`
`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
`
`FACEBOOK, INC. AND WHATSAPP, INC.,
`
`Petitioners,
`
`v.
`
`UNILOC USA, INC. AND UNILOC LUXEMBOURG S.A.,
`Patent Owner
`
`______________
`
`Case IPR2017-01427
`U.S. Patent 8,995,433
`______________
`
`DECLARATION OF DR. VAL DIEULIIS
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`
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`SEPTEMBER 7, 2017
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`Uniloc v. Facebook, IPR2017-01427
`Uniloc's Ex. 2001, Page 1
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`TABLE OF CONTENTS
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`1. INTRODUCTION ......................................................................................... 4
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`2. QUALIFICATIONS ...................................................................................... 5
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`3. COMPENSATION, TESTIMONY, AND PUBLICATIONS ..................... 8
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`4. INFORMATION CONSIDERED ...............................................................10
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`5. LEGAL STANDARDS .................................................................................11
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`6. THE ’433 PATENT ......................................................................................12
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`6.1 Claims.................................................................................................... 20
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`7. ORDINARY SKILL IN THE ART .............................................................21
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`8. CLAIM CONSTRUCTION .........................................................................22
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`8.1 “instant voice messaging application” .................................................... 23
`8.2 “client platform system” ...................................................................... 29
`
`9. INTERNATIONAL APPLICATION WO 01/11824
`(“ZYDNEY”) ................................................................................................30
`
`10. U.S. PATENT NO. 6,725,228 (“CLARK”) ..................................................38
`
`11. THE PROPOSED COMBINATION OF ZYDNEY AND CLARK
`FAILS TO RENDER OBVIOUS ANY CHALLENGED CLAIM
`OF THE 433 PATENT .................................................................................43
`
`11.1 The Modification of Zydney with Clark’s Database
`Renders Inoperative Zydney’s Teaching of Temporary
`Storage of Voice Messages .................................................................... 44
`11.2 The Proposed Combination of Zydney and Clark Fails to
`Render Obvious “wherein the instant voice message
`application generates an audible or visual effect
`indicating receipt of an instant voice message” (Claim 8) ...................... 47
`
`12. U.S. PATENT NO. 6,750,881 (“APPELMAN”) ..........................................50
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`13. THE PROPOSED COMBINATION OF ZYDNEY AND CLARK
`WITH APPELMAN FAILS TO RENDER OBVIOUS
`“WHEREIN THE INSTANT VOICE MESSAGING
`APPLICATION DISPLAYS AN INDICIA FOR EACH OF THE
`ONE OR MORE POTENTIAL RECIPIENTS INDICATING
`WHETHER THE POTENTIAL RECIPIENT IS CURRENTLY
`AVAILABLE TO RECEIVE AN INSTANT VOICE
`MESSAGE” (CLAIM 7) ..............................................................................53
`
`13.1 The Proposed Combination of Zydney and Appelman is
`Improper because the Combination of Zydney and
`Appelman would Render Zydney Unsatisfactory for an
`Intended Purpose of Zydney .................................................................. 56
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`I, Dr. Val DiEuliis, hereby declare and state as follows:
`
`1.
`
`1.
`
`Introduction
`
`My name is Val DiEuliis, and I have been retained by
`
`Uniloc, USA, Inc., and Uniloc Luxembourg S.A. (“Uniloc” or the “Patent
`
`Owner”). My client Uniloc and its associated counsel, Etheridge Law
`
`Group, have asked me to study U.S. Patent No. 8,995,433 (“the ’433
`
`patent”), the Petition, the proffered prior art in this case, and other
`
`relevant documents. I document my findings in this declaration.
`
`2.
`
`I have concluded that International Application WO
`
`01/11824 (“Zydney”) [EX1003] combined with U.S. Patent No.
`
`6,725,228 (“Clark”) [EX1008] and/or 6,750,881 (“Appelman”) [EX1004]
`
`do not render obvious any challenged claim of the patent at issue, the’433
`
`patent, at least for the following reasons:
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`• A POSITA would not have been motivated to modify Zydney with
`
`Clark because, if combined, neither Zydney nor Clark would
`
`operate according to their intended purposes. (Claims 1 and 6)
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`• A POSITA would not have been motivated to combine Zydney and
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`Clark with Appelman because, if combined as proposed, Zydney
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`would have been rendered unsatisfactory for an intended purpose.
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`(Claim 7)
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`3.
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`• The proposed combination of Zydney and Clark fails to render
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`obvious “wherein the instant voice message application generates
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`an audible or visual effect indicating receipt of an instant voice
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`message.” (Claim 8)
`
`The limited scope of my opinions and analysis in this
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`declaration do not imply that I may not later express other opinions or
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`report other results from other investigations concerning other issues
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`raised by the Petitioners or their experts in this IPR.
`
`2.
`
`4.
`
`Qualifications
`
`I am an electrical engineer with over 45 years of experience
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`developing, programming, and analyzing computer algorithms and
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`software. I am experienced with and able to create, read, and interpret
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`firmware and software in C, C++, Java, assembly language, HTML, and
`
`other computer programming languages. I have served as an expert
`
`witness in multiple cases for which I analyzed computer source code in
`
`various languages and testified at ITC hearings and two jury trials
`
`concerning my results.
`
`5.
`
`During my career, I have developed and managed projects
`
`for various applications, including sensors, controls, communications,
`
`
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`user interfaces, device firmware, handheld devices, medical devices and
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`systems, and test systems for optical and magnetic disk systems.
`
`6.
`
`I have designed, developed, and implemented hardware and
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`software for digital communication networks, including factory
`
`networks; document capture and distribution; and communications links
`
`for various applications. See DiEuliis CV (See e.g., Website
`
`Development, Industrial Valve Position Sensor, Condition-Based
`
`Maintenance System, Avionics Environmental Monitor, Radio Frequency
`
`Billboard Network, Wireless Bar Code System for Hospitals, and ISA
`
`Board for 4-Port RS422 Serial Communications Multiplexer.). See also
`
`Id. at 3 (Digital Document Storage Technology). I also developed an
`
`optical disk digital data storage system that captured, recorded, played
`
`back, and stored digital audio data. Id. at 2 (Optical Disk Technology).
`
`7.
`
`As a graduate student at the University of
`
`Illinois at Urbana-Champaign, I obtained extensive training in the
`
`complexity of algorithms; the complexity of databases; information
`
`theory; combinatorics and combinatorial algorithms; and the mathematics
`
`and algorithms of error correcting codes, a field closely related to
`
`cryptography. In addition, as a part of my graduate research, I created and
`
`developed heuristic algorithms and wrote software to synthesize
`
`
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`non-linear codes for optimizing the spectra of coded digital
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`communications signals.
`
`8.
`
`I received the Ph.D. and M.S. degrees in electrical
`
`engineering from the University of Illinois at Urbana-Champaign in 1978
`
`and 1976, respectively, and the B.S. degree in electrical engineering from
`
`the University of Notre Dame in 1972. I am a Registered Professional
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`Engineer (electrical) in the State of Minnesota, and a Life Senior Member
`
`of the Institute of Electrical and Electronics Engineers (IEEE).
`
`Additionally, I am a co-inventor of two patents.
`
`9.
`
`I have been an independent engineering consultant, doing
`
`business as Electronics Consultants, since 1984. My clients have
`
`included 3M, Honeywell, Imation Corporation, and Seagate Technology,
`
`among others. Prior to that, I worked as a research engineer for the 3M
`
`Company in St. Paul, Minnesota for five years. In addition, before my
`
`graduate studies, I worked as an electrical engineer in the U. S. Army
`
`with the U.S. Army Security Agency for two years, during which time I
`
`held a Top Secret W/Crypto and SI Access security clearance.
`
`10.
`
`As an adjunct instructor at the University of Saint Thomas in
`
`St. Paul, Minnesota, I developed and presented a lecture on classical
`
`linear control theory for graduate students; developed and taught a
`
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`graduate course on computer networks; and taught an undergraduate
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`analog and digital electronics course to mechanical engineering students.
`
`11.
`
`This and other information about my background is included
`
`in my CV, which is attached to this declaration as Attachment A.
`
`3.
`
`12.
`
`Compensation, Testimony, and Publications
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`I am being paid $440 per hour for the time I spend working
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`on this matter. My compensation is not contingent on my performance,
`
`the outcome of this IPR, or any issues involved in or related to this IPR.
`
`13.
`
`During the past four years, I have testified at trial, hearing,
`
`or deposition in the following cases:
`
`• Terremark North America, LLC, et al. v. Joao Control &
`
`Monitoring Systems, LLC.; US PTO Inter Partes Review
`
`IPR2015-01466; Joao Control & Monitoring on behalf of Joao
`
`Control & Monitoring; 2016. I testified at a deposition.
`
`• Kofax, Inc. v. Uniloc USA, Inc., et al.; US PTO Inter Partes
`
`Review IPR2015-01207; Uniloc USA on behalf of Uniloc USA;
`
`2016. I testified at a deposition.
`
`• Sega of America, Inc. et al. v. Uniloc USA, Inc. et al.; USPTO
`
`Inter Partes Review IPR2014-01453; Uniloc USA on behalf of
`
`Uniloc USA; 2015. I testified at a deposition.
`
`
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`• Uniloc USA, Inc. et al. v. Activision Blizzard, Inc. et al.; United
`
`States District Court for the Eastern District of Texas (Tyler); Civil
`
`Action No. 6:13-cv-00256-LED; and Uniloc USA, Inc. v.
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`Electronic Arts, Inc.; Civil Action No. 6:13-cv-259-LED; Nelson
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`Bumgardner Casto and Carter, Scholer, Arnett, Hamada, and
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`Mockler on behalf of Uniloc USA et al.; 2013-2014. I
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`testified at three depositions and a jury trial.
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`• In the Matter of Certain Optical Disc Drives, Components thereof,
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`and Products Containing Same; U.S.I.T.C. Investigation No.
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`337-TA-897; Optical Devices, LLC v. Lenovo et al.; O’Melveny &
`
`Myers on behalf of Samsung, Kenyon & Kenyon on behalf of
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`Lenovo, Greenberg Traurig on behalf of LG Electronics,
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`McDermott Will & Emery on behalf of Nintendo and Panasonic,
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`DLA Piper on behalf of Toshiba, and Quinn Emanuel Urquhart &
`
`Sullivan on behalf of MediaTek; 2013-2014. I testified at a
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`deposition.
`
`• Taser International, Inc. v. Karbon Arms, LLC; United States
`
`District Court for the District of Delaware; Civil Action No.
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`1:11-cv-426-RGA; Smith, Gambrell & Russell, LLP, on behalf of
`
`Karbon Arms, 2013. I testified at a deposition.
`
`
`14.
`
`I have had no publications in the past 10 years.
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`4.
`
`15.
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`Information Considered
`
`In order to arrive at my opinions, I have reviewed and
`
`considered the materials listed below:
`
`• Petition for Inter Partes Review of U.S. Patent No. 8,995,433
`
`(Petition 1 of 2 – Claims 1-8), and exhibits, Case No.
`
`IPR2017-01427, May 10, 2017 [Pet.]
`
`• U.S. Patent No. 8,995,433 (“’433”) [EX1001], and its prosecution
`
`history
`
`• Declaration of Tal Lavian, Ph.D., May 10, 2017 [EX1002]
`
`• International Application WO 01/11824 (“Zydney”) [EX1003]
`
`• U.S. Patent No. 6,750,881 (“Appelman”) [EX1004]
`
`• U.S. Patent No. 6,725,228 (“Clark”) [EX1008]
`
`• Microsoft Press Computer Dictionary, 1997 (definition of
`
`“application”) [EX1009]
`
`• Internet News Post, American Dialect Society, “App” voted 2010
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`word of the year by the American Dialect Society, dated
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`January 8, 2011 [EX2002]
`
`• Decision to Institute Inter Partes Review, IPR2017-00225,
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`May 25, 2017
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`
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`5.
`
`16.
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`Legal Standards
`
`I understand there are certain legal rules, standards, or
`
`requirements that I accept for the purpose of my analysis of the opinions
`
`and conclusions set forth in this declaration.
`
`17.
`
`I understand a patent is obvious “if the differences between
`
`the subject matter sought to be patented and the prior art are such that the
`
`subject matter as a whole would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which
`
`said subject matter pertains.” 35 U.S.C. § 103(a). An obviousness
`
`determination must be based on four factual inquiries: (1) the scope and
`
`content of the prior art; (2) the differences between the claims and the
`
`prior art; (3) the level of ordinary skill in the art; and (4) objective indicia
`
`of nonobviousness.
`
`18.
`
`I have been informed that if a single limitation of a claim is
`
`absent from the prior art, the claim cannot be considered obvious.
`
`19.
`
`I further understand that it is improper to combine references
`
`where the references teach away from their combination. A prior art
`
`reference teaches away from the claimed invention when a person of
`
`ordinary skill, upon reading the reference would be led in a direction
`
`divergent from the path that was taken by the applicant. Prior art also
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`teaches away when it criticize[s], discredit[s], or otherwise discourage[s]
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`investigation into the claimed invention. Additionally, a reference teaches
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`away from a combination when using it in that combination would
`
`produce an inoperative result. A reference also teaches away from a
`
`combination when using it in that combination would render the
`
`invention described in the reference unsatisfactory for its intended
`
`purpose.
`
`20.
`
`In addition, I understand that if a proposed modification or
`
`combination of the prior art would change the principle of operation of
`
`the prior art device being modified, then the teachings of the references
`
`are not sufficient to render the claims prima facie obvious.
`
`6.
`
`21.
`
`The ’433 Patent
`
`U.S. Patent No. 8,995,433 (“’433”), titled System and
`
`method for instant VoIP messaging, was issued on March 31, 2015. The
`
`application 14/224,125, by inventor Michael J. Rojas, was filed on
`
`March 24, 2014. See EX1001.
`
`22.
`
`The ’433 patent “relates to Internet telephony (IP
`
`telephony). More particularly, the present invention is directed to a
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`system and method for enabling local and global instant VoIP
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`messaging over an IP network, such as the Internet, with PSTN
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`support.” Id. at 1:19-23.
`
`23.
`
`The ’433 patent provides the historical context in its prior art
`
`discussion by noting that “[traditional] telephony is based on a public
`
`switched telephone network (i.e., “PSTN”). EX1001 at 1:25-35. This is
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`the well-known telephone system that has served the world for well over
`
`a century.
`
`24.
`
`The ’433 patent further explains “An alternative to the
`
`PSTN is Voice over Internet Protocol (i.e., "VoIP"), also known as IP
`
`telephony or Internet telephony. Id. at 1:36-38. The patent elaborates as
`
`follows:
`
`In the IP telephony, a VoIP terminal device is
`connected to a packet-switched network (e.g.,
`Internet) and voice communication from the
`VoIP terminal device is digitized, packetized
`and transmitted over the packet-switched
`network to a destination VoIP terminal device,
`which reconstructs the packets and audibly
`plays, stores or otherwise processes the
`transmission. The VoIP terminal device may be a
`VoIP telephone or a general-purpose personal
`computer (PC) enabled for IP telephony. More
`specifically, the PC is programmed with the
`software and equipped with audio input/output
`devices (e.g., a combination of microphone and
`
`
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`speaker or a headset) to serve as a VoIP terminal
`device. The PC so enabled and equipped will
`herein be referred to as a VoIP terminal device or a
`VoIP softphone.
`(Id. at 1:38-51) (Emphasis added.)
`
`
`25.
`
`After noting that VoIP and instant text messaging were
`
`known arts, the ’433 patent explains the motivation for its invention as
`
`follows:
`
`However, notwithstanding the foregoing advances
`in the VoIP/PSTN voice communication and
`voice/text messaging, there is still a need in the
`art for providing a system and method for
`providing instant VoIP messaging over an IP
`network. More particularly, there is a need in the
`art for providing local and global instant voice
`messaging over VoIP with PSTN support.
`(Id. at 2:48-54) (Emphasis added.)
`
`
`26.
`
`FIG. 2, reproduced below is “an exemplary illustration of a
`
`local instant voice messaging (IVM) system 200 according to the
`
`present invention. The instant voice messaging system 200 comprises a
`
`local IVM server 202 that “provides the core functionality for enabling
`
`instant voice messaging with PSTN support according to the present
`
`invention.” Id. at 6:54-59 (emphasis added).
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`FIG. 2 of the ’433 Patent: System Diagram of the Instant Voice
`Messaging System (IVM)
`
`
`
`27.
`
`The local IVM server 202 “is enabled to provide instant
`
`voice messaging to one or more IVM clients 206 and 208, as well support
`
`instant voice messaging for PSTN legacy telephones 110.” Id. at 6:62-65.
`
`The local IP network 204, a packet-switched network, connects the IVM
`
`server 202 to clients 208 (viz., a computer system), VoIP Phone 206, and
`
`legacy telephone 110 (e.g., a land-line phone). Clients incorporate
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`devices such as microphones, which enable a person’s voice to be
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`recorded, and speakers to allow voice messages to be heard by the users.
`
`Id. at 7:9-26.
`
`28.
`
` A POSITA would have understood, upon studying the
`
`totality of the ’433 patent, and specifically the written descriptions above
`
`and elsewhere in the ’433 patent, that “clients” in the ’433 patent are
`
`devices, such as computers and telephones, and not the people who use
`
`the devices. See e.g., Id. at 9:31-32. The patent expresses this in the
`
`following exemplary passages:
`
`The IVM client 208 is a general-purpose
`programmable computer equipped with a
`network interface (not shown), such as an Ethernet
`card, to provide connectivity to the network 204.
`(Id. at 12:13-16)
`
`The user operates the IVM client 208 by using
`the input device 218 to indicate a selection of one
`or more IVM recipients from the list.
`(Id. at 8:5-8; also 8:60-62) (Emphasis added.)
`
`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.
`(Id. at 8:33-36) (Emphasis added.)
`
`
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`29.
`
`The above exemplary passages demonstrate that the user is
`
`not the client, which is a device, but rather an entity (e.g., person, another
`
`device, software) that interfaces with and operates the client device using
`
`input and output devices.
`
`30.
`
`The first passage above explicitly discloses that the client is
`
`a computer. The second passage explicitly discloses that the “user”
`
`operates the client.
`
`31.
`
`Finally, the third passage explains that “recipients are
`
`enabled to ... “audibly play the instant voice message to an associated
`
`user.” Id. This exemplary statement explains that a “recipient” is not the
`
`“user.” A POSITA would have understood, after studying the totality of
`
`the ’433 patent, that “recipients” are client devices, not people.
`
`32.
`
`Regarding the operation of at least one embodiment, the
`
`’433 patent explains “the IVM client (VoIP telephone) 208 is connected
`
`over the network 204 to the IVM server 202, which as aforementioned
`
`enables instant voice messaging functionality over the network 204.”
`
`Id. at 8:53-56. The operations proceed generally, according to an
`
`exemplary embodiment, as follows:
`
`• The client displays a list, provided and stored by the server, of one
`
`or more IVM recipients. Id. at 8:56-58.
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`
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`• “The user operates the IVM client 206 by using a keypad on the
`
`VoIP telephone 206 to indicate a selection of one or more IVM
`
`recipients from the list.” Id. at 8:60-62.
`
`• The client transmits the selection of the recipient(s) to the server.
`
`Id. at 8:62-63.
`
`• The client begins recording audio and the user speaks into a
`
`microphone or headset or telephone handset of the client. Id. at
`
`8:62-9:1.
`
`• The client records the user’s speech into an audio file, which may
`
`be stored in a storage device (e.g., memory, magnetic disk). Id. at
`
`9:1-4; see also Id. at 8:11-15.
`
`• The client transmits the recorded audio file (i.e., instant voice
`
`message) to the server via the network. Id. at 9:6-8; see also
`
`Id. at 8:25-26.
`
`• The server transmits the instant voice message (that is, the audio
`
`file) to the recipient(s) who are currently connected to the network.
`
`Id. at 9:16-25. If a recipient is not currently connected to the
`
`network, the server temporarily saves the instant voice message
`
`and delivers it to the IVM client when the IVM client connects to
`
`the local IVM server. Id.
`
`
`33.
`
`The ’433 patent also teaches “when an instant voice message
`
`is to be transmitted to the one or more IVM recipients, one or more
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`documents may be attached to the instant voice message to be stored
`
`
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`or displayed by the one or more selected IVM recipients.”
`
`Id. at 12:32-36. Furthermore, regarding attachments, the patent teaches:
`
`The user may also open any file attachments and
`move or save the files to a separate location on the
`client using a drag-and-drop process.
`(Id. at 13:9-12) (Emphasis added.)
`
`The attachment of one or more files is enabled
`conventionally via a methodology such as
`"drag-and-drop" and the like, which invokes the
`document handler 306 to make the appropriate
`linkages to the one or more files and flags the
`messaging system 320 that the instant voice
`message also has the attached one or more files.
`(Id. at 13:35-40)
`
`
`34.
`
`In my opinion, a POSITA would have understood that the
`
`inventor refers to files, such as documents, spreadsheets, pictures, and so
`
`forth, as entities separate from the audio file itself, and that the term
`
`attachment should be interpreted as other files or information that are
`
`sent with a message. For example, a text message may contain a picture
`
`attachment, which is a separate file that is distinct from the actual text in
`
`the message.
`
`
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`6.1
`
`35.
`
`Claims
`
`In this declaration, I primarily focus on three limitations
`
`recited by the challenged claims.
`
`36.
`
`First, claim 1, an independent system claim recites the
`
`limitation “wherein the instant voice messaging application includes a
`
`message database storing the instant voice message, wherein the instant
`
`voice message is represented by a database record including a unique
`
`identifier” EX1001 24:7-10.
`
`37.
`
`Second, claim 7, a system claim dependent on claim 1,
`
`recites the further limitation “wherein the instant voice messaging
`
`application displays an indicia for each of the one or more potential
`
`recipients indicating whether the potential recipient is currently available
`
`to receive an instant voice message.” Id. at 24:52-56.
`
`38.
`
`Third, claim 8, a system claim dependent on claim 1, recites
`
`the further limitation “wherein the instant voice message application
`
`generates an audible or visual effect indicating receipt of an instant voice
`
`message.” Id. at 24:57-59.
`
`
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`7.
`
`39.
`
`Ordinary Skill in the Art
`
`The Petitioners’ expert, Dr. Lavian, defines a person of
`
`ordinary skill in the art as a person who “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).” EX1002 at ¶ 15; also
`
`Pet. at 6.
`
`40.
`
`I have no reason to disagree with Dr. Lavian’s description of
`
`a person of ordinary skill in the art. Moreover, based on my degrees in
`
`electrical engineering, which included extensive training in software
`
`development, data communications and networking, and 45-plus years of
`
`experience, including significant software development, I had, on the
`
`priority date, considerably more experience and expertise than the
`
`POSITA. I base my opinions regarding the level of ordinary skill in the
`
`art upon this understanding and my own experience in the field. I have
`
`
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`considered the way in which a POSITA would have understood the ’433
`
`patent on its priority date,
`
`1
`
` and I offer my opinions on that basis.
`
`8.
`
`41.
`
`Claim Construction
`
`The Petitioners construe the phrases “instant voice
`
`messaging application” and “client platform system,” and state their
`
`constructions “provide the broadest reasonable interpretation in light of
`
`the specification to a person of ordinary skill in the art.” Pet. at 9; see
`
`also EX1002 at ¶ 19.
`
`42.
`
`My interpretation of the claims, discussed below, including
`
`my analysis of the terms “instant voice messaging application” and
`
`“client platform system,” is based on the broadest reasonable
`
`interpretation standard, fully taking into account the specification. I
`
`understand that the broadest reasonable interpretation is the claim
`
`language itself, and that the claim language itself is the first and most
`
`
`
`1
`
` The apparent priority date of December 18, 2003, is published on the
`
`face of the ’433 patent. EX1001 at (63). I am not aware of any dispute in
`
`this IPR concerning the priority date.
`
`
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`important element of intrinsic evidence informing a POSITA of the
`
`meaning of the claims.
`
`43.
`
`The limited scope of my opinions and analysis concerning
`
`claim construction in this declaration does not imply that I may not later
`
`express other opinions, express more analysis, construe other terms, or
`
`report other results from other investigations concerning other issues
`
`raised by the Petitioners or their experts in this IPR.
`
`8.1
`
`44.
`
`“instant voice messaging application”
`
`In my opinion, a POSITA would have understood the term
`
`“application” in the context of the ’433 patent to mean a software
`
`program that performs a particular task or function(s). Thus, a POSITA
`
`would have understood that whole phrase “instant voice messaging
`
`application” means “a software program that performs instant voice
`
`messaging tasks or functions.”
`
`45.
`
`The Petitioners propose that “instant voice messaging
`
`application” means “hardware and/or software used for instant voice
`
`messaging.” Pet. at 9 (citing EX1002 at ¶¶ 48-56). In my opinion, the
`
`Petitioners’ inclusion of “hardware” in its interpretation is unreasonable
`
`
`
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`and conflicts with the understanding of a POSITA on the priority date,
`
`that is, as “software that performs a task or function.”
`
`46.
`
`The Petitioners and their expert Dr. Lavian, acknowledge
`
`that a POSITA would understand the term “application” means
`
`“computer software for performing a particular function.” Pet. at 10
`
`(citing EX1002 at ¶ 52 [citing EX1009, the Microsoft Computer
`
`Dictionary defining “application as “[a] program designed to assist in the
`
`performance of a specific task, such as word processing, accounting, or
`
`inventory management.”]). On the other hand, the Petitioners and
`
`Dr. Lavian then assert that, based on the written description of the ’433
`
`patent, the term “instant voice messaging application” should not be
`
`limited to software. Pet. at 10; see also EX1002 at ¶ 52. As I explain
`
`below, the Petitioners’ purported support in the written description of the
`
`’433 patent for this proposition falls short of the mark.
`
`47.
`
`The Petitioners assert that the ’433 patent discloses that
`
`functions associated with instant voice messaging are performed by the
`
`IVM client 208, which is a “general-purpose programmable computer.”
`
`Pet. at 10 (citing EX1001 at 12:13-15). The Petitioners also point to
`
`FIG. 3, reproduced below, which is “an exemplary illustration of the
`
`architecture in the IVM client 208 for enabling instant voice messaging
`
`
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`according to the present invention.” EX1001 at 12:6-8. A POSITA would
`
`have understood that “architecture” in the context of FIG. 3, means the
`
`structure and functions of the software in the client computer.
`
`
`
`
`48.
`
`FIG. 3 in the ’433 Patent: Client Architecture
`
` Referring to FIG. 3, the IVM client 208, which is a device
`
`
`
`that includes software running on a processor, “comprises a client
`
`platform 302 for generating an instant voice message and a messaging
`
`system 320 for messaging between the IVM client 208 and the IVM
`
`server 202 for enabling instant voice messaging.” EX1001 at 12:8-12
`
`(emphasis added). The Petitioners appear to contend that because the
`
`“written description does not identify a specific software program that
`
`
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`contains those components,” and because the “client” is a computer
`
`system that the “application” may be hardware. Pet. at 11-12. I disagree.
`
`49.
`
`I understand that a patent need not include every detail of an
`
`invention if the descriptions are adequate for a POSITA to understand it.
`
`FIG. 3 is such a case because it does not explicitly show a labeled box for
`
`the “application” that comprises a “client platform 302” and a
`
`“messaging system 320,” but a POSITA would have understood that,
`
`despite the lack of an explicit application label in FIG. 3, the application
`
`as claimed is an implied box around client platform 302 and messaging
`
`system 320. Furthermore, the application is software (and not hardware)
`
`because it is comprised of two software blocks, the client platform 302
`
`and the messaging system 320. I provide my re