Trials@uspto.gov
`571-272-7822
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` Paper 8
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` Entered: December 4, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC. and WHATSAPP INC.,
`Petitioner,
`v.
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01365
`Patent 8,243,723 B2
`____________
`
`
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`571-272-7822
`
`
`
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`
`
`
`
` Paper 8
`
`
`
`
` Entered: December 4, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC. and WHATSAPP INC.,
`Petitioner,
`v.
`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01365
`Patent 8,243,723 B2
`____________
`
`
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`IPR2017-01365
`Patent 8,243,723 B2
`
`
`INTRODUCTION
`I.
`The above-captioned Petitioner (Facebook, Inc. and WhatsApp Inc.)
`filed a Petition requesting inter partes review of claims 1−3 of U.S. Patent
`No. 8,243,723 B2 (Ex. 1001, “the ’723 patent”). Paper 2 (“Pet.”). Uniloc
`USA, Inc. and Uniloc Luxembourg S.A. (“Patent Owner”) filed a
`Preliminary Response. Paper 7 (“Prelim. Resp.”).
`We have jurisdiction under 35 U.S.C. § 314. Upon considering the
`record developed thus far, for reasons discussed below, we do not institute
`inter partes review.
`
`A. Related Matters
`The parties indicate that the ’723 patent is involved in Uniloc USA,
`Inc. v. Facebook, Inc. and Uniloc USA, Inc. v. WhatsApp Inc., Case Nos.
`2-16-cv-00728-JRG (E.D. Tex.) and 2:16-cv-00645-JRG (E.D. Tex.).
`Pet. 1. The ’723 patent also is the subject of Case IPR2017-00222 (filed by
`Apple Inc.), in which we instituted inter partes review on May 25, 2016.
`Pet. 75–77; Paper 6. The Petitioner here additionally filed a Petition and
`Motion seeking joinder with IPR2017-00222, both of which were granted,
`and Petitioner has been joined with Apple in IPR2017-00222. See Case
`IPR2017-01635, Paper 10 (PTAB Oct. 3, 2017).
`
`B. The ’723 Patent
`The ’723 patent relates to Internet telephony, and more particularly, to
`instant voice over IP (“VoIP”) messaging over an IP network, such as the
`Internet. Ex. 1001, 1:14−17. The ’723 patent acknowledges that “instant
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`Patent 8,243,723 B2
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`text messaging is [] known” in the VoIP and public switched telephone
`network (“PSTN”) environments, with its server presenting the user a “list
`of persons who are currently ‘online’ and ready to receive text messages on
`their own client terminals.” Id. at 2:19, 30−37. In one embodiment, such as
`depicted in Figure 2 (reproduced below), the system of the ’723 patent
`involves an instant voice message (“IVM”) server and IVM clients. Id. at
`7:19−24.
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`Patent 8,243,723 B2
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`Figure 2 illustrates IVM client 206 interconnected via network 204 to
`local IVM server 202, where IVM client 206 is a VoIP telephone, and where
`legacy telephone 110 is connected to legacy switch 112 and further to media
`gateway 114. Id. at 7:19−41. The media gateway converts the PSTN audio
`signal to packets for transmission over a packet-switched IP network, such
`as local network 204. Id. at 7:45−48. In one embodiment, when in “record
`mode,” the user of an IVM client selects one or more IVM recipients from a
`list. Id. at 7:53−64. The IVM client listens to the input audio device and
`records the user’s speech into a digitized audio file at the IVM client. Id. at
`8:1−7. “Once the recording of the user’s speech is finalized, IVM client 208
`generates a send signal indicating that the digitized audio file 210 (instant
`voice message) is ready to be sent to the selected recipients.” Id. at 8:11−14.
`The IVM client transmits the digitized audio file to the local IVM server,
`which, thereafter, delivers that transmitted instant voice message to the
`selected recipients via the local IP network. Id. at 8:1−25. Only the
`available IVM recipients, currently connected to the IVM server, will
`receive the instant voice message. Id. at 8:28−30. If a recipient “is not
`currently connected to the local IVM server 202,” the IVM server
`temporarily saves the instant voice message and delivers it to the IVM client
`when the IVM client connects to the local IVM server (i.e., is available). Id.
`at 8:30−35.
`The ’723 patent also describes an “intercom mode” of voice
`messaging. Id. at 11:26−29. The specification states that the “intercom
`mode” represents real-time instant voice messaging. Id. at 11:29−30. In this
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`Patent 8,243,723 B2
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`mode, instead of creating an audio file, one or more buffers of a
`predetermined size are generated in the IVM clients or local IVM servers.
`Id. at 11:30−33. Successive portions of the instant voice message are
`written to the one or more buffers, which, as they fill, automatically transmit
`their content to the IVM server for transmission to the one or more IVM
`recipients. Id. at 11:35–43. Buffering is repeated until the entire instant
`voice message has been transmitted to the IVM server. Id. at 11:48−52.
`
`C. Illustrative Claim
`Of the challenged claims, claim 1 is independent and is reproduced
`below. Each of claims 2 and 3 depends directly from claim 1.
`1. A method for instant voice messaging over a packet-switched
`network, the method comprising:
`the
`monitoring a connectivity status of nodes within
`packet-switched network, said connectivity status being
`available and unavailable;
`recording the connectivity status for each of the nodes;
`associating a sub-set of the nodes with a client;
`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;
`receiving an instant voice message having one or more
`recipients;
`delivering the instant voice message to the one or more recipients
`over a packet-switched network;
`temporarily storing the instant voice message if a recipient is
`unavailable; and
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`Patent 8,243,723 B2
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`delivering the stored instant voice message to the recipient once
`the recipient becomes available.
`Ex. 1001, 23:55–24:16.
`
`D. Asserted Prior Art and Grounds of Unpatentability
`This proceeding relies on the following prior art references:
`
`a) Zydney: PCT App. Pub. No. WO 01/11824 A2, published Feb. 15,
`2001, filed in the record as Exhibit 1003 (with line numbers added
`by Petitioner); and
`
`b) Appelman: U.S. Patent No. US 6,750,881 B1, issued June 15,
`2004, filed in the record as Exhibit 1004.
`
`Petitioner asserts one ground of unpatentability (Pet. 4):
`
`Challenged
`Claim(s)
`1−3
`
`Basis
`
`Reference(s)
`
`§ 103(a)
`
`Zydney and Appelman
`
`Petitioner also relies on a Declaration of Tal Lavian, Ph.D., filed as
`Exhibit 1002.
`
`II. DISCUSSION
`A. Claim Construction
`In an inter partes review, claim terms in an unexpired patent are given
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the
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`Patent 8,243,723 B2
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`broadest reasonable interpretation standard as the claim interpretation
`standard to be applied in inter partes reviews). Under the broadest
`reasonable interpretation standard, claim terms generally are given their
`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). We note that only those
`claim terms that are in controversy need to be construed, and only to the
`extent necessary to resolve the controversy. See Nidec Motor Corp. v.
`Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed. Cir. 2017);
`Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999).
`Petitioner proposes constructions for the terms “signal” and “node.”
`Pet. 7−11. Patent Owner points out alleged deficiencies in Petitioner’s
`proposed constructions, but argues that the terms need no explicit
`construction. Prelim. Resp. 5−9. For purposes of determining whether to
`institute review, we need not construe expressly any term.
`
`B. Analysis of Petitioner’s Contentions
`Petitioner points to Zydney as disclosing all the claim 1 limitations,
`except that it relies on Appelman’s disclosure of the “Buddy List” display as
`evidence that it would have been obvious to transmit “a list” of recorded
`connectivity status of the nodes. Pet. 33−38. In the words of Petitioner, the
`Petition “cites Appelman solely as further support for the unremarkable
`proposition that the connectivity status information could be in the form of a
`‘list.’” Id. at 38.
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`We focus our discussion on the contentions presented for the
`“monitoring,” “recording,” “associating,” and “transmitting” steps. There
`are two linking elements across these steps: “connectivity status” and
`“nodes.” As to the “connectivity status,” claim 1 requires monitoring the
`connectivity status of nodes, recording the connectivity status for each of the
`nodes, and transmitting to the client a list of the recorded connectivity status
`of certain nodes. With regards to the “nodes,” claim 1 requires associating a
`sub-set of the nodes with a client. This limitation is important because the
`transmission of the list of recorded connectivity status involves only the
`recorded connectivity status for the sub-set of the nodes associated with the
`client. That is, the transmission to the client involves a list of recorded
`connectivity status for the sub-set of nodes that has been associated with
`that client.
`Petitioner consistently maps Zydney’s software agent (or a device
`running a software agent) to the recited nodes. The Petition points out that
`Zydney discloses recording the “connectivity status” for each node because
`Zydney states that the central server “maintain[s] and provide[s] the status of
`all software agents.” Pet. 27 (citing Ex. 1003, 14:8−9, 13:12−14).
`For the “associating” step, Petitioner points to Zydney’s disclosure of
`“lists” that the server maintains. For instance, the Petition states that
`“Zydney discloses associating a sub[-]set of nodes as a list corresponding to
`each client.” Id. at 28 (citing Ex. 1003, 26:10−15). More specifically to the
`“sub-set” of nodes, the Petition states, “Zydney’s disclosure that the lists
`contain only those software agents that are ‘permitted to send and receive
`voice containers’ discloses associating a sub-set of the full set of nodes.” Id.
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`IPR2017-01365
`Patent 8,243,723 B2
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`at 29 (emphasis in original). For this last proposition, Petitioner cites
`page 14, lines 8−9 of Zydney, which states that the central server “will track
`and maintain the status of all software agents.” Ex. 1003, 14:8−9.
`After review of Petitioner’s arguments and supporting citations to
`Zydney, we do not see how Petitioner links the lists that the server maintains
`to the “sub-set of the nodes” associated with the client, as the claim requires.
`Indeed, there is no link because, as Patent Owner argues, it appears that the
`“lists” the server maintains pertain to permissions of the software agents.
`See Prelim. Resp. 11−12 (arguing that the lists maintained by the server are
`akin to a “white list”). Patent Owner shows that the cited portions of
`Zydney pertain to lists regarding whether the software agents are permitted
`to send or receive voice containers. Id. Further, Patent Owner shows that
`Figure 8 of Zydney provides more detail regarding the “lists” that the server
`maintains. Id. For instance, Figure 8 states that the central server
`“manag[es] 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) personal profile
`lists that allow[] matching of individuals with similar interests.” Ex. 1003,
`Fig. 8 (block 1.2.1). On the whole, we are persuaded by the evidence that
`these “lists” contain addresses of software agents that share common
`features or permissions.
`Even if these lists identified a group of nodes, such as those with
`permission to send and receive voice containers (id. at 26:10−12), there is no
`indication from either Zydney’s disclosures or Petitioner’s arguments that
`any group of nodes is associated with any particular software agent. The
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`Patent 8,243,723 B2
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`claim requires that a sub-set of nodes (each mapped to a software agent) is
`associated with a client (mapped to a software agent running on a computer).
`Thus, it is not clear from the Petition how having voice container
`permission, even if that permission is common to a group of nodes in a
`“list,” constitutes “associating” the group of nodes with a client.
`Further, Zydney’s disclosure of maintaining “a unique set of lists for
`each software agent” is not elucidating on this point. Reading this disclosure
`broadly, but in context with the other disclosures of lists, Zydney’s “unique
`set of lists” refers to the lists of addresses that the central server maintains
`for use by the software agents, as disclosed in Figure 8. A particular
`software agent may be included in one or more of these lists, depending on
`its permissions, but, as stated above, Petitioner does not show how being
`listed or having access to a list of permissions in any way associates a
`particular device/software agent (client) with a sub-set of software agents.
`The argument presented in the Petition is too tenuous a showing of how
`Zydney teaches or suggests the limitation. And we will not, without an
`argument on point, make the leap of presuming how Petitioner intended to
`show that Zydney’s “lists” may be understood to teach “associating a sub-set
`of the nodes with a client.” Accordingly, on balance, Patent Owner’s
`arguments have been persuasive in rebutting Petitioner’s weak assertions
`that Zydney’s status of software agents and unique lists for each software
`agent, together with permissions to send and receive voice containers, teach
`or suggest that a “sub-set” of the nodes is associated with a client.
`The deficiency is even more glaring in context of the “transmitting”
`step, which requires transmitting “a list of the recorded connectivity status
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`IPR2017-01365
`Patent 8,243,723 B2
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`for each of the nodes in the sub-set corresponding to the client.” For this
`limitation, Petitioner again points to Zydney maintaining a unique set of lists
`for each software agent and alleges that Zydney discloses tracking the
`connectivity status of nodes. Pet. 29−30. Petitioner highlights this quote
`from Zydney: “The status of all recipients entered into the software agent is
`frequently conveyed to the software agent by the central server.” Id. at 30
`(emphasis omitted) (quoting Ex. 1003, 14:17–23). Without any factual
`support for the assertion, Petitioner further states that “[e]ach client device
`containing a software agent has a corresponding list at the server.” Id. at 29.
`None of Petitioner’s arguments tie the transmission of the “signal to a client
`including a list of the recorded connectivity status” to include the
`connectivity status of each of the nodes in the sub-set of the nodes
`corresponding to the client.
`The Zydney disclosure Petitioner relies on refers to conveying the
`status “of all recipients entered into the software agent.” Petitioner does not
`explain how the entered “recipients” are also the software agents included in
`the server lists that are alleged to disclose the sub-set of the nodes in the
`“associating” step. Claim 1 requires that the transmission to the client
`include the connectivity status for the sub-set of the nodes associated to the
`client previously. If the server “lists” were an association, a contention we
`have found wanting in explanation, the conveyance of the connectivity status
`of the “entered” recipients is not tied to any “list” that the server maintains.
`The “associating” step and the “transmitting” steps are inexorably linked,
`such that transmission of the connectivity status of the sub-set of nodes
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`Patent 8,243,723 B2
`
`requires that there be a sub-set of nodes associated with the client to which
`the server transmits.
`Patent Owner raises the inconsistency in more detail. Prelim.
`Resp. 10−13 (arguing the “sub-set” limitation in the associating step has
`been mapped to information different from the alleged “sub-set” for the
`transmitting limitation). These arguments are persuasive. It is not possible
`for us to tie Petitioner’s arguments regarding the “sub-set” in the
`“transmission” step with the “sub-set” in the “associating” step. On the one
`hand, the “sub-set” of the nodes associated at the server pertains to a list of
`software agents that have permission to send and receive voice containers,
`while on the other, the status of the “sub-set” pertains to the status of “all
`recipients entered into the software agent.” Pet. 29−30; see also Prelim.
`Resp. 12 (arguing that in light of Figures 5, 6, and 10 of Zydney, the
`“recipients entered” in the software agent pertain to recipients that the user
`has entered during the process of communicating with those recipients).
`Again, Petitioner’s version of how Zydney operates, or would have been
`understood by a person of ordinary skill in the art, regarding these
`limitations lacks a cogent and factually supported explanation as to how the
`associated “sub-set” is the same “sub-set” for which the recorded
`connectivity status is conveyed to the client.
`Finally, reliance on Appelman’s disclosures is unavailing, as
`according to Petitioner, Appelman is cited “only with respect to a very
`narrow issue.” Pet. 38. Appelman is cited solely for “its teachings
`regarding a list of recorded connectivity status of each of the nodes.”
`Pet. 16−17, 33 (arguing that “to the extent it is determined that Zydney alone
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`Patent 8,243,723 B2
`
`does not render obvious transmission of recorded connectivity status
`information in a ‘list,’ that requirement is obvious over Zydney in view of
`Appelman”). We understand Petitioner not to rely on Appelman for any of
`the recited “sub-set” of nodes. Therefore, on this record, no teaching in
`Appelman can cure the deficiencies we have focused on in rendering our
`decision.
`Because of the foregoing reasons, we determine that Petitioner has
`failed to demonstrate a reasonable likelihood of prevailing in its contention
`that Zydney discloses, teaches or suggests the limitations discussed above:
`“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.”
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied, and no inter partes review is
`instituted.
`
`
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`IPR2017-01365
`Patent 8,243,723 B2
`
`For PETITIONER:
`
`Heidi L. Keefe
`Phillip E. Morton
`COOLEY LLP
`Hkeefe@cooley.com
`pmorton@cooley.com
`zpatdcdocketing@cooley.com
`
`
`For PATENT OWNER:
`
`Brett Mangrum
`Ryan Loveless
`ETHERIDGE LAW GROUP
`brett@etheridgelaw.com
`ryan@etheridgelaw.com
`
`Sean D. Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`14
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`
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