IPR2017-01428, No. 1118-22 Exhibit - Corrected Petitioners Demonstrative Exhibit (P.T.A.B. Aug. 27, 2018)

Facebook, Inc. and WhatsApp, Inc.
`(Petitioners)
`v.
`Uniloc USA, Inc. and Uniloc Luxembourg S.A.
`(Patent Owner)
`IPR2017-01428 (Patent 8,995,433)
`IPR2017-01667 (Patent 8,724,622)
`IPR2017-01668 (Patent 8,724,622)
`
`August 30, 2018
`Before Jennifer S. Bisk, Miriam L. Quinn and Charles J. Boudreau,
`Administrative Patent Judges
`
`Petitioners’ Demonstrative Exhibit
`
`1
`
`Facebook's Ex. No. 1118 - IPR2017-01428
`
`

`IPR2017-01428 (Patent 8,995,433)
`Claims 9-12, 14-17, 25 and 26
`
`Petitioners’ Demonstrative Exhibit
`
`2
`
`

`Claim Construction
`
`Petitioners’ Demonstrative Exhibit
`
`3
`
`

`Claim 9 of the ’433 Patent
`
`U.S. Patent 8,995,433,
`Ex. 1001
`
`Petitioners’ Demonstrative Exhibit
`
`4
`
`

`“instant voice message”
`
`Petitioners’ Demonstrative Exhibit
`
`5
`
`

`“instant voice message” – no construction necessary
`
`Zydney’s voice container discloses an “instant voice message”
`
`Petition
`
`Petitioners’ Demonstrative Exhibit
`
`Petition at 24-25
`
`6
`
`

`“instant voice message” – Patent Owner’s proposed construction
`
`Patent Owner’s proposal: “audio file voice recording data”
`
`• Not required by specification
`
`• Excludes embodiments
`
`• Contrary to Patent Owner’s related patent with
`same written description
`
`• Not required by claims
`
`Petitioner Reply
`(Paper 29)
`
`Petitioners’ Demonstrative Exhibit
`
`Reply at 2-5
`
`7
`
`

`“instant voice message” – Patent Owner’s proposed construction
`
`“Audio File Voice Recording Data” Not Required by Specification
`
`• Specification describes “intercom mode” in which an “instant voice message”
`is a buffered transmission not an audio file
`
`Petitioner Reply
`(Paper 29)
`
`Petitioners’ Demonstrative Exhibit
`
`Reply at 4-5; Zydney (Ex. 1001) at 11:34-60
`
`8
`
`

`“instant voice message” – Patent Owner’s proposed construction
`
`“Audio File Voice Recording Data” Excludes Embodiments
`
`• Dependent claim 13 recites “instant voice message” generated using
`“intercom mode”
`
`Petitioner Reply
`(Paper 29)
`
`A “claim construction that excludes a preferred embodiment . . . is rarely, if ever
`correct and would require highly persuasive evidentiary support.”
`Epos Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1347 (Fed. Cir. 2014) (quoting Anchor Wall
`Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1308 (Fed. Cir. 2003))
`
`Petitioners’ Demonstrative Exhibit
`
`Reply at 5
`
`9
`
`

`“instant voice message” – Patent Owner’s proposed construction
`
`Related Uniloc ’747 Patent confirms “instant voice message”
`not synonymous with “audio file recording voice data”
`
`•
`
`’747 Patent, claim 1:
`
`Petitioner Reply
`(Paper 29)
`
`Petitioners’ Demonstrative Exhibit
`
`Reply at 3; U.S. Patent No. 8,199,747, claim 1
`
`10
`
`

`“instant voice message” – Patent Owner’s proposed construction
`
`“Audio File Voice Recording Data” Not Required by Claims
`
`• Claim steps of playing or recording do not limit to only “audio file”
`
`• Claims recite that a “file” can be attached to an instant voice message,
`suggesting that the instant voice message need not be a “file”
`
`Petitioner Reply
`(Paper 29)
`
`Petitioners’ Demonstrative Exhibit
`
`Reply at 2-3
`
`11
`
`

`“instant voice messaging application”
`
`Petitioners’ Demonstrative Exhibit
`
`12
`
`

`“instant voice messaging application”
`
`Broadest reasonable construction in context of claims of ’433 patent is
`“hardware and/or software used for instant voice messaging”
`
`IVM client 208, a “general-purpose
`programmable computer”
`
`Petition
`
`Petitioners’ Demonstrative Exhibit
`
`Petition at 10-12; ’433, Fig. 3, 12:6-16
`
`13
`
`

`“instant voice messaging application” – no construction necessary
`
`• Petitioner agrees with Board that no construction is necessary to
`show that Zydney discloses the “instant voice messaging application”
`
`DI (Paper 8) at 7
`
`Institution Decision
`(Paper 8)
`
`Petitioners’ Demonstrative Exhibit
`
`14
`
`

`“instant voice messaging application”
`
`Patent Owner’s dispute about including “hardware” in
`broadest reasonable interpretation is irrelevant
`
`• Petition mapped “instant messaging application” to Zydney’s software
`agent and features and functionality of its associated software components
`
`Petitioner Reply
`(Paper 29)
`
`Petitioners’ Demonstrative Exhibit
`
`• Patent Owner has not pointed to any place where Petitioner relied on
`hardware functionality as disclosing the claimed instant messaging application
`
`Reply at 10-11; Petition at 23
`
`15
`
`

`“client platform system”
`
`Petitioners’ Demonstrative Exhibit
`
`16
`
`

`“client platform system”
`
`Broadest reasonable construction is “hardware and/or software
`on a client for generating an instant voice message”
`
`• As part of the “instant messaging application,” “client platform system”
`under its broadest reasonable construction should similarly be defined
`as hardware and/or software
`
`Petition
`
`Petitioners’ Demonstrative Exhibit
`
`Petition at 13-14
`
`17
`
`

`“client platform system” – no construction necessary
`
`• Petitioner agrees with Board that no construction is necessary to
`show that Zydney discloses the “client platform system”
`
`DI (Paper 8) at 7
`
`Institution Decision
`(Paper 8)
`
`Petitioners’ Demonstrative Exhibit
`
`18
`
`

`“client platform system”
`
`Patent Owner’s dispute about including “hardware” in
`broadest reasonable interpretation is immaterial
`
`• Petition mapped “client platform system" to components of Zydney’s
`software agent:
`
`Petitioner Reply
`(Paper 29)
`
`• Patent Owner has not pointed to any place where Petitioners relied on
`hardware functionality as disclosing the claimed client platform system
`
`Petitioners’ Demonstrative Exhibit
`
`Reply at 10-11; Petition at 27
`
`19
`
`

`“client platform system” – Patent Owner’s proposed construction
`
`Patent Owner’s cited specification passage is not definitional
`
`Petitioner Reply
`(Paper 29)
`
`“To act as its own lexicographer, a patentee must ‘clearly set forth a definition
`of the disputed claim term’ other than its plain and ordinary meaning.”
`Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012)
`
`Petitioners’ Demonstrative Exhibit
`
`Reply at 10-11; ’433, 12:6-23
`
`20
`
`

`“client platform system”
`
`Zydney discloses “client platform system”
`even under Patent Owner’s proposed construction
`
`Petition
`
`Petitioners’ Demonstrative Exhibit
`
`Petition at 27-28
`
`21
`
`

`Independent Claim 9
`
`Petitioners’ Demonstrative Exhibit
`
`22
`
`

`“attaches one or more messages to the instant voice message”
`
`U.S. Patent 8,995,433,
`Ex. 1001
`
`Petitioners’ Demonstrative Exhibit
`
`23
`
`

`“attaches one or more messages to the instant voice message”
`
`Zydney discloses “attach[ing] one or more
`messages to the instant voice message”
`
`• Patent Owner’s argument relies on incorrect claim interpretation that a voice
`container is not an “instant voice message”:
`
`Petition
`
`Petitioners’ Demonstrative Exhibit
`
`Petition at 32-36; Zydney, 19:1-7; Patent Owner Response at 21
`
`24
`
`

`
`Claim 17
`
`Petitioners’ Demonstrative Exhibit
`Petitioners’ Demonstrative Exhibit
`
`25
`25
`
`

`Claim 17 of the ’433 Patent
`
`U.S. Patent 8,995,433,
`Ex. 1001
`
`Petitioners’ Demonstrative Exhibit
`
`26
`
`

`“Receiving the Instant Voice Message and an Indication . . .”
`
`Board correctly found no support in claims or specification
`for Patent Owner’s “separateness” requirement
`
`Petitioner Reply
`(Paper 29)
`
`Petitioners’ Demonstrative Exhibit
`
`•
`
`“Receiving the Instant Voice Message and an Indication . . .” is properly
`left to its plain meaning
`
`Reply at 6; DI at 9-10
`
`27
`
`

`
`Claim 26
`
`Petitioners’ Demonstrative Exhibit
`Petitioners’ Demonstrative Exhibit
`
`28
`28
`
`

`Claim 26 of the ’433 Patent
`
`U.S. Patent 8,995,433,
`Ex. 1001
`
`Petitioners’ Demonstrative Exhibit
`
`29
`
`

`Zydney server delivers “the” instant voice message
`
`Zydney central server “delivers the instant voice message
`to the one or more intended recipients who are determined
`to be currently available”
`
`Petition
`
`Petitioners’ Demonstrative Exhibit
`
`Petition at 48; Zydney at 16:7-12, 12:18-23
`
`30
`
`

`Zydney server delivers “the” instant voice message
`
`Board correctly found no requirement that the data format
`of the instant voice message must remain identical
`
`Petitioner Reply
`(Paper 29)
`
`A “claim construction that excludes a preferred embodiment . . . is rarely, if ever
`correct and would require highly persuasive evidentiary support.”
`Epos Techs. Ltd. v. Pegasus Techs. Ltd., 766 F.3d 1338, 1347 (Fed. Cir. 2014) (quoting Anchor Wall
`Sys., Inc. v. Rockwood Retaining Walls, Inc., 340 F.3d 1298, 1308 (Fed. Cir. 2003))
`
`Petitioners’ Demonstrative Exhibit
`
`Reply at 12-13; DI at 16-17
`
`31
`
`

` Claims 11, 15 & 16
`Claims 11, 15 & 16
`
`Petitioners’ Demonstrative Exhibit
`Petitioners’ Demonstrative Exhibit
`
`32
`32
`
`

`Claims 11, 15 & 16 of the ’433 Patent
`
`U.S. Patent 8,995,433,
`Ex. 1001
`
`Petitioners’ Demonstrative Exhibit
`
`33
`
`

`Claims 11, 15 & 16 – Obvious over Zydney in view of Greenlaw
`
`• Sending user could enter herself as among the recipients who will receive a
`message, a practice Greenlaw expressly encourages
`
`Petition
`
`• Sending user could then view attachment or use controls to play, review or
`delete the instant voice message, as claimed
`
`Petitioners’ Demonstrative Exhibit
`
`Petition at 53-59; Greenlaw (Ex. 1010) at 19, 21
`
`34
`
`

`Claims 11, 15 & 16 – Obvious over Zydney in view of Greenlaw
`Board correctly found that the claims do not
`require “display” before sending message
`Claim 11:
`
`Claim 15:
`
`Claim 16:
`
`Institution Decision
`(Paper 8)
`
`“[I]t is important not to import into a claim limitations that are not a part of the claim.”
`Electro Med. Sys. S.A. v. Cooper Life Sci., Inc., 34 F.3d 1048, 1054 (Fed. Cir. 1994)
`DI at 17-19; Reply at 13-16
`
`Petitioners’ Demonstrative Exhibit
`
`35
`
`

`IPR2017-01667 (Patent 8,724,622)
`Claims 3, 6-8, 10, 11, 13, 14-23, 27-35, 38 and 39
`
`Petitioners’ Demonstrative Exhibit
`
`36
`
`

`Claim Construction
`
`Petitioners’ Demonstrative Exhibit
`
`37
`
`

`Claim 27 of the ’622 Patent
`
`U.S. Patent 8,724,622,
`Ex. 1001
`
`Petitioners’ Demonstrative Exhibit
`
`38
`
`

`Claim 3 of the ’622 Patent
`
`U.S. Patent 8,724,622,
`Ex. 1001
`
`Petitioners’ Demonstrative Exhibit
`
`39
`
`

`No constructions necessary to confirm unpatentability
`
`Institution Decision,
`Paper 8
`
`Petitioners’ Demonstrative Exhibit
`
`DI at 9
`
`40
`
`

`
`Claim 3
`
`Petitioners’ Demonstrative Exhibit
`Petitioners’ Demonstrative Exhibit
`
`41
`41
`
`

`Claim 3 of the ’622 Patent
`
`U.S. Patent 8,724,622,
`Ex. 1001
`
`Petitioners’ Demonstrative Exhibit
`
`42
`
`

`“object field”
`
`Reply (Paper 24)
`
`Petitioners’ Demonstrative Exhibit
`
`Reply at 11-12
`
`43
`
`

`“wherein the instant voice message includes
`an object field including a digitized audio file”
`
`Petition
`
`Petitioners’ Demonstrative Exhibit
`
`Petition at 32
`
`44
`
`

`“wherein the instant voice message includes
`an object field including a digitized audio file”
`
`Petition
`
`Petitioners’ Demonstrative Exhibit
`
`Petition at 32-33
`
`45
`
`

`“wherein the instant voice message includes
`an object field including a digitized audio file”
`
`Petition
`
`Petitioners’ Demonstrative Exhibit
`
`Petition at 33
`
`46
`
`

`“wherein the instant voice message includes
`an object field including a digitized audio file”
`
`Petition
`
`Petitioners’ Demonstrative Exhibit
`
`Lavian Decl. (Ex. 1002) at ¶ 143
`
`47
`
`

`“wherein the instant voice message includes
`an object field including a digitized audio file”
`
`Institution Decision
`(Paper 8)
`
`Petitioners’ Demonstrative Exhibit
`
`DI at 20
`
`48
`
`

`
`Claim 27
`
`Petitioners’ Demonstrative Exhibit
`Petitioners’ Demonstrative Exhibit
`
`49
`49
`
`

`Claim 27 of the ’622 Patent
`
`U.S. Patent 8,724,622,
`Ex. 1001
`
`Petitioners’ Demonstrative Exhibit
`
`50
`
`

`“wherein the instant voice messaging application includes a document handler system
`for attaching one or more files to the instant voice message”
`
`Petition
`
`Petitioners’ Demonstrative Exhibit
`
`Petition at 54
`
`51
`
`

` Claims 14-17, 28-31
`Claims 14-17, 28-31
`
`Petitioners’ Demonstrative Exhibit
`Petitioners’ Demonstrative Exhibit
`
`55
`55
`
`

`Claim 14 of the ’622 Patent
`
`U.S. Patent 8,724,622,
`Ex. 1001
`
`Petitioners’ Demonstrative Exhibit
`
`56
`
`

`“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”
`
`Clark,
`Ex. 1008
`
`Petitioners’ Demonstrative Exhibit
`
`Clark, Fig 4A, 9:11-15, 11:50-54; Petition at 59-61
`
`57
`
`

`“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”
`
`Petitioners’ Reply
`
`Petitioners’ Demonstrative Exhibit
`
`Clark, Fig 5A; Petition at 59, 61 (“StoreMessageID”), Reply at 20-22
`
`58
`
`

`Motivation to combine Zydney and Clark
`
`Petition
`
`Petitioners’ Demonstrative Exhibit
`
`Petition at 62
`
`59
`
`

`Motivation to combine Zydney and Clark (continued)
`
`Petition
`
`Petitioners’ Demonstrative Exhibit
`
`Petition at 62
`
`60
`
`

`
`Claims 38-39
`
`Claims 38-39
`
`Petitioners’ Demonstrative Exhibit
`Petitioners’ Demonstrative Exhibit
`
`61
`61
`
`

`Claim 38 of the ’622 Patent
`
`U.S. Patent 8,724,622,
`Ex. 1001
`
`Petitioners’ Demonstrative Exhibit
`
`62
`
`

`“a display displaying a list of one or more potential recipients”
`
`Petition
`
`Petitioners’ Demonstrative Exhibit
`
`Petition at 57
`
`63
`
`

`Claim 39 of the ’622 Patent
`
`U.S. Patent 8,724,622,
`Ex. 1001
`
`Petitioners’ Demonstrative Exhibit
`
`64
`
`

`“… indicating whether the potential recipient is currently available”
`
`Appelman,
`Ex. 1004
`
`Petitioners’ Demonstrative Exhibit
`
`Petition at 69-75, citing Appelman Fig. 3 (annotation added)
`
`65
`
`

`IPR2017-01668 (Patent 8,724,622)
`Claims 4, 5, 12 and 24-26
`
`Petitioners’ Demonstrative Exhibit
`
`66
`
`

`Claim Construction
`
`Petitioners’ Demonstrative Exhibit
`
`67
`
`

`No constructions necessary to confirm unpatentability
`
`Institution Decision,
`Paper 8
`
`Petitioners’ Demonstrative Exhibit
`
`DI at 9
`
`68
`
`

`
`Claims 4, 5, 12
`Claims 4, 5, 12
`
`Petitioners’ Demonstrative Exhibit
`Petitioners’ Demonstrative Exhibit
`
`69
`69
`
`

`Claims 4, 5 & 12 Depend from Claim 3 of the ’622 Patent
`
`U.S. Patent 8,724,622,
`Ex. 1001
`
`Petitioners’ Demonstrative Exhibit
`
`70
`
`

`Claim 4 of the ’622 Patent
`
`U.S. Patent 8,724,622,
`Ex. 1001
`
`Petitioners’ Demonstrative Exhibit
`
`71
`
`

`“wherein the instant voice message includes an action field identifying
`one of a predetermined set of permitted actions requested by the user”
`
`Petition
`
`Petitioners’ Demonstrative Exhibit
`
`72
`
`Petition at 37-39; Lavian Decl. (Ex. 1101) at ¶ 306-309; Hethmon (Ex. 1109) at 54 (annotations added)
`
`

`“wherein the instant voice message includes an action field identifying
`one of a predetermined set of permitted actions requested by the user”
`
`Petition
`
`Petitioners’ Demonstrative Exhibit
`
`73
`
`Petition at 37-39; Lavian Decl. (Ex. 1101) at ¶ 309; Hethmon (Ex. 1109) at 78 (annotations added)
`
`

`Motivation to combine Zydney with Hethmon (HTTP)
`
`Petition
`
`Petitioners’ Demonstrative Exhibit
`
`Petition at 41, 42
`
`76
`
`

`Motivation to combine Zydney with Hethmon (HTTP)
`
`Lavian Decl. (Ex. 1101)
`
`Petitioners’ Demonstrative Exhibit
`
`Lavian Decl. (Ex. 1101) at ¶ 319; Petition at 44-45
`
`77
`
`

`
`Claims 24-26
`
`Claims 24-26
`
`Petitioners’ Demonstrative Exhibit
`Petitioners’ Demonstrative Exhibit
`
`78
`78
`
`

`Claim 24 of the ’622 Patent
`
`U.S. Patent 8,724,622,
`Ex. 1001
`
`Petitioners’ Demonstrative Exhibit
`
`79
`
`

`Messaging system receiving “connection object messages …”
`
`Petition
`
`Petitioners’ Demonstrative Exhibit
`
`Petition at 46-47
`
`80
`
`

`Receiving “connection object messages” via HTTP/1.1 POST method
`
`Petition
`
`Petitioners’ Demonstrative Exhibit
`
`Petition at 47-48
`
`81
`
`

`Connection object messages: “code (one or more methods) . . .”
`
`Petition
`
`Petitioners’ Demonstrative Exhibit
`
`Hethmon at 78; Petition at 48; Reply at 15-16
`
`82
`
`

`Thank you
`
`Petitioners’ Demonstrative Exhibit
`
`83
`
`

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