UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FACEBOOK, INC., WHATSAPP INC.,
`Petitioner
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner
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`Case IPR2017-01428
`PATENT 8,995,433
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FACEBOOK, INC., WHATSAPP INC.,
`Petitioner
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`v.
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`UNILOC USA, INC. and UNILOC LUXEMBOURG S.A.,
`Patent Owner
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`
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`
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`
`
`Case IPR2017-01428
`PATENT 8,995,433
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`PATENT OWNER PRELIMINARY RESPONSE TO PETITION
`PURSUANT TO 37 C.F.R. § 42.107(a)
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`IPR2017-1428
`U.S. Patent 8,995,433
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`Table of Contents
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`
`INTRODUCTION
`I.
`RELATED MATTERS
`II.
`III. THE ’433 PATENT
`Effective Filing Date of the ’433 Patent
`Overview of the ’433 Patent
`IV. THERE IS NO REASONABLE LIKELIHOOD THAT AT LEAST
`ONE OF THE CHALLENGED CLAIMS IS UNPATENTABLE
`Claim Construction
`1.
`Petitioner’s Proposed Construction for “instant voice
`messaging application” Is Incorrect and Unnecessary
`Petitioner’s Proposed Construction for “client platform
`system” Is Incorrect and Unnecessary
`The Board Should Construe “Receiving the Instant
`Voice Message and an Indication of One or More
`Intended Recipients” as “Receiving the Instant Voice
`Message and Separately Receiving an Indication of One
`or More Intended Recipients”
`Independent Claim 9 is Not Obvious over Zydney
`1.
`No prima facie obviousness for “wherein the instant
`voice message application attaches one or more files to
`the instant voice message”
`Zydney Teaches Away From “wherein the instant voice
`message application attaches one or more files to the
`instant voice message”
`Claim 14 is Not Obvious over Zydney
`Claim 17 is Not Obvious over Zydney
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`2.
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`3.
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`2.
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`ii
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`1
`3
`3
`3
`3
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`5
`6
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`7
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`10
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`12
`17
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`17
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`22
`23
`24
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`Claim 26 is Not Obvious over Zydney
`Claim 16 is Not Obvious over Zydney in view of Greenlaw
`Claim 11 is Not Obvious over Zydney in view of Greenlaw
`Claim 15 is Not Obvious over Zydney in view of Greenlaw
`Claims 10–12, 14–17, 25, and 26 are Not Obvious by Virtue of
`Their Dependence from Claim 9
`CONCLUSION
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`IPR2017-1428
`U.S. Patent 8,995,433
`25
`30
`32
`33
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`35
`36
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`V.
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`iii
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`IPR2017-1428
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`US. Patent 8,995,433
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`List of Exhibits
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`Exhibit No.
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`Declaration of Dr. Val DiEuliis
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`(printed Aug. 23, 2017)
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`“‘App’ voted 2010 word of the year by the American Dialect
`Society (UPDATED)”, American Dialect Society (Jan. 8, 2011),
`available at http://www.americandialect.org/app-voted—2010-
`Word-of—the—year—by—the-american—dialect—society-updated
`
`iv
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`IPR2017-1428
`U.S. Patent 8,995,433
`
`I.
`
`INTRODUCTION
`Pursuant to 35 U.S.C. § 313 and 37 C.F.R. § 42.107(a), Uniloc USA, Inc. and
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`Uniloc Luxembourg S.A. (the “Patent Owner”) submit this Owner’s Preliminary
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`Response to the Petition for Inter Partes Review (“Pet.” or “Petition”) of United
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`States Patent No. 8,995,433 B2 (“the ’433 Patent” or “EX1101”) filed by Facebook,
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`Inc. and WhatsApp Inc. (“Petitioner”).
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`In the Petition,1 Petitioner argues that Claims 9–12, 14–17, 25, and 26 of the
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`’433 Patent would have been obvious. Claim 9 is the sole claim in independent
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`format; all other claims challenged in the Petition depend from Claim 9 directly or
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`indirectly.
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`Specifically, Petitioner asserts a non-enabling, never
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`issued patent
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`application, Zydney (EX1103), against all ten claims. As Ground 1, Petitioner argues
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`that Claims 9, 12, 14, 17, 25, and 26 would have been obvious over Zydney alone.
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`As Ground 2, Petitioner argues that Claims 11, 15, and 16 would have been obvious
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`over Zydney in view of a passage from the Greenlaw textbook (EX1110). As Ground
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`3, Petitioner argues that Claim 10 would have been obvious over Zydney in view of
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`a definition from the Newton dictionary (EX1106).
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`1 Petitioner also filed a Petition in IPR2017-1427, challenging Claims 1–8 of the
`’433 Patent. Except for two and a half pages that describe the Greenlaw and Newton
`secondary references, the first approximately 31 pages of the two petitions are
`substantially the same.
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`1
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`IPR2017-1428
`U.S. Patent 8,995,433
`The Petition should be denied in its entirety because it fails to meet
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`Petitioner’s threshold burden of proving that there is a reasonable likelihood that
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`even one challenged claim is unpatentable. The Petition fails to satisfy the All
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`Elements Rule at least with respect to independent Claim 9 and therefore fails with
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`respect to all the challenged claims. See Ethicon Endo-Surgery, Inc. v. U.S. Surgical
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`Corp., 149 F.3d 1309, 1317 n.1 (Fed. Cir. 1998) (holding every element and
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`limitation must be met by a component in the qualifying reference). Petitioner
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`impermissibly attempts to fill in missing limitations, in part, by proposing incorrect
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`claim constructions that are contrary to the unambiguous claim language. That
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`approach should be rejected.
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`Petitioner also impermissibly attempts to fill in missing limitations, in part,
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`by proposing modifications that would not work as intended. See In re Gordon, 733
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`F.2d 900, 902 (Fed. Cir. 1984) (finding no prima facie obviousness because resulting
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`modification “would be rendered inoperable for its intended purpose” and therefore
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`the reference “teaches away”); In re Sponnoble, 405 F.2d 578, 587 (C.C.P.A. 1969)
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`(holding claims are not obvious where a proposed combination produces a
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`seemingly inoperative device). Petitioner’s approach likewise should be rejected.
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`2
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`IPR2017-1428
`U.S. Patent 8,995,433
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`II. RELATED MATTERS
`Petitioner has filed the following six Inter Partes Reviews on patents in this
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`family. The instant IPR is one of two filed on the ʼ433 Patent. This is one of six
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`Preliminary Responses being filed by Patent Owner.
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`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
`
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`III. THE ’433 PATENT
` Effective Filing Date of the ’433 Patent
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`The ’433 Patent is titled “System and Method for Instant VoIP Messaging.”
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`The ’433 Patent issued March 31, 2015 from United States Patent Application
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`No. 14/224,125, which is a Continuation of Application No. 13/546,673, filed on
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`Jul. 11, 2012, now Pat. No. 8,724,622, which is a Continuation of Application No.
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`12/398,063, filed on Mar. 4, 2009, now Pat. No. 8,243,723, which is a Continuation
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`of Application No. 10/740,030, filed on Dec. 18, 2003, now Pat. No. 7,535,890.
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` Overview of the ’433 Patent
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`The ʼ433 Patent notes that conventional circuit-switched communications
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`enabled traditional telephony yet had a variety of technical disadvantages that
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`limited developing other forms of communication over such networks. According to
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`3
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`U.S. Patent 8,995,433
`the ʼ433 Patent, “[c]ircuit switching provides a communication path (i.e., dedicated
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`circuit) for a telephone call from the telephone terminal to another device 20 over
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`the [public switched telephone network or] PSTN, including another telephone
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`terminal. During the telephone call, voice communication takes place over that
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`communication path.” EX1101, 1:30–35.
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`The ʼ433 Patent expressly distinguishes circuit-switched networks from
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`packet-switched networks (e.g., the Internet) at least in that the latter routes
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`packetized digital information, such as “Voice over Internet Protocol (i.e., ‘VoIP’),
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`also known as IP telephony or Internet telephony.” Id. at 1:36–38. Because legacy
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`circuit-switched devices were unable to communicate directly over packet-switched
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`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. Id. at
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`2:9–22. The conversion effected by media gateways highlights the fact that
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`packetized data carried over packet-switched networks are different from and are
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`incompatible with an audio signal carried over a dedicated packet-switched circuit.
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`Id. at 30–35.
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`The ʼ433 Patent further notes that, notwithstanding the advent of instant text
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`messages, at the time of the claimed invention there was no similarly convenient
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`analog to leaving an instant voice message over a packet-switched network. Id. at
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`2:35–48. Rather, “[c]onventionally, leaving a voice message involves dialing the
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`4
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`U.S. Patent 8,995,433
`recipient’s telephone number (often without knowing whether the recipient will
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`answer), waiting for the connection to be established, speaking to an operator or
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`navigating through a menu of options, listening to a greeting message, and recording
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`the message for later pickup by the recipient. In that message, the user must typically
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`identify himself or herself in order for the recipient to return the call.” Id. at 2:27–
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`34.
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`In certain disclosed aspects, the ʼ433 Patent discloses that a user-accessible
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`client is configured for instant voice message (“IVM”) and for direct communication
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`over a packet-switched network (e.g., through an Ethernet card). Id. at 12:13–16.
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`Certain clients are specially configured to “listen[] to the input audio device 212,”
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`“record[] the user’s speech into a digitized audio file 210 (i.e., instant voice message)
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`stored on the IVM client 208,” and “transmit[] the digitized audio file 210” as
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`packetized data (e.g., using TCP/IP) over a packet-switched network (e.g., network
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`204) “to the local IVM server 202.” Id. at 8:12–26, FIG. 2.
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`
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`IV. THERE IS 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
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`requested relief. 37 C.F.R. § 42.108(c). Because the Petition only presents theories
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`of obviousness, Petitioner must demonstrate a reasonable likelihood that at least one
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`of the challenged patent claims would have been obvious in view of the art cited in
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`5
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`IPR2017-1428
`U.S. Patent 8,995,433
`the Petition. Petitioner “must specify where each element of the claim is found in
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`the prior art patents or printed publications relied upon.” 37 C.F.R. § 42.104(b)(4).
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`The Board should reject Grounds 1-3 because Petitioner fails to meet this burden.
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` Claim Construction
`Petitioner relies on incorrect claim construction proposals to argue that the
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`challenged claims would have been obvious. Petitioner’s proposed claim
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`constructions for “instant voice messaging application” and “client platform system”
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`of independent Claim 9 are incorrect—Petitioner proposes that they cover both
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`software and hardware. Pet., 23, 25. Neither term requires hardware and neither term
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`requires any contrived construction because a person having ordinary skill in the art
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`would understand both terms and would agree that both terms should carry their
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`customary and ordinary meaning.2 Under the proper construction, Zydney does not
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`teach or suggest either an “instant voice messaging application” or a “client platform
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`system.”
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`In the absence of “persuasive evidence” that a term or word has “a specially
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`defined meaning in the field of art” encompassed by the patent, “the ordinary and
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`customary meaning attributed to this term by those of ordinary skill in this art at the
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`2 The concern that “plain and ordinary meaning” can be at times unhelpful to juries
`has no applicability to this forum. Uniloc expressly reserves its right to dispute
`Petitioner’s proposed constructions if the Board institutes trial. Patent Owner does
`not concede that Petitioner’s offered construction is correct.
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`6
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`IPR2017-1428
`U.S. Patent 8,995,433
`time of invention ‘involves little more than the application of the widely accepted
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`meaning of commonly understood words.’” Cat Tech LLC v. TubeMaster, Inc., 528
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`F.3d 871, 884 (Fed. Cir. 2008) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1314
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`(Fed. Cir. 2005)).3
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`1.
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`Petitioner’s Proposed Construction for “instant voice
`messaging application” Is Incorrect and Unnecessary
`Petitioner’s argument that Claim 9 somehow would have been obvious
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`requires Petitioner to define “instant voice messaging application,” and in particular
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`“application,” to encompass both hardware and software. Pet., 23 (“instant voice
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`messaging application” is “hardware and/or software used for instant voice
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`messaging.”) (emphasis removed). Petitioner does not support that proposed
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`construction.4 EX2001, ¶ 49–59.
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`It is clear from the claim language itself that the instant voice messaging
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`application of Claim 9 is not require hardware. Id. As explained below, the
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`3 Under the broadest reasonable interpretation standard used by the Board, claim
`terms carry 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); 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).
`4 Petitioner’s confusing argument that the ’433 Patent supposedly “does not identify
`any particular software program” (Pet., 43) goes only to written description and is
`therefore irrelevant here. Indeed, Petitioner in effect asks the Board not to look at
`the disclosure of the ’433 Patent for its description of “instant voice messaging
`application.” Pet., 9, n. 1.
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`7
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`IPR2017-1428
`U.S. Patent 8,995,433
`“displaying” cited by Petitioner is encompassed by software instructions that control
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`data sent to a monitor; it does not require the instant voice message application to be
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`a physical display. Cf. Pet., 12 (“The written description indicates that displaying is
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`carried out by a hardware device . . . . The written description does not state that
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`. . . any software, provide the claimed display capability.”). Petitioner selectively
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`plucked snippets from the ’433 Patent specification to argue its unreasonable
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`proposed constructions. EX2001, ¶¶ 55–56. Petitioner’s approach is impermissible.
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`The Board must consider the specification as a whole. See, e.g., Phillips v. AWH
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`Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) (claims must be construed as
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`a whole consistent with the entire specification); Playtex Prods., Inc. v. Procter &
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`Gamble Co., 400 F.3d 901, 906 (Fed. Cir. 2005) (“[C]laims must be construed so as
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`to be consistent with the specification, of which they are a part . . . .”) (citation
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`omitted).
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`Indeed, Petitioner admits that “the term ‘application’ to a person of ordinary
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`skill in the art typically refers to computer software for performing a particular
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`function.” Pet., 10 (citing EX1109, Microsoft Computer Dictionary (3d ed. 1997),
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`at p. 27 (defining “application” as “[a] program designed to assist in the performance
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`of a specific
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`task, such as word processing, accounting, or
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`inventory
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`management.”)); see also EX2002, ¶ 16 (noting “App” voted 2010 word of the year
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`8
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`IPR2017-1428
`U.S. Patent 8,995,433
`by the American Dialect Society). The customary and ordinary definition is
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`software, as Petitioner admits.
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`Nonetheless, Petitioner argues that “instant voice messaging application”
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`“could include hardware such as a general purpose computer and display device
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`216.” Pet., 12. Petitioner’s argument is meritless on its face.5
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`The ’433 Patent makes it clear that when the instant voice messaging
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`application displays a list of one or more potential recipients for the instant voice
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`message, that function is controlled by software that is executable by a processor to
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`instruct a display device to do the displaying. The ’433 Patent describes that the
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`displaying function (under the command of software) is merely carried out by a
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`hardware device—display device 216 connected to IVM client 208: “The IVM client
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`206 displays a list of the one or more IVM recipients on its associated display.”
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`EX1101, 17:1–3. The fact that software controls a printer does not convert the
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`software into hardware. EX2001, ¶ 58.
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`The Board must reject Petitioner’s proposed construction, and therefore
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`should reject Petitioner’s dependent corollary argument that Claim 9 is somehow
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`made obvious by hardware in the Zydney application. See, e.g., Pet., 23 (arguing that
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`5 In Petition IPR2017-1427 Petitioner argued that “instant voice message
`application” could include hardware because Claims 1 and 6 of the ’433 Patent each
`recite: “wherein the instant voice messaging application displays a list of one or
`more potential recipients for the instant voice message.” 1427 Pet., 12 (emphasis
`removed).
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`9
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`IPR2017-1428
`U.S. Patent 8,995,433
`the “computing device or hardware” of Zydney discloses the claimed “instant voice
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`messaging application”).
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`2.
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`Petitioner’s Proposed Construction for “client platform
`system” Is Incorrect and Unnecessary
`Petitioner’s equally contorted argument that “client platform system” should
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`be construed to mean “hardware and/or software on a client for generating an instant
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`voice message” should likewise be rejected. Pet., 25; see also Pet., 27 (“hardware
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`including the client device (e.g., personal computer) and the microphone . . . .”).
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`Petitioner’s proposed construction is unsupported and is contrary to the customary
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`and ordinary meaning of “client platform.” Again, Petitioner relies explicitly upon
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`its incorrect construction to argue that the claimed client platform system is disclosed
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`by Zydney. Pet., 25–28; EX2001, ¶¶ 60–62.
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`Petitioner’s argument also lacks merit because the specification of the ’433
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`Patent defines and illustrates “client platform system:”
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`the instant voice message client 208 comprises a client platform 302 for
`generating an instant voice message . . . .The client platform 302
`comprises a client engine 304, which controls other components,
`namely the document handler 306, file manager 308, audio file creation
`312, signal processing 314, encryption/decryption 316, and
`compression/decompression 318.
`EX1101, 12:8–23 (underlining added). Fig. 3 of the ’433 Patent illustrates:
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`10
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`IPR2017-1428
`U.S. Patent 8,995,433
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`EX1101, Fig. 3 (red box added). Thus, Fig. 3 illustrates that the instant voice
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`messaging client 208 includes a client platform 302 for generating an instant voice
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`message. The client platform 302 includes a client engine 304 that controls other
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`components that include the document handler 306 and the file manager 308 and
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`components that handle audio file creation 312, signal processing 314, encryption
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`and decryption 316, and compression and decompression 318. Further, the claimed
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`client platform system is included in the claimed instant voice message application,
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`which does not encompass hardware, as explained above in Section IV.A.1. Thus,
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`the claimed client platform system does not encompass hardware either. EX2001,
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`¶¶ 60–62.
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`11
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`The Board
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`therefore should
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`reject Petitioner’s
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`IPR2017-1428
`U.S. Patent 8,995,433
`incorrect proposed
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`construction, and reject Petitioner’s dependent corollary arguments that the claimed
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`“client platform system” is somehow made obvious by hardware in Zydney. See,
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`e.g., Pet., 28 (arguing that “the software agent in Zydney generates a voice container
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`by controlling various other components” such as a microphone and processor).
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`3.
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`The Board Should Construe “Receiving the Instant Voice
`Message and an Indication of One or More Intended Recipients”
`as “Receiving the Instant Voice Message and Separately Receiving
`an Indication of One or More Intended Recipients”
`Claim 17, from which Claim 25 and Claim 26 depend (directly and indirectly,
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`respectively) recites an “instant voice messaging server receiving the instant voice
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`message and an indication of one or more intended recipients of the instant voice
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`message.” EX1101, 25:25–28. The appropriate construction for this “receiving”
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`limitation reflects that the receiving of the instant voice message and the indication
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`of the one or more recipients are done separately.
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`In order to appropriately construe the “receiving” limitation, the Board must
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`consider the specification of the ’433 Patent as a whole. See, e.g., Phillips v. AWH
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`Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) (claims must be construed as
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`a whole consistent with the entire specification); Playtex Prods., Inc. v. Procter &
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`Gamble Co., 400 F.3d 901, 906 (Fed. Cir. 2005) (“[C]laims must be construed so as
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`to be consistent with the specification, of which they are a part . . . .”) (citation
`
`omitted).
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`12
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`IPR2017-1428
`U.S. Patent 8,995,433
`The ʼ433 Patent describes systems and methods in which a user selects one or
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`more intended recipients of a message from a list provided by a server. “The IVM
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`client displays a list of one or more IVM recipients on its display, provided and
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`stored by the local IVM server . . . . The user operates the IVM client by using the
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`input device to indicate a selection of one or more IVM recipients from the list.”
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`EX1101, 8:2–8 (internal citations omitted). Once this selection is made, the “user
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`selection is transmitted to the IVM server.” Id. This selection also triggers the
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`process by which the user may record the instant voice message. Id. at 8:11–15.
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`“Once the recording of the user’s speech is finalized, IVM client 208 generates a
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`send signal indicating that the digitized audio file 210 (instant voice message) is
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`ready to be sent to the selected recipients.” Id. at 8:19–22. The client then sends the
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`instant voice message to a local IVM server. Id. at 8:25–26. Thus, the client transmits
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`an indication of one or more intended recipients separately from the instant voice
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`message, and the server receives the indication of one or more intended recipients
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`separately from the instant voice message.
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`Indeed, the ʼ433 Patent only mentions the client transmitting the instant voice
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`message without regard to receiving the list of selected recipients. E.g., EX1101,
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`8:25–27 (“The IVM client 208 transmits the digitized audio file 210 and the send
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`signal to the local IVM server 202.”); 18:8–11 (“The IVM client thereafter transmits
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`the recorded audio file 210 (instant voice message) to IVM server 202 for delivery
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`13
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`IPR2017-1428
`U.S. Patent 8,995,433
`to the selected one or more IVM recipients.”); 10:47–51 (“Returning the handset to
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`its cradle also generates a send signal to the IVM server to transmit the recorded
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`audio file (instant voice message) to the selected one or more IVM recipients.”);
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`11:43–46 (“Once a first buffer is full, i.e., input audio of the predetermined size is
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`written to the buffer, the content of the first buffer is automatically transmitted to the
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`IVM server 202 for transmission to the one or more IVM recipients.”); 16: 26–30
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`(“The user generates the send signal when the user operates the IVM client 208 via
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`the input device 218. The IVM client 208 transmits the digitized audio file 210 and
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`the send signal to the global IVM server system . . . .””). In each of these examples,
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`the transmission (and therefore, receipt by the server) of the instant voice message
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`takes place after, and separate from, the transmission (and therefore, receipt by the
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`server) of the indication of one or more intended recipients. See id.
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`Further, other claims of the ʼ433 Patent provide additional context that
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`supports a construction of the instant voice message and the indication of one or
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`more recipients being transmitted, received, and generally processed separately. For
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`example, Claims 18–21 recite buffering operations that are performed with respect
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`to the instant voice message or portions thereof (and not performed with respect to
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`any indicia of intended (and/or selected) recipients). In particular, Claim 18, which
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`depends from Claim 17 (and therefore challenged independent Claim 9), recites a
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`client platform system that “buffers each of a plurality of successive portions of the
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`14
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`IPR2017-1428
`U.S. Patent 8,995,433
`instant voice message.” EX1101, 25:28–35. Claims 19 and 20, which depend from
`
`Claim 18, recite the instant voice messaging server “transmits each successive
`
`buffered portion” to an instant voice messaging application or to a legacy telephone,
`
`respectively Id. at 25:36–26:3. Claim 21 recites that the content of a first buffer is
`
`transmitted for delivery to the one or more intended recipients and a second buffer
`
`is written with a next successive portion of the instant voice message. EX1101, 28:4–
`
`9.
`
`It is notable that the above referenced dependent claims do not recite that any
`
`buffering operations are performed with respect to any indication of one or more
`
`intended recipients. The specification makes it clear that such buffering operations
`
`are not performed with respect to any such indication of one or more intended
`
`recipients. This is because by the time buffering operations on the instant voice
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`message (or portions thereof) are even possible, the indication of one or more
`
`intended recipients has already been communicated from the client to the server.
`
`That is, the indication of one or more intended recipients is communicated from the
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`client to the server first, and only thereafter is the instant voice message buffered and
`
`communicated from the client to the server.
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`For example, the specification states “[i]n the ‘intercom mode,’ instead of
`
`creating an audio file 210, one or more buffers (not shown) of a predetermined size
`
`are generated in the IVM client 206, 208 or local IVM server 202. The one or more
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`15
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`IPR2017-1428
`U.S. Patent 8,995,433
`buffers are used to automatically write successive portions of the instant voice
`
`message.” EX1101, 11:37–43. This passage makes it clear that the buffering
`
`operations are the intercom mode’s alternative to the record mode’s creation of the
`
`audio file. However, creation of the audio file does not happen until a start signal is
`
`generated, and the start signal is not generated until after the indication of one or
`
`more intended recipients selected by the user is transmitted from the client to the
`
`server: “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. The user selection
`
`is transmitted to the IVM server 202. The user selection also generates a start signal
`
`to the IVM client 208 that the user is ready to begin instant voice messaging
`
`according to the present invention. In response to the start signal, the IVM client
`
`(softphone) 208 listens to the input audio device 212 and records the user's speech
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`into a digitized audio file 210 (i.e., instant voice message) stored on the IVM client
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`208.” EX1101, 8:5–15 (emphases added).
`
`Therefore, the buffering operations recited in the above-referenced dependent
`
`claims, though not challenged in the Petition, provide additional context that
`
`demonstrates the appropriate construction of receiving the instant voice message and
`
`separately receiving an indication of one or more intended recipients of the instant
`
`voice message.
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`16
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`IPR2017-1428
`U.S. Patent 8,995,433
`For at least these reasons, the Board should properly construe “receiving the
`
`instant voice message and an indication of one or more intended recipients” as
`
`“receiving the instant voice message and separately receiving an indication of one
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`or more intended recipients.”
`
`
`
`Independent Claim 9 is Not Obvious over Zydney
`1.
`No prima facie obviousness for “wherein the instant voice
`message application attaches one or more files to the instant
`voice message”
`Petitioner incorrectly equates the “voice container” of Zydney with the
`
`“instant voice message” of the ’433 Patent. The “voice container” of Zydney
`
`encapsulates and transports the voice message. Specifically, Zydney describes its
`
`system as including a “central server to send, receive and store messages using voice
`
`containers.” Zydney, EX1103, 2:2–3. Zydney also provides that “the message is first
`
`acquired, compressed and then stored in a voice container 26 which is then sent to
`
`its destination(s).” Zydney, 11:2–3. Zydney explains that various voice data
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`“formats” and “voice compression formats” can be accommodated because Zydney
`
`packages the voice data message into and transmits it via the “voice container.” Id.
`
`at 10–11. Specifically,
`
`The server is adapted to recognize[] the voice format of voice data
`contained
`in
`the voice containers,
`this
`information may be
`communicated by the agent prior to a voice container transmission,
`included in the voice container or provided to the server from the agent
`when polled by the server.
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`17
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`IPR2017-1428
`U.S. Patent 8,995,433
`Zydney, EX1103, 12:13–17. Zydney can accommodate these various voice
`
`formats and compression formats because Zydney packages the voice message
`
`into an enrobing voice container:
`
`The voice data is transmitted in a voice container. The term “voice
`containers” as used throughout this application refers to a container
`object that contains no methods, but contains voice data or voice data
`and voice data properties.
`Zydney, EX1103, 11:6–8.
`
`Zydney does not attach “one or more files” to the data message; Zydney
`
`attaches files to only the encapsulating package, i.e., the voice container:
`
`Another important application of the present invention . . . is
`attaching other media to the voice containers to provide a richer
`communications environment. For example, voice containers may have
`digitized greeting cards appended to them to present a personalized
`greeting.
`The voice container has the ability to have other data types
`attached to it and thus be transported to the recipient.
`Zydney, EX1103, 19:2–7. Indeed, Petitioner acknowledges that “Zydney attaches
`
`one or more files to the voice container.” Pet., 32 (emphasis removed). Petitioner
`
`cites Zydney at 19:1–7 (the passage above), for “attaching other media to the voice
`
`containers” (underlining in Petition).
`
`Petitioner’s argument that “the ‘instant voice message’ in Zydney takes the
`
`form of a voice container,” Pet., 25 (last sentence), has no merit. The experts on both
`
`sides agree.
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`18
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`IPR2017-1428
`U.S. Patent 8,995,433
`Petitioner’s declarant, Dr. Lavian, wrote that Zydney’s voice message is
`
`digitally recorded into a file that is compressed and stored in temporary memory,
`
`and only thereafter is the voice message placed within a distinct voice container:
`
`The sender also “digitally records messages for one or more recipients
`using a microphone-equipped device and the software agent. The
`software agent compresses the voice and stores the file temporarily on
`the PC if the voice will be delivered as an entire message.” (Id., 16:1-
`4; see also id., 20:11-14, 21:11-16 (describing “the recording of one or
`more voice packet messages on a personal computer” as “voice files
`[that] can be played and recorded using voice container enabled
`devices.”).) The voice message is placed into a “voice container,”
`which can be transmitted to the destination. (Id., 10:20-11:3.)
`EX1102, ¶ 54 (underlining added).
`
`Dr. DiEuliis also testifies that the voice message of Zydney is audio data that
`
`is first acquired and then stored in a voice container, which is a type of data structure
`
`distinct from a voice message file. E.g., EX2001, ¶¶ 65–68, 73–74 (citing, inter alia,
`
`EX1103, 11:1–3 (“the [voice] message is first acquired, compressed and then stored
`
`in a voice container 26 which is then sent to its destination(s).”)). Thus, both experts
`
`agree that the Zydney application shows that the digitally-recorded voice message
`
`file and the voice container are distinct elements. EX2001, ¶ 68.
`
`Contrary to what Petitioner argues, the temporary voice message file in
`
`Zydney is not somehow metaphysically transformed in a manner that makes it lose
`
`its distinct identity simply by being placed within a voice container that is
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`transmitted. Id.; cf., Pet., 24 (The “instant voice messages [are] in the form of ‘voice
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`19
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`IPR2017-1428
`U.S. Patent 8,995,433
`containers.’”). Moreover, no POSITA would be motivated to remove the explicit
`
`distinction between content and container. Zydney discloses that multiple discrete
`
`files (each serving a unique purpose) are placed within that voice container and later,
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`upon receipt, individually unpacked. EX1103, 19:1–7; EX2001, ¶¶ 69–71. The
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`“voice container” of Zydney is not the claimed “instant voice message.”
`
`Petitioner attempts to explain away this
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