`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
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`
`
`FACEBOOK, INC., WHATSAPP INC.,
`Petitioner
`
`v.
`
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owners
`
`
`
`
`
`
`
`
`IPR2017-01365
`PATENT 8,243,723
`
`
`
`
`
`
`
`
`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
`
`
`
`
`
`
`

`

`
`I.
`II.
`
`B.
`
`a.
`
`IPR2017-1365
`U.S. Patent 8,243,723
`
`Table of Contents
`
`1
`1
`1
`2
`4
`
`4
`5
`6
`7
`
`9
`
`10
`
`13
`
`15
`18
`
`19
`
`INTRODUCTION
`THE ʼ723 PATENT
`A.
`Effective Filing Date of the ʼ723 Patent
`B.
`Overview of the ʼ723 Patent
`III. RELATED MATTERS
`IV. NO REASONABLE LIKELIHOOD THAT AT LEAST ONE OF
`THE CHALLENGED CLAIMS IS UNPATENTABLE
`A.
`Claim Construction
`1.
`“Signal”
`2.
`“Node”
`Independent Claim 1 is Not Obvious Over Zydney in View of
`Appelman
`No prima facie obviousness for “associating a sub-set of
`the nodes with a client” and “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”
`No prima facie obviousness for “transmitting a signal to
`a client”
`The Petition’s asserted combination of Zydney and
`Appelman would render Zydney unsatisfactory for an
`intended purpose explicitly stated in Zydney
`Claim 2 is Not Obvious
`1.
`Zydney does not disclose or suggest “wherein the instant
`voice message includes one or more files attached to an
`audio file”
`
`2.
`
`3.
`
`C.
`
`ii
`
`

`

`V.
`
`
`
`2.
`
`IPR2017-1365
`U.S. Patent 8,243,723
`Zydney teaches away from “wherein the instant voice
`message includes one or more files attached to an audio
`file”
`Claim 3 is Not Obvious
`D.
`CONCLUSION
`
`20
`21
`23
`
`
`
`iii
`
`

`

`IPR20 1 7-13 65
`
`US. Patent 8,243,723
`
`List of Exhibits
`
`Exhibit No.
`m Declaration of Dr. Val DiEuliis
`Excerpts from The American Heritage Dictionm (Houghton
`
`Mifflin C 0. 3rd Ed. 1992
`
`2003
`
`Excerpts from McGraw-Hill Dictionag of Scientific and
`Technical Terms (McGraw—Hill, Inc. 5th ed. 1994)
`
`iv
`
`

`

`IPR2017-1365
`U.S. Patent 8,243,723
`
`I.
`
`INTRODUCTION
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107(a), Uniloc USA, Inc. and
`
`Uniloc Luxembourg S.A. (“Patent Owner”) submit this Preliminary Response to the
`
`Petition for Inter Partes Review (“the Petition” or “Pet.”) of U.S. Patent No.
`
`8,243,723 (“the ʼ723 Patent”) filed by FACEBOOK, INC. and WHATSAPP INC.
`
`(“Petitioner”).
`
`In view of the reasons presented herein, the Board should deny the Petition in
`
`its entirety for failing to show a reasonable likelihood that at least one challenged
`
`claim is unpatentable. As a general overview, the Petition asserts a dual-reference
`
`obviousness challenge against three challenged claims. These challenges fail to
`
`satisfy the All Elements Rule. Petitioner impermissibly attempts to fill in missing
`
`limitations, at least in part, by offering claim interpretations that are expressly
`
`proscribed by the unambiguous claim language. There are also several reasons why
`
`the references cannot and should not be combined as the Petition suggests. The
`
`Petition’s approaches invite reversible error and should be rejected outright.
`
`II. THE ʼ723 PATENT
`A. Effective Filing Date of the ʼ723 Patent
`
`The ʼ723 Patent is titled “SYSTEM AND METHOD FOR INSTANT VOIP
`
`MESSAGING.” EX1001. The ʼ723 Patent issued from U.S. Patent Application No.
`
`1
`
`

`

`IPR2017-1365
`U.S. Patent 8,243,723
`12/398,063, which is a continuation of U.S. Patent No. 7,535,890, filed on Dec. 18,
`
`2003. The ʼ723 Patent issued on August 13, 2012.
`
`B. Overview of the ʼ723 Patent
`
`The ʼ723 Patent notes that conventional circuit-switched communications
`
`enabled traditional telephony yet had a variety of technical disadvantages that
`
`limited developing other forms of communication over such networks. According to
`
`the ʼ723 Patent, “[c]ircuit switching provides a communication path (i.e., dedicated
`
`circuit) for a telephone call from the telephone terminal to another device 20 over
`
`the [public switched telephone network or] PSTN, including another telephone
`
`terminal. During the telephone call, voice communication takes place over that
`
`communication path.” (EX1001, 1:25–30.)
`
`The ʼ723 Patent expressly distinguishes circuit-switched networks from
`
`packet-switched networks (e.g., the Internet) at least in that the latter routes
`
`packetized digital information, such as “Voice over Internet Protocol (i.e., ‘VoIP’),
`
`also known as IP telephony or Internet telephony.” (1:31–33.) Because legacy
`
`circuit-switched devices were unable to communicate directly over packet-switched
`
`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. (1:61–
`
`2:17.) The conversion effected by media gateways highlights the fact that packetized
`
`2
`
`

`

`IPR2017-1365
`U.S. Patent 8,243,723
`data carried over packet-switched networks are different from and are incompatible
`
`with an audio signal carried over a dedicated packet-switched circuit. (1:25–30.)
`
`The ʼ723 Patent further notes that, notwithstanding the advent of instant text
`
`messages, at the time of the claimed invention there was no similarly convenient
`
`analog to leaving an instant voice message over a packet-switched network. (2:18–
`
`50.) Rather, “conventionally, leaving a voice message involves dialing the
`
`recipient’s telephone number (often without knowing whether the recipient will
`
`answer), waiting for the connection to be established, speaking to an operator or
`
`navigating through a menu of options, listening to a greeting message, and recording
`
`the message for later pickup by the recipient. In that message, the user must typically
`
`identify himself or herself in order for the recipient to return the call.” (2:22–29.)
`
`In certain disclosed aspects ʼ723 Patent discloses that a user-accessible client
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`is configured for instant voice message (“IVM”) and for direct communication over
`
`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[]
`
`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
`
`local IVM server 202.” EX1001, 8:4–18, FIG. 2.
`
`3
`
`

`

`IPR2017-1365
`U.S. Patent 8,243,723
`
`III. RELATED MATTERS
`Petitioner has initiated the following six Inter Partes Reviews on patents in
`
`this family. This is one of six Preliminary Responses being filed by Patent Owner.
`
`IPR
`IPR2017-1257
`IPR2017-1365
`IPR2017-1427
`IPR2017-1428
`IPR2017-1523
`IPR2017-1524
`
`Patent Challenged
`8,199,747
`8,243,723
`8,995,433
`8,995,433
`7,535,890
`7,535,890
`
`
`
`IV. NO REASONABLE LIKELIHOOD THAT AT LEAST ONE OF THE
`CHALLENGED CLAIMS IS UNPATENTABLE
`Petitioner has the burden of proof to establish they are entitled to their
`
`requested relief. 37 C.F.R. § 42.108(c). Because the Petition only presents theories
`
`of obviousness, Petitioner must demonstrate a reasonable likelihood that at least one
`
`of the challenged patent claims would have been obvious in view of the art cited in
`
`the Petition. Petitioner fails to meet this burden and the Petition should, therefore,
`
`be denied.1
`
`
`1 While certain deficiencies in the Petition are addressed here, Patent Owner reserves
`the right to address other deficiencies of the Petition in a full Response if an inter
`partes review is instituted.
`
`4
`
`

`

`A. Claim Construction 2
`
`IPR2017-1365
`U.S. Patent 8,243,723
`
`Claim 1 recites “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.” Petitioner argues the broadest reasonable construction of “signal”
`
`is “information conveyed in a communication system” (Pet., 8) and asks the
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`Board to construe the “node” as “potential recipient.” (Pet., 10).
`
`Patent Owner submits that explicit claim construction is unnecessary
`
`because Petitioner has failed to show that the claim terms require an express
`
`construction to resolve the issues presented by the patentability challenges. See
`
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)
`
`(holding that only claim terms that “are in controversy” need to be construed and
`
`“only to the extent necessary to resolve the controversy”).
`
`Patent Owner requests that the Board adopt the broadest reasonable
`
`construction consistent with the ordinary and customary meaning of the
`
`challenged claims and with the specification as a whole. Under the broadest
`
`reasonable interpretation standard used by the Board, claim terms carry their
`
`
`2 The standard for claim construction at the Patent Office is different from that used
`during a U.S. district court litigation for non-expired patents. See In re Am. Acad. of
`Sci. Tech Ctr., 367 F.3d 1359, 1364, 1369 (Fed. Cir. 2004). Uniloc expressly
`reserves the right to dispute Petitioner’s proposed constructions if the Board
`institutes trial. Patent Owner’s present silence with respect to any construction
`proffered by Petitioner is not to be taken as a concession that the construction is
`correct.
`
`5
`
`

`

`IPR2017-1365
`U.S. Patent 8,243,723
`ordinary and customary meaning, as would be understood by one of ordinary skill
`
`in the art in the context of the entire disclosure. See In re Translogic Tech., Inc., 504
`
`F.3d 1249, 1257 (Fed. Cir. 2007); see also Cuozzo Speed Techs., LLC v. Lee, 136 S.
`
`Ct. 2131, 2144–46 (2016) (upholding the use in IPRs of the broadest reasonable
`
`interpretation).
`
`1.
`
`“Signal”
`
`Alternatively, if the Board is to explicitly construe “signal,” the Board
`
`should also reject Petitioner’s construction. By construing “signal” as
`
`“information conveyed in a communication system,” Petitioner ignores that a
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`“signal” involves a physical, measurable quantity, such as an electrical, optical,
`
`or electromagnetic quantity. EX2001, ¶ 47–53.
`
`To support their construction, Petitioner cites the specification’s use of the
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`terms “audio signal carried over PSTN,” “send signal [transmitted] to the local IVM
`
`server,” “stop signal [that] is generated when the user presses a button,” and a server
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`“signal[ing] the IVM client 208 a client to generate audio file 210.” Pet., 8–9.
`
`However, these citations do not support the Petitioner’s construction.
`
`An audio signal carried over a PSTN is an electrical, optical, or
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`electromagnetic wave signal carried over telephone wires, fiber optic cables, or the
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`air. EX2001, ¶ 48. Petitioner’s citation to a “stop signal” is irrelevant, because the
`
`stop signal is internal to a device and not transmitted over a network. Id. The “send
`
`6
`
`

`

`IPR2017-1365
`U.S. Patent 8,243,723
`signal” and the “signaling” of the IVM client both refer to physical signals, such as
`
`electrical, optical, or electromagnetic wave signals. Id.
`
`Petitioner’s citation to dictionary definitions are also misleading. The Petition
`
`cites only a selected subset of definitions from The Authoritative Dictionary of IEEE
`
`Standards Terms, 7th Edition (2000), EX1008. Several uncited definitions from that
`
`dictionary support interpretation that “signal” involves a physical, measurable
`
`quantity, such as an electrical, optical, or electromagnetic quantity. EX2001, ¶¶ 50–
`
`51. Similarly, the Petition’s citation to the McGraw-Hill Dictionary of Scientific and
`
`Technical Terms, EX1009, includes an uncited reference to “signal wave,” which is
`
`defined as “[a] wave whose characteristics permit some intelligence, message, or
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`effect to be conveyed. Also known as signal.” EX2001 ¶ 52 (citing EX2003 at 3).
`
`For these reasons, the Board should reject Petitioner’s proffered construction
`
`of “signal” as “information conveyed in a communication system.”
`
`2.
`
`“Node”
`
`The term “node” occurs only in one of the challenged claims, Claim 1. The
`
`Petition seeks to construe “node” to mean “potential recipient.” Pet., 10–11. The
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`Petition further interprets “recipient” to mean a software agent (when discussing
`
`Zydney) and to mean a person (when discussing Appelman). E.g., Id. at 28–29
`
`(Zydney), 36–38 (Appelman).
`
`7
`
`

`

`IPR2017-1365
`U.S. Patent 8,243,723
`For example, for the claim limitation “associating a subset of the nodes with
`
`a client,” Petitioner cites to a passage in Zydney that states: “The server will maintain
`
`a unique set of lists for each software agent. These lists will contain the identifiers
`
`of the other software agents that are permitted to send and receive voice containers
`
`and other media types.” Id. at 26:10-15. Petitioner then asserts that Table 32 of
`
`Appelman discloses “a list of the recorded connectivity status for each of the nodes
`
`in the sub-set corresponding to the client.” Id. at 17–18. However, Table 32 of
`
`Appelman is a table that lists names (e.g., “John Smith,” “Jane Doe,” and “Simon
`
`Roe”). EX1004, FIG. 2A.
`
`If a “node” is a person, the claimed connectivity statuses of “available” and
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`“unavailable” would refer to alternative statuses of a person, as opposed to the
`
`person’s device. Setting aside the issue of whether Petitioner’s personification of the
`
`term “node” is consistent with the intrinsic evidence,3 Petitioner overlooks an
`
`important 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
`
`
`3 The ʼ723 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) . . . .”).
`
`8
`
`

`

`IPR2017-1365
`U.S. Patent 8,243,723
`communication device. For example, a person may inform a system that they are
`
`“unavailable” and do not wish to be disturbed during resting hours, regardless of
`
`whether their smartphone is online during that time.
`
`In addition, Petitioner fails to cite any disclosure in the ’723 Patent for the
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`proposition that a “node” can be a software agent. Instead, Petitioner relies solely on
`
`Zydney to support this construction. EX2001, ¶¶ 56–57. As Dr. DiEuliis testifies, a
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`POSITA would not interpret a “node” to be a software agent, but rather a device. It
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`is therefore clear from the disclosure of the ʼ723 Patent that the term “node” cannot
`
`be construed as a software agent or a person. EX2001, ¶¶ 29–33, ¶¶54–60.
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`Petitioner’s reliance on these impermissible constructions for the term “node” as a
`
`software agent or a person is reason alone to dismiss the Petition for all claims.
`
`However, even if the Board adopts Petitioner’s proposed constructions, Petitioner
`
`fails to establish a prima facie case of obviousness for any of the challenged claims,
`
`as explained further below.
`
`B. Independent Claim 1 is Not Obvious Over Zydney in View of
`Appelman
`
`As explained below, there are several independent reasons that Petitioner fails
`
`to show independent Claim 1 is obvious in view of Zydney and Appelman. As all of
`
`the other challenged claims (Claims 2–3), depend from Claim 1, each of the
`
`following is an independent reason to dismiss the Petition in its entirety.
`
`9
`
`

`

`a.
`
`IPR2017-1365
`U.S. Patent 8,243,723
`No prima facie obviousness for “associating a sub-set
`of the nodes with a client” and “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”
`Among other elements, Claim 1 recites the following:
`
`associating a sub-set of the nodes with a client [Claim 1c];
`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 1d];
`EX1001, 24:1–8 (emphasis added). For convenience, the Petition’s labeling
`
`of these limitations as Claim 1c and Claim 1d is used herein.
`
`Because Claim 1d refers to “the nodes in the sub-set of nodes,” they must be
`
`the same sub-set of nodes referred to in Claim 1c. But the alleged “sub-sets” of
`
`nodes in Zydney that Petitioner argues for Claims 1c and 1d refer to completely
`
`different sub-sets (to the extent they refer to sub-sets at all).4,5 Petitioner argues
`
`
`4 Petitioner cites Zydney alone for Claim 1c and the portions of Claim 1d relevant
`here. Pet., 28–33. Petitioner cites Appelman for Claim 1d only in regard to
`connectivity statuses being allegedly transmitted in a “list.” Pet., 33.
`5 Petitioner’s strategy of begrudgingly acknowledging a defect in Zydney but then
`immediately undoing that concession by arguing in the alternative that “to the
`extent it is determined that Zydney alone does not render obvious transmission of
`recorded connectivity status in a ‘list,’ that requirement is obvious over Zydney in
`view of Appelman” is impermissible vertical redundancy. Pet., 33 (emphasis
`added, original emphasis removed). When multiple references are applied both in
`partial and full combination, “[t]here must be an explanation of why the reliance in
`part may be the stronger assertion as applied in certain instances and why the
`reliance in whole may also be the stronger assertion in other instances.” Liberty
`Mut. Ins. Co. v. Progressive Cas. Ins. Co., No. CBM2012-00003 (P.T.A.B. Oct.
`25, 2012), Paper 7 at 3 (emphasis in original). Here, Petitioner has not explained
`
`10
`
`

`

`IPR2017-1365
`U.S. Patent 8,243,723
`Claim 1c is met where Zydney describes that the server maintains a unique set of
`
`lists for a software agent containing “the identifiers of other software agents that are
`
`permitted to send or receive voice containers and other media types” (referred to
`
`herein as the “first alleged sub-set”). Pet., 28–29; EX1003, 26:10–15. However,
`
`Petitioner then argues Claim 1d is met by Zydney where “the status of all recipients
`
`entered into the software agent is frequently conveyed to the software agent by the
`
`central server” (referred to here as the “second alleged sub-set”). Pet., 30; EX1003,
`
`14:20–22.
`
`Zydney describes the first alleged sub-set as being “lists” kept by the server
`
`that contain “identifiers of other software agents that are permitted to send and
`
`receive,” EX1003, 26:10–12, whereas it describes the second alleged sub-set as
`
`“recipients entered into the software agent,” id. at 14:20–22. Zydney states, regarding
`
`lists managed by the server, that the server “[m]anage[s] the address lists used by all
`
`software agents, including addresses (1) open to all users, (2) created by users for
`
`reasons of anonymity, (3) groups available only to select software agents and (4)
`
`
`why its implicit reliance on Zydney alone may be the strong assertion as applied in
`certain instances and why the reliance on Zydney as modified by Appelman may
`also be the strong assertion in other instances. Instead, the Petition suggests that if
`the Board deem Zydney alone defective as applied to Claim 1, then Appelman
`offered in vertically redundant fashion cures any such defect. This impermissibly
`shifts the burden onto the Patent Owner to prove that Zydney alone does not
`disclose or suggest the elements of Claim 1, and then also address the Petitioner’s
`asserted combination of Zydney and Appelman for Claim 1.
`
`11
`
`

`

`IPR2017-1365
`U.S. Patent 8,243,723
`personal profile lists that allow matching of individuals with similar interests.”
`
`EX1003, FIG. 8 at 1.2.1. Regarding recipients that are entered into a software agent,
`
`FIG. 5 (“User enters destination address”), FIG. 6 (“User enters name of
`
`individual”), and FIG. 10 (“Entering coding information that defines target
`
`recipients”) of Zydney all teach that these are recipients that the user entered during
`
`the process of communicating with those recipients.
`
`Thus, the first alleged sub-set cannot be the same as the second alleged sub-
`
`set, because the former describes a server-side “white list” of other software agents,
`
`while the latter describes, on the software-agent-side, recipients that a user manually
`
`entered and sent messages to. EX2001, ¶ 100. Additionally, the second alleged sub-
`
`set cannot be the same as the first alleged sub-set, because the server expressly
`
`manages the second alleged sub-set while the user expressly manages the first
`
`alleged sub-set. Id.; see also Zydney, FIG. 7 (illustrating “selecting one or more
`
`recipients from a list maintained by the originator” (emphasis added)).
`
`Thus, because the Petitioner’s argument violates the plain language of
`
`Claim 1, which requires that the “sub-set” in Claim 1c be the same as the “sub-set”
`
`in Claim 1d, Petitioner fails to establish a prima facie case of obviousness for the
`
`“associating a sub-set of the nodes with a client” and the “transmitting a signal to a
`
`client including a list of the recorded connectivity status for each of the nodes in the
`
`12
`
`

`

`IPR2017-1365
`U.S. Patent 8,243,723
`sub-set corresponding to the client” limitations of Claim 1. For this reason alone,
`
`the Petition should be denied in its entirety.
`
`In addition, Petitioner argues that “each software agent is installed on a
`
`specific client device and the server will ‘maintain the current list of agents’ and
`
`‘create, delete, and modify those lists,’ thereby associating the nodes with the client
`
`device including its software agent.” Pet., 29. Petitioner argues that this maintenance
`
`serves to associate “the nodes with the client device including its software agent.”
`
`Id. at 29. However, Claim 1 recites that the associating is between an individual
`
`client and multiple nodes (“the recorded connectivity status for each of the nodes in
`
`the sub-set”). EX2001, ¶¶ 86–92. Petitioner’s cited portions of Zydney simply do not
`
`support such a teaching even under Petitioner’s own construction. Id. ¶ 90. For this
`
`additional and independent reason, the Petition should be denied in its entirety.
`
`2.
`No prima facie obviousness for “transmitting a signal to a client”
`As explained above in Section IV.A.1, Petitioner’s proposed construction of
`
`“signal” ignores that a signal involves a physical, measurable quantity, such as an
`
`electrical, optical, or electromagnetic quantity. EX2001, ¶ 47–53. Petitioner fails
`
`to show transmission of a signal, as properly construed, to a client.
`
`As an initial matter, Petitioner states that “Zydney further discloses that the
`
`server periodically sends these connectivity statuses to the originating (sending)
`
`user”. Pet., 30, emphasis added. The claimed client is not a person. EX2001, ¶ 96.
`
`13
`
`

`

`IPR2017-1365
`U.S. Patent 8,243,723
`Moreover, there is no explanation in the Petition regarding how a signal, as properly
`
`construed, is transmitted to a client. Instead, the Petition relies on vague recitations
`
`in Zydney regarding communication to a software agent. Pet., 30; EX2001, ¶ 97. The
`
`Petition therefore fails to make a prima facie case for “transmitting a signal to the
`
`client,” as recited in Claim 1.
`
`Appelman does not cure this deficiency, at least because the Petitioner’s
`
`reliance on Appelman fails to show the requisite transmission at all. Appelman
`
`discloses that a user inputs the buddies that are listed on the user’s buddy list(s). Pet.,
`
`34 (“Users in Appelman can create buddy lists by entering users into a list, such as
`
`by using the interface shown in Figure 5. (Id., Fig. 5, 4:54-63.)”); EX2001, ¶ 77. The
`
`buddy list entered by the user is sent to a Buddy List System that is distinct from and
`
`external to the user’s station. When a user first logs on, the buddy list is provided by
`
`the user’s station to the Buddy List System (at this point in the process, the logon
`
`status of individual entries in the buddy list is not known). EX1004, 6:58–60, FIG. 1;
`
`EX2001, ¶ 79. This Buddy List System is distinct from and external to the user’s
`
`station. EX1004, FIG. 1, FIG. 11. The entries of the buddy list are then compared
`
`to records at a Logon System to determine which of the users in the buddy list(s) are
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`online and offline. EX1004, 6:60–62; EX2001, ¶ 79. This may be achieved by
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`passing individual records from the Logon System to the Buddy List system.
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`EX1004, 6:61–64. The separately-obtained information is then compiled together
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`to “display” a Buddy List window showing the statuses. EX1004, 6:66–7:2;
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`EX2001, ¶ 79. Subsequent updates are likewise provided on a per-buddy basis: “the
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`Logon System may maintain a copy of a User’s Buddy Lists, and notify the Buddy
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`List System only upon a logon status change for a co-user [in the singular] on the
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`User’s Buddy Lists.” EX1004, 7:7–10; EX2001, ¶ 79.
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`The Buddy List window that the Buddy List System causes to be displayed is
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`not a transmitted list. The Petition and the testimony cited therein gloss over the
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`process disclosed in Appelman and merely point to the result: a window showing
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`individually-compiled IN/OUT status information. Though the Buddy List window
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`may be “displayed,” Petitioner provides no explanation and cites to no teaching in
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`Appelman that the displayed Buddy List window is a transmitted list that includes
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`connectivity statuses. EX2001, ¶¶ 102–105.
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`Petitioner therefore fails to present prima facie evidence of obviousness for
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`the “transmitting a signal to a client” limitation of Claim 1. For this additional and
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`independent reason, the Board should deny the Petition in its entirety.
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`3.
`
`The Petition’s asserted combination of Zydney and Appelman
`would render Zydney unsatisfactory for an intended purpose
`explicitly stated in Zydney
`Appelman clearly states that only online buddies can be selected for instant
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`messaging and that the offline buddies, while perhaps displayed in the Buddy List
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`window, are not available for instant messaging while they are offline. EX1004, 6:2–
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`U.S. Patent 8,243,723
`5 (“Once a co-user is displayed on a user's buddy list, indicating that the co-user is
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`currently logged into the network system, the preferred embodiment of the invention
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`enables a simple way of communicating with that co-user.” (emphases added));
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`EX2001, ¶ 106–107.
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`The Petition proffers a combination of Zydney and Appelman in which the
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`entire Buddy List System of Appelman is added to Zydney, so that the buddy list
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`displayed by Zydney is the buddy list of Appelman: “[a] person of ordinary skill in
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`the art would also have readily appreciated Appelman’s motivation to use its buddy
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`list system with Zydney to provide a convenient and straightforward interface for
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`users to view the online/offline status of users.” Pet., 40 (citing EX1002, ¶ 111)
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`(emphasis added).
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`If the Buddy List System of Appelman is added to Zydney and the buddy list
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`displayed by Zydney becomes the buddy list of Appelman, it would not be possible
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`to select an unavailable buddy as a recipient of a voice message. See EX2001,
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`¶¶ 106–107. However, it is an intended purpose of Zydney to support the
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`communication of voice containers to recipients regardless of whether those
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`recipients are available or unavailable at the time the voice container is created.
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`EX2001, ¶¶ 109–110. Zydney explicitly states that it allows unavailable recipients
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`to be selected and stores the voice messages for such recipients. “The present
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`invention for voice exchange and voice distribution provides the ability to store
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`messages both locally and centrally at the server whenever the recipient is not
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`available”. EX1003, 2:3–5 (emphases added). “To use the present invention system
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`and method for voice exchange and voice distribution, the originator selects one or
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`more intended recipients from a list of names that have been previously entered into
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`the software agent. The agent permits a number of distinct modes of communication
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`based on the status of the recipient. The status of all recipients entered into the
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`software agent is frequently conveyed to the software agent by the central server.
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`This includes whether the core states of whether the recipient is online or offline”.
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`EX1003, 14:17–23.
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`Thus, the Petitioner’s proposed combination of Zydney and Appelman renders
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`Zydney unsatisfactory for an intended purpose. EX2001, ¶¶ 109–110. Several
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`operations of Zydney would cease to make sense under the Petitioner’s proposed
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`combination. Id. Examples of such operations include: temporary storage of voice
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`containers for unavailable recipients (EX1003 at 2:3–5), downloading voice
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`containers to the unavailable recipients when they log in (EX1003 at 16:15–19), and
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`permitting different modes of communication depending on whether recipients are
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`online or offline (EX1003 at 14:17–23).
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`If a proposed modification to a prior art invention renders that invention
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`unsatisfactory for its intended purpose, then there is no suggestion or motivation to
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`make the proposed modification. See In re Gordon, 733 F.2d 900 (Fed. Cir. 1984).
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`The asserted combination of Zydney and Appelman would render Zydney’s system
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`unsatisfactory for an intended purpose. EX2001, ¶¶ 109–110. Moreover, “[a]n
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`obviousness determination requires finding both ‘that a skilled artisan would have
`
`been motivated to combine the teachings of the prior art . . . and that the skilled
`
`artisan would have had a reasonable expectation of success in doing so.’” In re:
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`Stepan Co., Case No. 2016-1811 (Fed. Cir. Aug. 25, 2017), slip op. at 5 (citing
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`Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed.
`
`Cir. 2016)) (emphasis added). Here, not only is there no reasonable expectation of
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`success, but there is an express indication that the combination will fail because a
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`user would no longer be able to select and send a voice message to an offline buddy
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`on the buddy list.
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`Petitioner’s proposed combination of Zydney and Appelman is therefore
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`improper and cannot support a prima facie case of obviousness for Claim 1. For
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`these additional reasons, the Petition should be denied in its entirety.
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`C. Claim 2 is Not Obvious
`
`It is axiomatic that a dependent claim cannot have been rendered obvious if
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`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
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`independent claims from which they depend are nonobvious.”). Dependent Claim 2,
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`which depends from Claim 1, is therefore not obvious. In addition, Claim 2 is not
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`obvious for at least the following independent reasons.
`
`1.
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`Zydney does not disclose or suggest “wherein the instant voice
`message includes one or more files attached to an audio file”
`The Petition also fails with respect to Claim 2 at because Zydney does not
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`disclose or suggest the element “wherein the instant voice message includes one or
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`more files attached to an audio file.” The Petition argues this element is met by the
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`Zydney “voice container” (Pet., 52–55), but as the Petition itself acknowledges, the
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`“voice container” in Zydney is not the audio file and is instead “an object that
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`contains voice data.” See Pet., 56 (citing Zydney). Zydney’s description of attaching
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`additional files (other than the digitally-recorded voice message file) to the voice
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`container is therefore inapposite, because the claim language requires that the one
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`or more files be attached to the audio file, not to a distinct container for that audio
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`file. EX2001, ¶ 111.
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`Petitioner’s attempts to explain away this fatal flaw in Zydney by referencing
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`Zydney’s description of