part, by offering claim interpretations that are expressly proscribed by the
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`unambiguous claim language. There are also several reasons why the references
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`cannot and should not be combined as suggested by the Petition. The Petition’s
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`approaches invite reversible error and should be rejected outright.
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`1
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`IPR2017-1257
`U.S. Patent 8,199,747
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`II. RELATED MATTERS
`Petitioner has initiated the following six Inter Partes Reviews on patents in
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`this family. This is one of six Preliminary Responses being filed by Patent Owner.
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`IPR
`IPR2017-1257
`IPR2017-1365
`IPR2017-1427
`IPR2017-1428
`IPR2017-1523
`IPR2017-1524
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`Patent Challenged
`8,199,747
`8,243,723
`8,995,433
`8,995,433
`7,535,890
`7,535,890
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`III. THE ’747 PATENT
` Effective Filing Date of the ’747 Patent
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`The ’747 Patent is titled “SYSTEM AND METHOD FOR INSTANT VOIP
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`MESSAGING.” The
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`’747 Patent
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`issued
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`from U.S. Patent Application
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`No. 12/398,076, which is a continuation of U.S. Patent No. 7,535,890 filed on
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`December 18, 2003. The ’747 Patent issued on June 12, 2012.
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` Overview of the ’747 Patent
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`The ’747 Patent notes that conventional circuit-switched communications
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`enabled traditional telephony yet had a variety of technical disadvantages that
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`limited developing other forms of communication over such networks. According to
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`the ’747 Patent, “[c]ircuit switching provides a communication path (i.e., dedicated
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`circuit) for a telephone call from the telephone terminal to another device 20 over
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`the [public switched telephone network or] PSTN, including another telephone
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`2
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`U.S. Patent 8,199,747
`terminal. During the telephone call, voice communication takes place over that
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`communication path.” (EX1001, 1:25–30.)
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`The ʼ747 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.” (1:31–33.) Because legacy
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`circuit-switched devices were unable to communicate directly over packet-switched
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`networks, media gateways were designed to receive circuit-switched signals and
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`packetize them for transmittal over packet-switched networks, and vice versa. (1:62–
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`2:17.) The conversion effected by media gateways highlights the fact that packetized
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`data carried over packet-switched networks are different from and are incompatible
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`with an audio signal carried over a dedicated packet-switched circuit. (1:25–30.)
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`The ʼ747 Patent further notes that, notwithstanding the advent of instant text
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`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. (2:18–
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`49.) 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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`3
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`U.S. Patent 8,199,747
`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.” (2:22–29.)
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`In certain disclosed aspects ʼ747 Patent discloses that a user-accessible client
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`is configured for instant voice message (“IVM”) and for direct communication over
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`a packet-switched network (e.g., through an Ethernet card). EX1001, 12:5–8. Certain
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`clients are specially configured to “listen[] to the input audio device 212,” “record[]
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`the user’s speech into a digitized audio file 210 (i.e., instant voice message) stored
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`on the IVM client 208,” and “transmit[] the digitized audio file 210” as packetized
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`data (e.g., using TCP/IP) over a packet-switched network (e.g., network 204) “to the
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`local IVM server 202.” EX1001, 8:4–18, FIG. 2.
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`IV. NO REASONABLE LIKELIHOOD THAT AT LEAST ONE OF THE
`CHALLENGED CLAIMS IS UNPATENTABLE
`The Petition presents the following grounds, which are all based on
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`obviousness theories. As Ground 1, Petitioner alleges obviousness of Claims 1, 3,
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`and 13 under 35 U.S.C. § 103 over Zydney (EX10031). As Ground 2, the Petition
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`alleges obviousness of Claims 2 and 12 under 35 U.S.C. § 103 over Zydney in view
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`of Appelman (EX1004).
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`1 Like the Petition, this Patent Owner Preliminary Response refers to EX1003, which
`is the Zydney reference with line numbers added. A copy of Zydney without line
`numbers has been submitted by the Petitioner as EX1009.
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`4
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`U.S. Patent 8,199,747
`Petitioner has the burden of proof to establish they are entitled to their
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`requested relief. 37 C.F.R. § 42.108(c). Because the Petition only presents theories
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`of obviousness, Petitioner must demonstrate a reasonable likelihood that at least one
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`of the challenged patent claims would have been obvious in view of the art cited in
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`the Petition. Petitioner “must specify where each element of the claim is found in
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`the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4).
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`The Board should reject both Ground 1 and Ground 2 because Petitioner fails to
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`meet this burden.
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` Claim Construction
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`1.
`“Nodes”
`The term “nodes” in the challenged claims does not need an explicit
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`construction, and instead carries its ordinary and customary meaning, as would be
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`understood by one of ordinary skill in the art in the context of the entire disclosure.
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`See In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007); see also
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`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the
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`use in IPRs of the broadest reasonable interpretation). However, should the Board
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`elect to construe the term “nodes”, Petitioner’s proposed construction should be
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`rejected.
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`The Petition seeks to construe “node” to mean “potential recipient” and
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`further interprets “recipient” to mean a person. As alleged support, the Petition
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`U.S. Patent 8,199,747
`collects citations describing “a contact list” as being “a list of other users.” Pet. 8–9
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`(citing EX1001, 8:48–52, 9:32–35, 10:17–19, 13:58–62) (emphasis added); see also
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`id., pp. 58–59 (alleging “a list of names” in Zydney is “The “List’ of Nodes”)
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`(emphasis in original). Applying Petitioner’s proposed construction to the remainder
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`of the claim language, the claimed connectivity statuses “available” and
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`“unavailable” refer to alternative statuses of a person, as opposed to the person’s
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`device.
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`Setting aside the issue of whether Petitioner’s personification of the term
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`“node” is consistent with the intrinsic evidence,2 Petitioner overlooks an important
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`consequence of its proposed construction: a person may be “available” or
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`“unavailable” for communication independent of the online/offline status of their
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`communication device. For example, a person may inform a system that they are
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`“unavailable” and do not wish to be disturbed during resting hours, regardless
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`whether their smartphone is online during that time. It is clear from the disclosure of
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`2 The ’747 Patent consistently refers to a “recipient” as a receiving device. See, e.g.,
`EX1001, 2:66–67 (“the selected recipients being enabled to audibly play the instant
`voice message.”); 3:53–54 (“one or more external recipients connected to an external
`network outside the local network”); 7:61–65 (“the IVM client 208 displays a list of
`one or more IVM recipients on its display 216 …. The user operates the IVM client
`208”); 8:25–28 (“The one or more recipients are enabled to display an indication
`that the instant voice message has been received and audibly play the instant voice
`message to an associated user.”); 8:30–32 (“It is noted that if a recipient IVM client
`is not currently connected to the local IVM server 202 (i.e., is unavailable) ….”).
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`U.S. Patent 8,199,747
`the ’747 Patent that the term “node” cannot be construed as a person. EX2001, ¶¶29–
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`34, ¶¶48–51.
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`2.
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`The received “list of nodes” must include “a connectivity status
`of each node”
`Although not listed among the terms Petitioner asks the Board to construe,
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`Petitioner nevertheless relies on an unreasonable construction for “receiving a list of
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`nodes within the packet-switched network, the list of nodes including a connectivity
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`status of each node”, as recited in Claim 2. Specifically, Petitioner suggests this
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`unambiguous claim language somehow does not require the “list of nodes” to
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`include the “connectivity status of each node” when that list is received: “nothing in
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`the claim language or specification would require the claim, under its broadest
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`reasonable construction, to require receipt of a single or autonomous data structure
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`that contains both pieces of information” (i.e., both the “list of nodes” and the
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`“connectivity status of each node”). Pet. 59. But the claim language explicitly defines
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`“the list of nodes” that is received as “including a connectivity status of each node”.
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`See EX2001, ¶¶ 91–92. The Board should reject Petitioner’s attempt to redraft the
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`claim under the guise of an alleged broadest reasonable construction.
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`1.
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`Independent Claim 1 is Not Obvious Over Zydney
`No prima facie obviousness for “generating an instant voice
`message, wherein generating includes recording the instant voice
`message in an audio file…”
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`7
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`IPR2017-1257
`U.S. Patent 8,199,747
`Among other limitations, independent Claim 1 recites “generating an instant
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`voice message, wherein generating includes recording the instant voice message in
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`an audio file and attaching one or more files to the audio file.” The Petition parses
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`this limitation as follows: “generating an instant voice message [1a], wherein
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`generating includes recording the instant voice message in an audio file [1b(i)] and
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`attaching one or more files to the audio file [1b(ii)].” Pet. 22, 26–27.
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`For [1a], the Petition states “[t]he ‘instant voice message’ in Zydney takes the
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`form of a ‘voice container.’” Pet. 22. The Petition then reverses course with no
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`explanation, stating for [1b(i)] that “[t]he generation of a voice container in Zydney
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`includes recording the instant voice message in a voice (audio) file.” Pet. 26. While
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`that characterization of Zydney is misleading, for reasons explained below, it is
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`nevertheless irrelevant. Petitioner has attempted to substitute two distinct elements
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`in Zydney (the “voice container” and the “voice message file”) in place of a single
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`element in the claim—i.e., the claimed “instant voice message”. The Petition then
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`once again reverses course and alleges that Zydney’s description of a multimedia file
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`being associated with a voice container teaches attaching one or more files to the
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`audio file. Pet. 27–29.
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`In short, Petitioner sets up a strawman in challenging the following
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`fundamental rewrite of Claim 1: generating [a container], wherein generating
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`includes recording [an] instant voice message [i.e., something other than the
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`IPR2017-1257
`U.S. Patent 8,199,747
`container] in an audio file and attaching one or more files to the [container, instead
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`of the audio file]. But that is not what Claim 1 recites.
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`Not only does Claim 1 explicitly recite that the instant voice message is
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`recorded in an audio file, Claim 1 also explicitly recites that the entirety of the instant
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`voice message is recorded in the audio file: “recording the instant voice message in
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`an audio file.” In view of that unambiguous claim language, the claimed “instant
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`voice message” cannot reasonably be interpreted to extend beyond the “audio file”
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`to some other external element, such as a separate and independently-generated
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`container for that file. Rather, the instant voice message is the recording in the audio
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`file. The plain language of the claim therefore proscribes Petitioner’s attempt to
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`identify one element for the claimed “generating” (the “voice container” in Zydney)
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`and another for the “recording” in the audio file (the “voice message” in Zydney).
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`Petitioner’s strawman is in direct contravention to the express teachings of
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`Zydney and the testimony from both experts, who confirm that Zydney expressly
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`distinguishes the digitally-recorded voice message file from the voice container that
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`is ultimately transmitted. Petitioner’s declarant, Dr. Lavian, observed that Zydney
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`discloses its voice message is digitally recorded into a file that is compressed and
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`stored in temporary memory, and only thereafter is the voice message placed within
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`a distinct voice container:
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`The sender also “digitally records messages for one or more recipients
`using a microphone-equipped device and the software agent. The
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`U.S. Patent 8,199,747
`software agent compresses the voice and stores the file temporarily on
`the PC if the voice will be delivered as an entire message.” (Id., 16:1-4;
`see also id., 20:11-14, 21:11-16 (describing “the recording of one or
`more voice packet messages on a personal computer” as “voice files
`[that] can be played and recorded using voice container enabled
`devices.”).) The voice message is placed into a “voice container,” which
`can be transmitted to the destination. (Id., 10:20-11:3.)
`EX1002, ¶ 54 (emphasis added).
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`Dr. DiEuliis also testified the voice message of Zydney is audio data that is
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`first acquired and then stored in a voice container, which is a type of data structure
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`distinct from a file. EX2001, ¶ 56–57 (citing, inter alia, EX1003, 11:1–3 (“the
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`[voice] message is first acquired, compressed and then stored in a voice container
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`26 which is then sent to its destination(s).”)). Thus, both experts cite teachings from
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`Zydney confirming that the digitally-recorded voice message file and the voice
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`container are distinct elements. Each is generated apart from the other.
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`Zydney also emphasizes this distinction in its explicit definition for its devised
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`“voice containers” term: “the term ‘voice containers’ as used throughout this
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`application refers to a container object that contains no methods, but contains voice
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`data or voice data and voice data properties.” EX1003, 12:7–8; see also Pet. 22
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`(quoting the same and underlining the words “contains voice data”); see also
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`EX2001, ¶ 54. That unambiguous lexicography further confirms that the voice
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`container in Zydney is distinguishable from the contents (e.g., data or files) contained
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`U.S. Patent 8,199,747
`therein, just as a box would be readily distinguishable from each of the paper clips
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`contained therein. Id.
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`Contrary to what the Petition suggests, the temporary voice message file in
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`Zydney is not somehow metaphysically transformed in a manner that makes it lose
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`its distinct identity simply if it were placed within a voice container that is
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`transmitted. EX2001, ¶¶ 54–58; cf., Pet. 22 (“The ‘instant voice message’ in Zydney
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`takes the form of a ‘voice container.’”). Indeed, a POSITA would not be motivated
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`to remove the explicit distinction between content and container, especially given
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`that Zydney discloses that multiple discrete files (each serving a unique purpose) are
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`placed within the voice container and later, upon receipt, individually unpacked.
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`EX1003, 19:1–7; EX2001, ¶ 57–61.
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`For the foregoing reasons, Zydney fails to disclose or suggest an instant voice
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`message recorded in an audio file, as recited in Claim 1. The Petition therefore does
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`not present a prima facie case of obviousness for the “generating an instant voice
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`message, wherein generating includes recording the instant voice message in an
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`audio file” limitation of Claim 1.
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`2.
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`No prima facie obviousness for “attaching one or more files to
`the audio file”
`As an additional and independent reason to dismiss the Petition with respect
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`to Claim 1, Petitioner has failed to make a prima facie case of obviousness for
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`limitation [1b(ii)], i.e., “attaching one or more files to the audio file”. The Petition
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`11
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`U.S. Patent 8,199,747
`points to disclosure in Zydney that allegedly teaches attaching additional files (other
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`than the digitally-recorded voice message file) to the voice container. Pet. 27–29;
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`EX2001, ¶ 71–72. That teaching is inapposite because the claim language requires
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`that the one or more files be attached to the audio file itself, not to a distinct container.
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`EX2001, ¶¶ 71–72; see also Section IV.B.1, supra. Moreover, as Dr. DiEuliis notes,
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`the Petition’s cited passages in Zydney actually state that the “file” in Zydney is
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`temporary in nature, created only in certain circumstances, and therefore not
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`necessarily transmitted to a recipient. EX2001, ¶¶ 54–58, ¶¶ 71–73.
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`The Petition’s attempts to explain away the flaws of Zydney by referencing
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`Zydney’s description of the Multipurpose Internet Mail Extension (MIME) standard
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`are also unpersuasive. Zydney states:
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`In one implementation example, … the voice container can formatted
`using industry standards such as Multipurpose Internet Mail Extension
`(MIME) format. This extension allows non-textual messages and
`multipart message bodies attachments to be specified in the message
`headers. MIME was developed and adopted by the Internet Engineering
`Task Force (IETF). The MIME protocol which is an extension of SMTP,
`covers binary, audio and video data. (EX1003, 19:7–12)
`This passage of Zydney is clearly referring to attaching files to a voice
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`container, and not to an audio file. EX2001, ¶¶ 61, ¶¶ 71–78. It is undisputed that
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`Zydney does not teach or suggest attaching one or more files to the voice-message
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`file itself. Id. Presumably that is why the Petition points exclusively to the container
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`in an attempt to fit a square peg into a round hole. The remaining references to MIME
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`12
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`U.S. Patent 8,199,747
`in Zydney are directed to the voice container itself being a MIME attachment to an
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`email, and not the voice container, let alone an audio file, having a MIME
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`attachment. See EX1003, 15:15–17, 17:2–4. Zydney provides no details as to how
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`an audio file can have a MIME attachment, and, as Dr. DiEuliis testifies, it would
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`not make sense to format an audio file as a MIME message, attach files to it, and
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`then create a voice container that would need to be formatted as a MIME message
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`again. EX2001, ¶ 73, ¶ 77.
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`Accordingly, Zydney fails to disclose or suggest “attaching one or more files
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`to the audio file”, as recited in Claim 1. For this independent reason, the Petition
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`should be denied at least with respect to Claim 1.
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`3.
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`Zydney teaches away from “attaching one or more files to the
`audio file”
`Dr. DiEuliis testifies that Zydney teaches away from “attaching one or more
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`files to the audio file”, as opposed to the container. EX2001, ¶¶ 75–78; see also In
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`re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (a prior art reference teaches away from
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`the claimed invention when a person of ordinary skill, upon reading the reference,
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`“would be led in a direction divergent from the path that was taken by the
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`applicant.”). This is because Zydney teaches that its voice container is specifically
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`constructed to have files inserted therein. EX2001, ¶¶ 77. Indeed, that is the
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`fundamental purpose of the voice container. The disclosures of Zydney therefore
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`U.S. Patent 8,199,747
`would lead a person of ordinary skill in the art away from attaching one or more files
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`to the voice message file itself, instead of the voice container. EX2001, ¶¶ 75–78.
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`Zydney therefore teaches away from “attaching one or more files to the audio
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`file”, as recited in Claim 1. For this additional and independent reason, the Petition
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`should be denied at least with respect to Claim 1.
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`Independent Claim 3 Is Not Obvious Over Zydney
`Among other limitations, independent Claim 3 recites “controlling a method
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`of generating the instant voice message based upon a connectivity status [of] each
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`recipient”.
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`The Petition relies exclusively on the “pack and send” mode of operation as
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`allegedly rendering obvious the specifically-controlled “method of generating the
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`instant voice message”. Pet. 42 (“The ‘method of generating the instant voice
`
`message’ in Zydney, for purposes of this claim limitation, is the ‘pack and send’
`
`mode described previously.”); EX2001, ¶ 81. However, the Petition identifies no
`
`teaching in Zydney for controlling how a “pack and send” message is generated based
`
`upon connectivity status. EX2001, ¶¶ 62–66, ¶¶ 79–81. That deficiency is fatal to
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`the challenge of independent Claim 3.
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`It is undisputed that the “pack and send” mode in Zydney has but “one”
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`unvarying process (as the name implies). According to Petitioner, “‘[a] pack and
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`send mode of operation,’ as Zydney explains, ‘is one in which the message is first
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`14
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`IPR2017-1257
`U.S. Patent 8,199,747
`acquired, compressed and then stored in a voice container 26 which is then sent to
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`its destination(s).’” Pet. 42 (emphasis added); EX2001, ¶¶ 62–63, ¶ 65, ¶¶ 80–81. A
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`single and unvarying method of generating a “pack and send” message is not one
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`that is controlled “based upon a connectivity status [of] each recipient,” as recited in
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`Claim 3. Id.
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`Petitioner has not and cannot prove that Zydney’s “pack and send” mode is
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`controlled as claimed by pointing, instead, to the distinct “intercom” mode in
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`Zydney. EX2001, ¶¶ 64–66, ¶ 81. Petitioner admits the “intercom” mode in Zydney
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`is not a controlled form of the “pack and send” mode but rather it is an alternative
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`mode altogether. See Pet. 42 n.5. Therefore, Zydney does not disclose or suggest that
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`a method of generating an instant voice message is controlled based upon a
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`connectivity status [of] each recipient, as recited in Claim 3.
`
`Petitioner also has not and cannot cure the deficiency by pointing, instead, to
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`alternative ways in which a voice message may be delivered, sometime after the
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`message is generated. For example, the Petition offers several block quotations
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`addressing “distinct modes of communication based on the status of the recipient[.]”
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`Pet. 43 (quoting EX1003, 14:19–23) (emphasis altered). One of the proffered block
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`quotations discloses that the originator (i.e., a person, as opposed to computerized
`
`automation) can choose between the “delivery options” of either “voice mail” or “e-
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`Mail”. Id. (quoting 15:15–17). Notably, Petitioner’s block-quotation uses ellipses in
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`15
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`IPR2017-1257
`U.S. Patent 8,199,747
`place of the disclosed basis for choosing between those delivery options: “the choice
`
`of delivery options is based on the interests of both parties and whether the recipient
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`is sufficiently mobile that access to the registered computer is not always available.”
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`EX1003, 15:17–19 (emphasis added). Any alleged control of how a message is
`
`delivered in Zydney is a red herring. By the time a message is delivered, it has already
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`been generated. EX2001, ¶¶ 63. Changing the delivery mechanism for a message is
`
`therefore clearly irrelevant to how the message was generated, and therefore
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`irrelevant to the limitation in question: “controlling a method of generating the
`
`instant voice message.” EX2001, ¶¶ 65–66, ¶¶ 79–81.
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`For the foregoing reasons, the sole challenge against independent Claim 3
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`should be dismissed as failing to present a prima facie case of obviousness.
`
` Dependent Claim 13 Is Not Obvious Over Zydney
`It is axiomatic that a dependent claim cannot have been rendered obvious if
`
`the claim from which it depends has not been rendered obvious. In re Fine, 837 F.2d
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`1071 (Fed. Cir. 1988) (“Dependent claims are nonobvious under section 103 if the
`
`independent claims from which they depend are nonobvious.”). Dependent
`
`Claim 13, which depends from Claim 1, is therefore not obvious.
`
`
`
`1.
`
`Independent Claim 2 Is Not Obvious Over the proposed
`combination
`No prima facie obviousness for “receiving a list of nodes within
`the packet-switched network, the list of nodes including a
`
`16
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`IPR2017-1257
`U.S. Patent 8,199,747
`connectivity status of each node, said connectivity status being
`available and unavailable”
`Among other limitations, independent Claim 2 recites “receiving a list of
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`nodes within the packet-switched network, the list of nodes including a connectivity
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`status of each node, said connectivity status being available and unavailable, wherein
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`a node within the list is adapted to be selected as a recipient of an instant voice
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`message”.
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`It is significant that Petitioner seeks to construe “list of nodes” to mean “list
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`of potential recipients” and that Petitioner interprets “recipient” to mean a person.
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`See Section IV.A, supra. The Petition does not identify any teaching in either cited
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`reference for receiving a list of persons that includes the available/unavailable status
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`for each person (as opposed to their respective devices). EX2001, ¶¶ 48–51, ¶ 90.
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`As explained above in Section IV.A.2, the language of Claim 2 explicitly
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`requires that the list that is received includes the connectivity status of the nodes in
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`that list. The Petition argues that Zydney’s disclosure of “a list of names that have
`
`previously been entered into the software agent” teaches “receiving a list of nodes”.
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`Pet. 54. The Petition states that “Zydney does not expressly disclose how the ‘list of
`
`names’ was ‘previously entered’ into the sender’s software agent. (Zydney, 14:17–
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`19.)” Pet. 56. However, it is clear from Zydney that the list of names is entered by
`
`the originator, i.e., a user. For example, FIG. 7 of Zydney “is a flow chart of an
`
`exemplary embodiment illustrating the method and system with respect to the
`
`17
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`IPR2017-1257
`U.S. Patent 8,199,747
`originator” and states at step 1.1.2 that the originator “select[s] one or more
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`recipients from a list maintained by the originator and presented visually by the
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`[software] agent[.]” EX1003, 3:5–6 and FIG. 7 (emphases added).
`
`Assuming arguendo that the “list of nodes” recited in Claim 2 is the “list of
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`names” received from the originator in Zydney, the plain language of Claim 2 would
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`require that the connectivity status of each user be received from the originator.
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`However, nowhere in the Petition is it explained, and nowhere in Zydney is it
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`disclosed or suggested, how a user would be able to determine and enter into a
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`software agent the connectivity statuses of other users. EX2001 ¶ 93–95. Recipients
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`in Zydney receive the voice message over the Internet, meaning, as Dr. DiEuliis
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`states, that the at least some of those recipients can be located far away from the
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`originator. EX2001 ¶ 95 It is extremely unlikely, if not impossible, for the originator
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`to determine whether each potential recipient is available or unavailable at a
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`particular moment in time, and provide such connectivity statuses to their software
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`agent. Id.3 Indeed, if a user always knew which potential recipients were available
`
`and unavailable, there would be no need for the central server of Zydney to “maintain
`
`and provide the status of all software agents[.]” EX1003, 14:14. Reliance on Zydney
`
`
`3 Appelman, which is also cited in the Petition for Claim 2, corroborates this
`understanding, at 2:57–60: “in a system of any size there would be no way for a user
`to track the comings and goings of thousands or millions of users each moment in
`time.”
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`18
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`IPR2017-1257
`U.S. Patent 8,199,747
`therefore cannot support a prima facie case of obviousness for “receiving a list of
`
`nodes within the packet-switched network, the list of nodes including a connectivity
`
`status of each node, said connectivity status being available and unavailable, wherein
`
`a node within the list is adapted to be selected as a recipient of an instant voice
`
`message”, as in Claim 2.
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`Perhaps recognizing this inescapable defect, Petitioner states that Zydney does
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`not independently render the claim language obvious if the “list of nodes” as
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`received must include the “connectivity status of each node”—i.e., if Claim 2 is
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`interpreted to mean what it recites: “receiving a list of nodes …, the list of nodes
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`including a connectivity status of each node”. See Pet. 59; see also EX1002, ¶ 151
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`(“the [Zydney] reference does not disclose whether these two pieces of information
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`[i.e., “the list of names” and the “connectivity statuses”] are brought together in a
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`single unitary ‘list of nodes[.]’”). The Petition attempts to address this defect by
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`citing Appelman, but Appelman does not cure this deficiency.4
`
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`4 Petitioner’s strategy of begrudgingly acknowledging a defect in Zydney but then
`immediately undoing t
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