Petition for Inter Partes Review of
`U.S. Patent No. 8,243,723
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`FACEBOOK, INC., WHATSAPP INC.,
`Petitioners
`
`v.
`
`UNILOC USA, INC., UNILOC LUXEMBOURG, S.A.,
`Patent Owners
`
`U.S. Patent No. 8,243,723
`
`TITLE: SYSTEM AND METHOD FOR INSTANT VOIP MESSAGING
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,243,723
`
`

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`Table of Contents
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`Page
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`I. Mandatory Notices Under 37 C.F.R. § 42.8(A)(1) ........................................ 1
`A.
`Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1) ............................ 1
`B.
`Related Matters under 37 C.F.R. § 42.8(b)(2) ..................................... 1
`C.
`Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3) .................. 2
`D.
`Service Information .............................................................................. 3
`E.
`Power of Attorney ................................................................................ 3
`Fee Payment - 37 C.F.R. § 42.103 ................................................................. 3
`II.
`III. Requirements for Inter Partes Review under 37 C.F.R. §§ 42.104 and
`42.108 ............................................................................................................. 3
`A. Grounds for Standing under 37 C.F.R. § 42.104(a) ............................. 3
`B.
`Identification of Challenge under 37 C.F.R. § 42.104(b) and
`Statement of Precise Relief Requested ................................................ 4
`IV. Technology Background Relevant to a Person of Ordinary Skill in the
`Art ................................................................................................................... 4
`The ’723 Patent ............................................................................................... 6
`V.
`VI. Claim Construction Under 37 C.F.R. § 42.104(B)(3) .................................... 7
`A.
`“signal” ................................................................................................. 7
`B.
`“node” ................................................................................................. 10
`VII. Claims 1-3 Are Unpatentable ....................................................................... 12
`A.
`Brief Summary and Date Qualification of the Prior Art .................... 12
`
`Overview of Zydney (Ex. 1003) .............................................. 12
`
`Overview of Appelman (Ex. 1004) .......................................... 16
`B. Ground 1: Claims 1-3 Are Obvious Over Zydney + Appelman ....... 20
`
`Claim 1 (Independent) ............................................................. 20
`(a)
`“A method for instant voice messaging over a
`packet-switched network, the method comprising:”
`(Preamble, Claim 1) ....................................................... 20
`(i)
`“A method for instant voice messaging” ............ 20
`-i-
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`(c)
`
`(d)
`
`(e)
`
`(f)
`
`(g)
`
`(h)
`
`(i)
`
`Table of Contents
`(continued)
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`Page
`
`(b)
`
`“over a packet-switched network” ...................... 21
`(ii)
`“monitoring a connectivity status of nodes within
`the packet-switched network, said connectivity
`status being available and unavailable;” (Claim
`1[a]) ................................................................................ 23
`“recording the connectivity status for each of the
`nodes;” (Claim 1[b]) ...................................................... 27
`“associating a sub-set of the nodes with a client;”
`(Claim 1[c]) ................................................................... 28
`“transmitting a signal to a client including a list of
`the recorded connectivity status for each of the
`nodes in the sub-set corresponding to the client;”
`(Claim 1[d]) ................................................................... 29
`“receiving an instant voice message having one or
`more recipients;” (Claim 1[e]) ....................................... 41
`“delivering the instant voice message to the one or
`more recipients over a packet-switched network;”
`(Claim 1[f]) .................................................................... 45
`“temporarily storing the instant voice message if a
`recipient is unavailable; and” (Claim 1[g]) ................... 46
`“delivering the stored instant voice message to the
`recipient once the recipient becomes available.”
`(Claim 1[h]) ................................................................... 49
`Dependent Claim 2: “The method for instant voice
`messaging over a packet-switch network according to
`claim 1, wherein the instant voice message includes one
`or more files attached to an audio file.” ................................... 52
`Dependent Claim 3: “The method for instant voice
`messaging over a packet-switch network according to
`claim 1, further comprising the step of: controlling a
`method of generating the instant voice message based
`upon the connectivity status of said one or more
`recipient.” ................................................................................. 55
`-ii-
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`Table of Contents
`(continued)
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`Page
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`VIII. Conclusion .................................................................................................... 61
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,243,723
`
`List of Exhibits
`
`
`
`
`
`
`
`Description of Document
`Ex. No
`1001 U.S. Patent No. 8,243,723 to Michael J. Rojas
`1002 Declaration of Tal Lavian, Ph.D.
`1003
`PCT Patent Application No. PCT/US00/21555 to Herbert Zydney et
`al. (filed August 7, 2000, published February 15, 2001 as WO
`01/11824 A2) (with line numbers added) (“Zydney”)
`1004 U.S. Patent No. 6,750,881 to Barry Appelman (“Appelman”)
`1005
`Excerpts from Margaret Levine Young, Internet: The Complete
`Reference (2d ed. 2002) (“Young”)
`
`1006
`
`PCT Patent Application No. PCT/US00/21555 to Herbert Zydney et
`al. (filed August 7, 2000, published February 15, 2001 as WO
`01/11824 A2) (as-published version without added line numbers)
`1007 U.S. Patent No. 6,757,365 B1 to Travis A. Bogard (“Bogard”)
`1008
`Excerpts from The Authoritative Dictionary of IEEE Standards
`Terms, 7th Ed. (2000)
`
`1009
`
`1010
`1011
`
`Excerpts from McGraw-Hill Dictionary of Scientific and Technical
`Terms, 5th Ed. (1994)
`
`Excerpts from Microsoft Computer Dictionary, 3rd Ed. (1997)
`
`Excerpts of Joint Claim Construction and Prehearing Statement filed
`on March 10, 2017 in Case No. 16-cv-00642 (E.D. Tex.), including
`Exhibit A
`
`
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`-iv-
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,243,723
`
`This is a petition for Inter Partes Review of claims 1-3 of U.S. Patent No.
`
`8,243,723 (Ex. 1001) (“’723 patent”).
`
`I. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1)
`A. Real Party-In-Interest under 37 C.F.R. § 42.8(b)(1)
`Facebook, Inc. and WhatsApp Inc. (“Petitioners”) are the real parties-in-
`
`interest to this inter partes review petition.
`
`B. Related Matters under 37 C.F.R. § 42.8(b)(2)
`The ’723 patent is the subject of a pending request for inter partes review
`
`(IPR2017-00222) filed by Apple Inc., on November 14, 2016. The Petitioners herein
`
`are not parties to IPR2017-00222 and were not involved in the preparation of that
`
`petition. An institution decision is expected for IPR2017-00222 by June 5, 2017.
`
`The ’723 patent is also the subject of two pending litigations involving the
`
`Petitioners: Uniloc USA, Inc., Uniloc Luxembourg, S.A. v. Facebook, Inc., Case No.
`
`2:16-cv-00728-JRG (E.D. Tex. filed July 5, 2016), and Uniloc USA, Inc., Uniloc
`
`Luxembourg, S.A. v. WhatsApp, Inc., Case No. 2:16-cv-00645-JRG (E.D. Tex. filed
`
`June 14, 2016), which have been consolidated for pretrial purposes with Uniloc USA,
`
`Inc. et al v. Samsung Electronics America, Inc., Case No. 2:16-cv-00642 (E.D. Tex.).
`
`The Petitioners are also aware of the following additional pending litigations
`
`involving the ’723 patent:; Uniloc USA, Inc. et al v. Apple Inc., Case No. 2:16-cv-
`
`00638-JRG (E.D. Tex.); Uniloc USA, Inc. et al v. BlackBerry Corp. et al, Case No.
`
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`-1-
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,243,723
`
`2:16-cv-00639-JRG (E.D. Tex.); Uniloc USA, Inc. et al v. AOL Inc., Case No. 2:16-
`
`cv-00722-JRG (E.D. Tex.); Uniloc USA, Inc. et al v. BeeTalk Private Ltd., Case No.
`
`2:16-cv-00725-JRG (E.D. Tex.); Uniloc USA, Inc. et al v. Green Tomato Ltd., Case
`
`No. 2:16-cv-00731-JRG (E.D. Tex.); Uniloc USA, Inc. et al v. Sony Interactive
`
`Entertainment Ltd., Case No. 2:16-cv-00732-JRG (E.D. Tex.); Uniloc USA, Inc. et
`
`al v. Avaya Inc., Case No. 2:16-cv-00777-JRG (E.D. Tex.); Uniloc USA, Inc. et al
`
`v. Telegram Messenger, LLP, Case No. 2:16-cv-00892-JRG (E.D. Tex.). Although
`
`the Petitioners are not parties to these other litigations, because they involve
`
`allegations of infringement of the ’723 patent, they may be impacted by a decision
`
`by the Board in this IPR proceeding.
`
`C. Lead and Back-Up Counsel under 37 C.F.R. § 42.8(b)(3)
`Petitioners provide the following designation of counsel.
`
`LEAD COUNSEL
`Heidi L. Keefe (Reg. No. 40,673)
`hkeefe@cooley.com
`FB_Uniloc2_723_PTAB_IPR@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington, DC 20004
`Tel: (650) 843-5001
`Fax: (650) 849-7400
`
`
`BACK-UP COUNSEL
`Phillip E. Morton (Reg. No. 57,835)
`pmorton@cooley.com
`FB_Uniloc2_723_PTAB_IPR@cooley.com
`COOLEY LLP
`ATTN: Patent Group
`1299 Pennsylvania Avenue NW
`Suite 700
`Washington D.C. 20004
`Tel: (703) 456-8668
`Fax: (703) 456-8100
`Mark R. Weinstein (Admission pro hac
`vice pending)
`mweinstein@cooley.com
`
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,243,723
`
`LEAD COUNSEL
`
`BACK-UP COUNSEL
`Tel: (650) 843-5007
`Fax: (650) 849-7400
`
`
`
`D.
`Service Information
`This Petition is being served to the current correspondence address for the
`
`’723 patent, UNILOC USA INC., Legacy Town Center, 7160 Dallas Parkway, Suite
`
`380, Plano TX 75024. The Petitioners consent to electronic service at the addresses
`
`provided above for lead and back-up counsel.
`
`E.
`Power of Attorney
`Filed concurrently in accordance with 37 C.F.R. § 42.10(b).
`
`II.
`
`FEE PAYMENT - 37 C.F.R. § 42.103
`This Petition requests review of three (3) claims. A payment of $23,000 is
`
`submitted herewith, based on a $9,000 request fee (for up to 20 claims), and a post-
`
`institution fee of $14,000 (for up to 15 claims). This Petition meets the fee
`
`requirements of 35 U.S.C. § 312(a)(1).
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R. §§ 42.104
`AND 42.108
`A. Grounds for Standing under 37 C.F.R. § 42.104(a)
`The Petitioners certify that the ’723 patent is available for inter partes review
`
`and that the Petitioners are not barred or otherwise estopped from requesting inter
`
`partes review on the grounds identified herein.
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,243,723
`
`B.
`Identification of Challenge under 37 C.F.R. § 42.104(b) and
`Statement of Precise Relief Requested
`The Petitioners respectfully request that the Board initiate inter partes review
`
`of claims 1-3 on the following ground:
`
`Ground
`1
`
`Claims
`1-3
`
`Basis for Challenge
`Unpatentable over Zydney (Ex. 1003) in view of
`Appelman (Ex. 1004), under § 103(a)
`
`Part VII below explains why the challenged claims are unpatentable based
`
`on the ground identified above. These references were not cited during the original
`
`prosecution of the ’723 patent, and were not cited in the separate IPR petition filed
`
`by Apple Inc. (IPR2017-00222). Submitted with the Petition is the Declaration of
`
`Tal Lavian, Ph.D. (Exhibit 1002) (“Lavian”), a technical expert with decades of
`
`relevant technical experience. (Lavian, ¶¶ 1-10, Ex. A.)
`
`IV. TECHNOLOGY BACKGROUND RELEVANT TO A PERSON OF ORDINARY SKILL
`IN THE ART
`As explained by Dr. Lavian, a person of ordinary skill in the art for purposes
`
`of the ’723 patent would have possessed at least a bachelor’s degree in computer
`
`science, computer engineering, or electrical engineering with at least two years of
`
`experience in development and programming relating to network communication
`
`systems (or equivalent degree or experience). (Lavian, ¶¶ 13-16.)
`
`As discussed in more detail below, the ’723 patent relates generally to instant
`
`messaging systems. The term “instant messaging” or “IM” generally refers to a
`
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,243,723
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`technology that allows two or more people to exchange information with other users,
`
`including text, voice data, and/or files. (Id., ¶ 30.)
`
`Instant messaging technologies date back to at least the 1960s with the MIT
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`“Interconsole Messages” system, which allowed users to exchange textual messages
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`over a network. (Id., ¶ 32.) Through the 1980s and 1990s, companies such as
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`CompuServe, Commodore, and America Online (AOL), among others, released
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`instant messaging solutions to the public, some of which became immensely
`
`popular. (Id., ¶¶ 33-36.) For example, by 2002, AOL Instant Messenger (AIM), the
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`instant messaging service offered by AOL, had more than 100 million registered
`
`users. (Id., ¶ 37.)
`
`The ’723 patent also acknowledges that instant messaging solutions were
`
`known in the art. The Background section of the patent explains that known instant
`
`messaging (“IM”) systems generally included client devices, IM software installed
`
`on those client devices, and IM servers. (’723, 2:30-34.) IM systems communicated
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`over a packet-switched network, such as the Internet. (Id., 1:33-34, 2:30-34.) The
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`IM server maintained a list of users that were currently “online” and able to receive
`
`messages and presented this list to the users via the instant messaging software. (Id.,
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`2:34-37; Lavian, ¶ 40.) A user could select one or more recipients and send them a
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`message. (’723, 2:38-40; Lavian, ¶¶ 30, 41, 42.) The IM server would transmit the
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,243,723
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`message to the recipients and the message would be displayed to the recipients by
`
`the IM software. (’723, 2:40-42.)
`
`Instant messaging services typically required that the user have software (an
`
`IM client) that provides a user interface allowing a user to send messages to one or
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`more recipients. The messages would typically be communicated to a server which
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`would either deliver the message to the recipients, or store them at the server if the
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`recipient was not currently available. (Lavian, ¶¶ 30, 41, 42.) IM clients typically
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`varied in terms of what types of information they could transmit, how they indicate
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`availability of other users, whether and how they secure the communications, and
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`other details. (Id., ¶ 31.)
`
`V. THE ’723 PATENT
`The ’723 patent purports to describe a system and method for delivering
`
`instant voice messages over a packet-switched network. (’723, Abstract.) The
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`disclosed system includes a client such as a VoIP telephone or PC computer
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`“enabled for IP telephony” that is connected to a server and instant voice message
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`(“IVM”) recipients through a network(s). (Id., 1:39-46, 2:56-67, 6:61-65.)
`
`In one embodiment, when a user chooses to send an IVM, the IVM client
`
`displays a “list of one or more IVM recipients.” (Id., 7:61-64.) This recipient list is
`
`provided and stored by an IVM server. (Id.) Once recipients are selected, the user
`
`records a message, such as by using a microphone to record a digitized audio file.
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,243,723
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`(Id., 8:3-7.) The patent states that one or more files may be attached to the instant
`
`voice message, such as by using a conventional “drag-and-drop” technique. (Id.,
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`12:20-33, 13:28-33.)
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`Once the voice message is generated, the client transmits the voice message
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`to the server for delivery to one or more recipients. (Id., 8:17-25.) After receiving
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`the IVM, the server transmits the voice message to the one or more recipients. (Id.,
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`8:22-25.) If the recipient is “available” (currently connected to the IVM server), it
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`will receive the instant voice message. (Id., 8:28-30.) If a recipient is unavailable
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`(offline), the server temporarily saves the voice message and transmits it once the
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`recipient becomes available. (Id., 8:30-35.) The recipient is notified of the new
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`voice message and can play the audio file. (Id., 8:25-28.) If the message had
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`attachments, the recipient can also access the attached files. (Id., 12:64-13:4.)
`
`This Petition addresses claims 1-3. Claim 1 is an independent claim; claims
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`2 and 3 depend from claim 1.
`
`VI. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3)
`The constructions below provide the broadest reasonable interpretation in
`
`light of the specification to a person of ordinary skill in the art.
`
`A.
`“signal”
`Claim 1 recites the step of “transmitting a signal to a client including a list of
`
`the recorded connectivity status for each of the nodes in the sub-set corresponding
`
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,243,723
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`to the client.” As explained below, the broadest reasonable construction of “signal”
`
`is “information conveyed in a communication system.”
`
`The written description does not use the term “signal” in the context of
`
`transmitting a list of recorded connectivity statuses, and accordingly, does not
`
`mandate a particular form the claimed “signal” must take. (Lavian, ¶ 49.) Other
`
`portions of the written description use the word “signal” to generally refer to
`
`information conveyed in a communications system, such as a network. (E.g., ’723,
`
`2:12-14 (mentioning “the audio signal carried over PSTN”), 8:17-18 (IVM client
`
`208 “transmits . . . the send signal to the local IVM server 202”), 8:64-67 (a “stop
`
`signal is generated when the user presses a button . . .”), 9:45-46 (“[t]he IVM server
`
`202 also signals the IVM client 208 to generate audio file 210 . . .”).)
`
`The portions of the written description that appear to correspond to
`
`“transmitting” a signal including a “list,” as noted, do not use the word “signal.”
`
`Those portions generally describe transmission of a “contact list” from a server
`
`system to a client. For example, the specification states:
`
`[T]he IVM client 208 requests from the global IVM server 502 a global
`contact list (not shown) of global one or more IVM recipients with
`which the IVM client 208 may exchange instant voice messages. . . .
`The global IVM server system 502 stores and maintains this contact
`list. Thus, the global IVM server system 502 responds by transmitting
`the contact list to the IVM client 208. The IVM client 208 displays the
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,243,723
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`contact list on its display 216. Alternatively, the is [sic] global contact
`list may 65 be replicated to the local IVM server 202 within the local
`IVM system 510, in which case the local IVM client 208 obtains the
`global contact list from the local IVM server 202.
`
`(’723, 15:56-16:1.) The specification also similarly states: “In operation, the IVM
`
`client 208 displays a list of IVM recipients on the display device 216 provided and
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`stored by the local IVM server 202. The user operates the IVM client 208 by using
`
`the input device 218 on the IVM client 208 to indicate a selection of one or more
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`IVM recipients from the list.” (Id., 9:32-38.)
`
`The fact that the passages identified above do not use the word “signal” to
`
`describe the list indicates that the term “signal,” under its broadest reasonable
`
`construction, does not require a particular type of signal. The written description
`
`provides no detail on the underlying format or structure of the information
`
`transmitted in the list. A person of ordinary skill in the art would thus have
`
`understood that the claimed “signal” in claim 1 to refer generally to information
`
`conveyed in a communication system, such as a computer network. (Lavian, ¶¶ 49,
`
`51.) The broadest reasonable interpretation of “signal” is therefore “information
`
`conveyed in a communication system.”
`
`This construction is also consistent with relevant dictionary definitions of
`
`“signal.” For example, dictionary definitions of the word “signal” include “[t]he
`
`intelligence, message or effect to be conveyed over a communication system,” “[a]
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,243,723
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`visual, audible or other indication used to convey information,” and similar
`
`definitions. 1 (Ex. 1008, The Authoritative Dictionary of IEEE Standards Terms, 7th
`
`Ed. (2000), at p. 1047; see also Ex. 1009, McGraw-Hill Dictionary of Scientific and
`
`Technical Terms, 5th Ed. (1994), at p. 1823 (“1. A visual, aural, or other indication
`
`used to convey information. 2. The intelligence, message, or effect to be conveyed
`
`over a communication system.”).) These definitions are generally consistent with
`
`the broadest reasonable interpretation identified above. (Lavian, ¶ 53.)
`
`B.
`“node”
`Independent claim 1 recites the step of “monitoring a connectivity status of
`
`nodes within the packet-switched network, said connectivity status being available
`
`and unavailable.” The word “node” (or “nodes”) appears only in claim 1 and does
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`not appear anywhere in the written description of the ’723 patent.
`
`The patent owner in the concurrent litigation involving the ’723 patent has
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`proposed to define “node” as “potential recipient.” (Ex. 1011, Ex. A, at p.4, ¶ 5.)
`
`The Petitioners respectfully request that the Board adopt this definition as the
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`broadest reasonable construction of “node” for purposes of this proceeding.
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`
`1 All highlighting in reproduced figures, and all underlining in any quotations, have
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`been added unless otherwise noted.
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,243,723
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`The written description is generally consistent with this broadest reasonable
`
`construction. A passage of the ’723 written description that pertains to the claimed
`
`monitoring capability describes the ability to determine the connectivity status of
`
`potential recipients using instant voice messaging (IVM) clients:
`
`The user manager 706 is responsible for creating/maintaining IVM
`clients 206, 208, 506, 508, identifying them and relaying their status to
`the server engine 704. 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. When 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 any undelivered instant
`voice messages for the one or more recipients and delivers the instant
`voice messages to the designated one or more IVM recipients.
`
`(’723, 22:41-54.) As noted, this passage does not use the word “node,” but generally
`
`describes the monitoring with respect to potential instant voice messaging (IVM)
`
`recipients. The Board should therefore adopt a broadest reasonable interpretation of
`
`“node” as “potential recipient.”2
`
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`2 The Petitioners reserve their right to argue that “node” is indefinite under the
`
`narrower claim construction standards applicable in the concurrent litigation.
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,243,723
`
`VII. CLAIMS 1-3 ARE UNPATENTABLE
`Claims 1-3 are unpatentable based on the following ground:
`
`Ground Claims
`1
`1-3
`
`Basis for Challenge
`Unpatentable over Zydney (Ex. 1003) in view of Appelman
`(Ex. 1004), under § 103(a)
`
`This Petition will first provide an overview of each reference.
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`A. Brief Summary and Date Qualification of the Prior Art
` Overview of Zydney (Ex. 1003)
`Zydney is a published PCT application that describes a system for voice
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`communication that enables a user to send instant voice messages, which Zydney
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`calls “voice containers.” (Zydney, Ex, 1003, 2:2-3.) The system transmits the voice
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`containers “instantaneously or stored for later delivery,” depending on whether or
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`not the recipient is currently online. (Id., 1:19-22, 15:8-21.) Zydney qualifies as
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`prior art vis-à-vis the ’723 patent under 35 U.S.C. § 102(b) (pre-AIA) because
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`Zydney was published on February 15, 2001, more than one year before the earliest
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`patent application filing date for the ’723 patent.
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`The Petitioners also note that the Zydney reference contains page numbers but
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`does not contain line numbers. Accordingly, for convenience of the Board and ease
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`of reference, Exhibit 1003 to this Petition contains a copy of Zydney in which line
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`numbers have been added to the left of each page (beginning on page 1), to facilitate
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`precise citation to the passages of the reference cited in this Petition. Any citations
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`Petition for Inter Partes Review of
`U.S. Patent No. 8,243,723
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`to line numbers of Zydney in this Petition and in the Lavian Declaration, therefore,
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`refer to these added line numbers as shown in Exhibit 1003. A copy of the original
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`Zydney reference without line numbers is submitted as Exhibit 1006.
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`The system of Zydney is generally shown in Figure 1A, reproduced below.
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`(Zydney, Fig. 1A.)
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`Three key components of the system include the “SENDER PC SOFTWARE
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`AGENT” shown on the left (22), the “RECIPIENT PC SOFTWARE AGENT”
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`Petition for Inter Partes Review of
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`shown on the right (28), and the “CENTRAL SERVER” shown in the middle (24)
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`of Figure 1A. (Id., 10:19-11:1.) Zydney explains that the sender and recipient
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`software agents may work on any suitable client device such as “a personal
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`computer, wireless handheld computer such a personal data assistant (PDA), digital
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`telephone, or beeper.” (Id., 11:14-20.) Central server (24) facilitates instant voice
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`messaging between the sender and the recipient. (Id., 10:20-11:1.) The sender,
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`recipient, and central server communicate with each other using a communications
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`network, as shown with the bottom cloud labeled “INTERNET” in Figure 1A. (Id.,
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`Fig. 1A; see also id., 5:4-5, 5:15-18, 10:11-14, 14:2-5.)3
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`Sending a voice instant message from a sender to a recipient in Zydney is
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`straightforward. A message sender (originator) “selects one or more intended
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`recipients from a list of names that have been previously entered into the software
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`agent.” (Id., 14:17-19.) The sender also “digitally records messages for one or more
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`recipients using a microphone-equipped device and the software agent. The
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`software agent compresses the voice and stores the file temporarily on the PC if the
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`3 Figure 1A also depicts an alternative embodiment in which a sender and recipient
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`can communicate using phones (32, 34) connected over the Public Switched
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`Telephone Network (PSTN). This Petition will focus on the Internet-connected
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`embodiment described in the text.
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`Petition for Inter Partes Review of
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`voice will be delivered as an entire message.” (Id., 16:1-4; see also id., 20:11-14,
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`21:11-16 (describing “the recording of one or more voice packet messages on a
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`personal computer” as “voice files [that] can be played and recorded using voice
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`container enabled devices.”).) The voice message is placed into a “voice
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`container,” which can be transmitted to the destination. (Id., 10:20-11:3.)
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`Zydney describes at least two modes in which voice messages can be
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`transmitted: a “pack and send” mode and an “intercom” mode. This Petition will
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`focus primarily on the “pack and send” mode as it is more pertinent to the challenged
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`claims of the ’723 patent.
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`Zydney explains that “[a] pack and send mode of operation is one in which
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`the message is first acquired, compressed and then stored in a voice container 26
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`which is then sent to its destination(s).” (Id., 11:1-3; see also id., Fig. 4.) The
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`software agent compresses and stores the voice message file, which Zydney refers
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`to as a “voice container,” on the client device. (Id., 16:3-4, 12:1-8, 10:20-11:3.) The
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`sender also can include “multimedia attachments” with the voice message, such as
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`graphics. (Id., 19:2-8, 22:17-20, Fig. 6.) The software agent then transmits the voice
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`container (and any attachments) to either the central server for delivery or,
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`alternatively, directly to the recipient. (Id., 12:1, 12:20-23, 16:7-10.)
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`If the recipient is online, it receives the voice container immediately. (Id.,
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`1:21-22 (“routed to the appropriate recipients instantaneously.”).) If the recipient is
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`offline, the server stores the voice container until the recipient is available, as shown
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`in Figure 4. (Id., 13:12-15, 14:9-11, Fig. 4 (“if recipient is not online, client sends
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`voice container to server file”).) The central server can later forward the stored voice
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`container to the recipient once it logs in. (Id., claim 1, 14:14-16, Fig. 4 (“recipient
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`logs on to internet or intranet,” “server recognizes recipient, downloads voice
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`container”), 16:10-12 (“If the intended recipient has a compatible active software
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`agent on line after log on, the central server downloads the voice recording almost
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`immediately to the recipient.”).)
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`Once the recipient’s software agent receives the voice container, it unpacks
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`the voice container and any attachments, and presents them to the recipient. (Id.,
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`Fig. 18, 35:20-22.) The software agent can then audibly play the voice message to
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`the recipient through the speakers or headset attached to the device. (Id., 13:19-22,
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`14:14-16, 16:10-14.)
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` Overview of Appelman (Ex. 1004)
`Appelman, entitled “User Definable On-Line Co-User Lists,” is an issued
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`United States patent, originally assigned to America Online, describing an instant
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`messaging system that keeps track of the logon status of users.4 (Appelman, Ex.
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`1004, Abstract.) This Petition cites Appelman for its teachings regarding a “a list of
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`4 Appelman is currently assigned to Petitioner Facebook, Inc.
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`Petition for Inter Partes Review of
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`the recorded connectivity status for each of the nodes,” recited in claim 1. Appelman
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`qualifies as prior art to the ’723 patent under 35 U.S.C. § 102(e) (pre-AIA) because
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`it issued from an application filed in the United States on February 24, 1997, which
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`is before the earliest patent application filing date for the ’723 patent.
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`Appelman describes a technique for allowing a user to create a list of users
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`called a “Buddy List,” which records the names of selected other co-users with
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`whom the user may wish to communicate. (Id., 1:53-59, Fig. 3.) The buddy list also
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`keeps track of whether the other co-users are currently logged onto the system.
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`“When a user logs on to a system, the user’s set of buddy lists is presented to the
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`buddy list system. The buddy list system attempts to match co-users currently
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`logged into the system with the entries on the user’s buddy list. Any matches are
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`displayed to the user. As co-users logon and logoff, a user’s buddy list is updated to
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`reflect these changes.” (Id., 1:64-2:2; see also id., 2:51-3:6.)
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`Figure 2a of Appelman, reproduced below, shows an example Buddy List
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`table 32 that records the screen name of each “buddy” user as well as the connectivity
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`status of each user (whether the user is logged “in” or logged “out”).
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`(Appelman, Fig. 2a.) Appelman explains that each user can create different buddy
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`lists. (Id., 3:61-64.) In the example above, the user has created two buddy lists
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`(“Home List” and “Work List”). The buddy list called “Home List” contains the
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`name/address and logon status for three users: “John Smith,” “Jane Doe” and
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`“Simon Roe.” (Id., Fig. 2a, 3:41-47.) For each user, the table indicates either “IN”
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`to indicate that the user is curre